DCT
2:22-cv-00191
Onstream Media Corp v. Zerify Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Onstream Media Corporation (Florida)
- Defendant: Zerify Inc. (Wyoming)
- Plaintiff’s Counsel: Schwartz, Bon, Walker & Studer, LLC; Daignault Iyer LLP
- Case Identification: 2:22-cv-00191, D. Wyo., 09/09/2022
- Venue Allegations: Venue is asserted on the basis that Defendant is a corporation organized under the laws of Wyoming and therefore resides in the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s web-based video conferencing platform infringes a patent related to a remotely accessed virtual recording system.
- Technical Context: The technology concerns browser-based systems for capturing, recording, and distributing streaming audio and video content, a field with significant commercial application in online communications and collaboration.
- Key Procedural History: The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2004-03-24 | U.S. Patent No. 9,161,068 Priority Date |
| 2015-10-13 | U.S. Patent No. 9,161,068 Issued |
| 2020-12-21 | Date of news release cited for Accused Product features |
| 2022-01-18 | Date of news release cited for Accused Product features |
| 2022-09-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,161,068 - "Remotely Accessed Virtual Recording Room"
- Patent Identification: U.S. Patent No. 9,161,068 ("Remotely Accessed Virtual Recording Room"), issued October 13, 2015.
The Invention Explained
- Problem Addressed: The patent's background section notes that new systems for online business communications often introduce increased complexity and computer system requirements, which can be a barrier to user adoption (Compl. ¶18; ’068 Patent, col. 1:31-39). The patent identifies a "continuing need for an improved system and/or method that is simple, efficient, and does not have extensive computer system requirements" (Compl. ¶20; ’068 Patent, col. 1:47-50).
- The Patented Solution: The invention is a system and method where audio and video recording and storage are performed on a "host back end" rather than on the user's local device ("user front end") (’068 Patent, col. 2:1-5). A user, employing only a standard web browser, can stream media to the host's recording software, which then stores the material. This is accomplished by delivering "browser-executable code" that initiates and manages the stream, eliminating the need for the user to install specialized recording software locally (’068 Patent, Abstract; col. 2:8-13).
- Technical Importance: This server-side recording architecture was designed to lower the technical barrier for users, enabling them to create and distribute streaming video content without needing specialized expertise or local software beyond a web browser (Compl. ¶21; ’068 Patent, col. 5:13-17).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1 of the ’068 Patent (Compl. ¶23).
- Independent Claim 1 is a method claim with the following essential elements:
- Delivering, from a host back end, a "browser-executable code" over the internet.
- The code is a "browser independent recording application."
- The code is executed at the user front end and initiates the streaming of audio and video from a user's recording device to the host back end.
- The material is streamed "as it is being captured," not as a complete file, and "without using any recording software installed on the user front end."
- Recording the streamed material on the host back end and storing it as a "complete video file," with the recording accomplished using "only the Internet browser and the recording device."
- Providing access to the recorded material.
III. The Accused Instrumentality
Product Identification
- The accused products are "Zerify Meet, formerly known as SafeVChat," along with the associated "Zerify System" comprising the necessary hardware and software infrastructure (Compl. ¶9).
Functionality and Market Context
- The Zerify platform is a secure video conferencing service. The complaint alleges it is an "Entirely Web Based Conferencing" system with "No Desktop Client," as shown in a marketing graphic describing its system features (Compl. ¶24; Compl. p. 7). Further allegations, supported by marketing materials, state the system is "100% Cloud-based" and "Clientless," meaning it is "desktop free and completely browser-based" (Compl. ¶28; Compl. pp. 8, 10). The platform is alleged to deliver a browser-executable code that enables users to stream, record, and live stream video conferences (Compl. ¶¶25-26). A screenshot from a product review video shows a user interface with options to "Start live stream" and "Start recording" (Compl. ¶26; Compl. p. 9).
IV. Analysis of Infringement Allegations
’068 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| delivering, from the host back end, browser-executable code over the Internet for use in an Internet browser... | Servers of the Zerify System deliver a code which can be executed by a browser when a user wants to begin streaming. | ¶25 | col. 15:36-40 |
| ...wherein the browser-executable code is a browser independent recording application... | The Zerify System delivers a "browser-executable-code that is a browser independent recording application that initiates the audio and video stream to be recorded." | ¶27 | col. 15:39-41 |
| ...the browser-executable code is executed through the Internet browser at the user front end and initiates the streaming of audio and video material from a recording device on the user front end to the host back end... | The code is executed through a browser at the user front end, and a stream of audio and video material is transmitted to the servers of the Zerify System. | ¶¶28, 30 | col. 15:42-46 |
| ...the audio and video material is streamed over the Internet as it is being captured... not as a complete video file... without using any recording software installed on the user front end... | The system streams material as it is captured, not as a complete file from the user front end, and does so "without using any recording software installed on the user front end." This is supported by marketing material stating the product is "100% web-based; No Client Agent to install." | ¶¶30, 34; p. 13 | col. 15:47-50 |
| ...recording the audio and video material on the host back end and storing the recorded audio and video material as a complete video file... | The Zerify System makes and stores audio and video recordings on the host back end as a complete file, providing access to a "downloadable mp4 file after recording is complete." | ¶¶31, 33 | col. 15:51-54 |
| ...providing access to the recorded audio and video material. | Zerify provides access to the entire audio and video recording after it is complete. | ¶32 | col. 15:56-57 |
- Identified Points of Contention:
- Scope Questions: A primary question will be whether the term "browser independent recording application," as used in a patent with a 2004 priority date and explicit discussion of Flash technology, can be construed to read on a modern web application likely built with different technologies such as JavaScript and WebRTC.
- Technical Questions: The complaint alleges the Zerify system delivers a "code" that functions as a "browser independent recording application" (Compl. ¶27). A key factual dispute may arise over the specific nature and operation of this "code." The court may need to determine if leveraging native browser APIs (like WebRTC) is technically equivalent to the self-contained, plugin-style application (e.g., Flash) described as a preferred embodiment in the patent's specification (’068 Patent, col. 8:36-38).
V. Key Claim Terms for Construction
The Term: "browser independent recording application"
Context and Importance: This term is central to defining the invention's scope. Its interpretation will determine whether the patent covers modern, plugin-free, web-standards-based technologies or is limited to the plugin-based architectures (like Flash) that were prevalent when the application was filed. Practitioners may focus on this term because the technological evolution from plugins to native browser APIs is a common source of dispute in software patent litigation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s description of the problem to be solved focuses on eliminating the need for local software installation and complexity for the user (’068 Patent, col. 1:31-52). Plaintiff may argue "browser independent" should be interpreted in this context to mean independent of any software other than the browser itself, thereby covering any "clientless" or "no-install" web application that achieves the claimed server-side recording.
- Evidence for a Narrower Interpretation: The specification repeatedly refers to a "Flash® recording application" as a preferred embodiment and provides extensive implementation details using Flash-specific code (’068 Patent, col. 8:36-38, cols. 9-14). Defendant may argue that these specific disclosures limit the scope of "browser independent recording application" to a self-contained, third-party plugin that runs within the browser, as distinguished from code that directly utilizes the browser's own native functionalities.
The Term: "browser-executable code"
Context and Importance: This term defines the vehicle for the invention. The dispute will likely center on whether the term is general enough to encompass any code a browser can run, or if the patent's context limits it to a specific type of code, such as a compiled plugin object.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad. The patent also refers to producing "hypertext markup language code" (’068 Patent, col. 2:58-63), suggesting the invention is not strictly limited to Flash objects but can include other forms of code delivered to and executed by a browser.
- Evidence for a Narrower Interpretation: The detailed description of how the code is generated and functions is almost exclusively tied to a Flash application (’068 Patent, cols. 8-10). Defendant may argue that a person of ordinary skill in the art at the time of the invention would have understood "browser-executable code" in this context to mean a plugin like Flash or a similar object, not the combination of HTML, CSS, and JavaScript that characterizes modern web applications.
VI. Other Allegations
- Indirect Infringement: The complaint makes a passing allegation that Zerify "directly or indirectly" develops and sells infringing products (Compl. ¶7). However, it does not plead specific facts to support the elements of knowledge and intent required for a claim of induced or contributory infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope and technological evolution: Can the term "browser independent recording application," disclosed in a 2004-priority patent with specific embodiments directed to Flash technology, be construed to cover a modern, plugin-free video conferencing platform built on contemporary web standards like WebRTC? The outcome of this claim construction battle will likely be determinative.
- A key evidentiary question will be one of technical implementation: What is the precise nature of the "code" delivered by the accused Zerify system, and how does it operate? The case may turn on whether Zerify’s use of browser-native APIs is fundamentally the same as, or different from, the patent’s described method of using a self-contained, plugin-based application to achieve server-side recording.