DigiMedia Tech LLC v. Box Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: DigiMedia Tech, LLC (Georgia)
  • Defendant: Box, Inc. (Delaware)
  • Plaintiff’s Counsel: Kent & Risley LLC
• Case Identification: 7:25-cv-00212, W.D. Tex., 05/06/2025
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of infringement and maintains a regular and established place of business in the Western District of Texas.
• Core Dispute: Plaintiff alleges that Defendant’s cloud content management platform infringes four patents related to methods for reducing bandwidth and storage requirements when transmitting digital images between a client device and a server.
• Technical Context: The technology addresses the challenge of efficiently managing digital files, particularly images, between a local device and a remote server, a foundational concept for modern cloud storage and file-sharing services.
• Key Procedural History: The complaint alleges that Plaintiff's parent entity made multiple attempts to contact Defendant to discuss licensing the patent portfolio between August 2023 and July 2024, but received no response. The complaint also notes that the most recent patent-in-suit was examined and issued by the USPTO after the Supreme Court's decision in Alice Corp. v. CLS Bank, an argument likely intended to preemptively address potential patent eligibility challenges.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,287,088 - "Transmission Bandwidth and Memory Requirements Reduction in a Portable Image Capture Device by Eliminating Duplicate Image Transmissions"

• Patent Identification: U.S. Patent No. 7,287,088, “Transmission Bandwidth and Memory Requirements Reduction in a Portable Image Capture Device by Eliminating Duplicate Image Transmissions,” issued October 23, 2007.

The Invention Explained

• Problem Addressed: The patent's background section describes the technical problem of high transmission bandwidth consumption and device memory usage caused by sending large digital image files from a portable device to an online service multiple times (Compl. ¶28; ’088 Patent, col. 2:1-8). At the time of invention, this cost and inefficiency were described as a "prohibitive factor to the widespread adoption of digital imaging" (Compl. ¶27; ’088 Patent, col. 1:52-54).
• The Patented Solution: The invention proposes a client-server system where a full, high-resolution image is uploaded from the device to the server only once. The server stores the image and assigns it a unique "image identifier." For any subsequent action (e.g., share, print, send to another user), the device transmits only the small image identifier and the requested action to the server, which then acts on the stored high-resolution image (Compl. ¶31, 38; ’088 Patent, Abstract, col. 2:32-38). This "eliminat[es] the need to retransmit the image" (Compl. ¶41; ’088 Patent, col. 8:20-22).
• Technical Importance: This client-server architecture was designed to make web-connected portable devices more practical by minimizing data transmission costs and conserving limited on-device storage in an era of slow network speeds and small memory capacities (Compl. ¶30; ’088 Patent, col. 1:52-64).

Key Claims at a Glance

• The complaint asserts independent claims 14 and 22 (Compl. ¶58).
• Independent Claim 14 (Device-side Method):
  • A first-time captured image is uploaded to a server.
  • The server assigns a respective image identifier (ID) to the image.
  • The device receives the image ID and "action information" from the server.
  • The device presents an "action control" based on the action information.
  • In response to a user selection, the device transmits the action and the image ID, rather than the image itself, to the server.
• Independent Claim 22 (Server-side Method):
  • Receiving captured images from a portable image capture device.
  • Assigning an image ID to the uploaded images.
  • Downloading the image IDs to the device.
  • Downloading "action information" (including at least one action) to the device.
  • Receiving a request from the device that includes only the image ID and the requested action.

U.S. Patent No. 7,587,514 - "Transmission Bandwidth and Memory Requirements Reduction in a Portable Image Capture Device by Eliminating Duplicate Image Transmissions"

• Patent Identification: U.S. Patent No. 7,587,514, “Transmission Bandwidth and Memory Requirements Reduction in a Portable Image Capture Device by Eliminating Duplicate Image Transmissions,” issued September 8, 2009.

The Invention Explained

• Problem Addressed: As a continuation of the '088 Patent and sharing a common specification, the '514 Patent addresses the same problem of reducing bandwidth and storage requirements for network-connected portable devices (Compl. ¶24; ’514 Patent, col. 1:11-23).
• The Patented Solution: The solution is materially the same as that described in the '088 Patent, focusing on a "one-time upload" model where subsequent operations are performed by referencing an image identifier instead of the image file itself (Compl. ¶42; ’514 Patent, col. 2:30-47). The claims of this patent are directed to the server-side implementation of the method.
• Technical Importance: The technology aimed to improve the user experience and economic feasibility of emerging online photo-sharing services and web-enabled devices (Compl. ¶27; ’514 Patent, col. 1:36-41).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶65).
• Independent Claim 1 (Server-side Method):
  • Receiving captured images from an image capture device to a hardware server.
  • Assigning an image identifier to the uploaded images by the hardware server.
  • Downloading the image identifiers to the device.
  • Downloading "action information" to the device.
  • Receiving a request from the device that includes the image ID and the requested action, rather than the image itself.

U.S. Patent No. 8,073,965 - "Transmission Bandwidth and Memory Requirements Reduction in a Portable Image Capture Device by Eliminating Duplicate Image Transmissions"

• Patent Identification: U.S. Patent No. 8,073,965, “Transmission Bandwidth and Memory Requirements Reduction in a Portable Image Capture Device by Eliminating Duplicate Image Transmissions,” issued December 6, 2011.
• Technology Synopsis: This patent, part of the same family, claims methods for a photo-sharing service to efficiently manage image-related tasks. It describes providing action information to a device, receiving a user's selection of an action, and then executing that action using a previously-uploaded image's identifier, thereby avoiding redundant data transmission (’965 Patent, Abstract; Compl. ¶43).
• Asserted Claims: The complaint asserts independent claims 1 and 13 (Compl. ¶72).
• Accused Features: The complaint accuses "Defendant’s systems and processes for managing photos" of infringement (Compl. ¶72).

U.S. Patent No. 8,868,778 - "Transmission Bandwidth and Memory Requirements Reduction in a Portable Image Capture Device by Eliminating Duplicate Image Transmissions"

• Patent Identification: U.S. Patent No. 8,868,778, “Transmission Bandwidth and Memory Requirements Reduction in a Portable Image Capture Device by Eliminating Duplicate Image Transmissions,” issued October 21, 2014.
• Technology Synopsis: This patent claims methods for an online service to interact with an image capture device. The core invention involves receiving an uploaded image, storing it in an image set, responding to an action request with an assigned image identifier, and using that unique identifier for all subsequent operations to reduce network load (’778 Patent, Abstract; Compl. ¶44).
• Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶79).
• Accused Features: The complaint accuses "Defendant’s systems and processes for managing photos" of infringement (Compl. ¶79).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is Defendant's cloud content management platform and its associated "systems and processes for managing photos" (Compl. ¶¶ 58, 65, 72, 79).

Functionality and Market Context

The complaint alleges that Defendant's platform allows users to upload content, including images, to its servers. Once a file is uploaded, users can perform various actions on it (such as sharing, editing, or applying tasks) via a client application or web interface. The complaint's theory is that these subsequent actions are managed by referencing the stored file on Defendant's servers, rather than requiring the user to re-upload the file for each action, thereby reducing bandwidth requirements (Compl. ¶59, 66). Defendant is described as a provider of these systems and processes.

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint states that preliminary claim charts detailing the infringement allegations are attached as Exhibits H, I, J, and K (Compl. ¶¶ 58, 65, 72, 79). As these exhibits were not provided, a detailed element-by-element analysis is not possible. The infringement theory must be summarized from the complaint's narrative allegations.

The core infringement theory is that Defendant's cloud platform performs the server-side steps of the asserted method claims, while users of Defendant's platform, operating client software on their devices, perform the device-side steps. For example, the complaint alleges that when a user uploads an image to Box, Box's servers receive the image and assign it an internal identifier (infringing server-side claims like claim 22 of the ’088 Patent). The Box client application on the user's device then allows the user to perform actions (e.g., "share"), which transmits a command with the file's identifier to Box's servers, rather than re-transmitting the image file itself (infringing device-side claims like claim 14 of the ’088 Patent).

• Identified Points of Contention:
  • Scope Questions: A primary question will be whether the term "portable image capture device," which the patents describe in the context of a "digital camera," can be construed to read on the general-purpose smartphones, tablets, and personal computers that are the primary clients for Defendant's service.
  • Technical Questions: The infringement theory equates modern cloud service UI features (e.g., a "share" button) with the claimed steps of "downloading action information" and presenting an "action control." The court will have to determine whether the general functionality of Defendant's platform performs the specific, discrete steps recited in the claims or if there is a fundamental mismatch in technical operation.
  • Divided Infringement Questions: The asserted methods involve steps performed by both Defendant's servers and its users' devices. The complaint asserts that Defendant "controlled the manner and/or timing of the functionality" and "conditioned the third party's use of the functionality" on performing the claimed steps (Compl. ¶¶ 59, 66). The legal sufficiency of these allegations to establish liability for divided infringement will be a central point of dispute.

V. Key Claim Terms for Construction

• The Term: "portable image capture device" (’088 Patent, cl. 14)

  • Context and Importance: This term's construction is critical to the scope of the patents. The patents were filed in 2000 and heavily feature "digital cameras." Defendant may argue the term is limited to devices whose primary function is image capture, potentially excluding modern multi-function devices like smartphones and laptops that run Defendant's software.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states, "one of ordinary skill in the art will readily recognize that any portable device capable of capturing images could be used, such as a cellphone or PDA equipped with a lens attachment, for instance" (’088 Patent, col. 3:38-42).
    • Evidence for a Narrower Interpretation: The specification repeatedly uses "digital camera" as the primary example and focuses on solving problems specific to that class of device at the time (’088 Patent, col. 1:29-38; Fig. 2). The abstract and summary also center on the "portable image capture device," suggesting a specific type of hardware.

• The Term: "action information" (’514 Patent, cl. 1)

  • Context and Importance: Practitioners may focus on this term because its definition determines what the server must provide to the device to enable user actions. The dispute will likely center on whether this requires a specific, structured data set of available actions, or if it can be met by the general user interface of a web application.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself is not explicitly limiting, referring only to "action information including at least one action that can be applied by the hardware server" (’514 Patent, col. 9:1-3). This could be argued to cover any UI element that informs the user of a possible action.
    • Evidence for a Narrower Interpretation: The specification describes a specific embodiment where an "action list 48 stored on the database... can be downloaded to the user's camera" (’088 Patent, col. 4:3-6). Figure 6 of the patents depicts a discrete list of commands like "Print Images" and "Send to Mom," suggesting a specific data object rather than an integrated application interface.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendant infringes indirectly by conditioning the use of its platform on customers performing the device-side steps of the claimed methods. It further alleges Defendant "controlled the manner and/or timing of the functionality," which is language aimed at satisfying the legal standard for divided infringement liability (Compl. ¶¶ 59, 66, 73, 80).
• Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It provides a detailed timeline of seven alleged communications sent to Defendant's Senior Director of IP between August 2023 and July 2024, to which Plaintiff claims it received "no response" (Compl. ¶¶ 6-7).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of definitional scope and technological evolution: Can the term "portable image capture device", rooted in the context of early-2000s digital cameras, be construed to cover the modern, general-purpose smartphones and computers on which Defendant's cloud service operates?
• A central legal and factual question will be one of divided infringement: Can Plaintiff provide sufficient evidence that Defendant "directs or controls" the actions of its users to the degree required by law to be held liable for method steps performed on the users' personal devices?
• A key technical question will be one of functional specificity: Does Defendant's general-purpose file management platform perform the specific, image-centric sequence of steps required by the claims (e.g., downloading a discrete "action list"), or is there a technical mismatch between the patented method and the operation of a modern cloud application?