DCT
2:22-cv-00192
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
- Case Identification: 2:22-cv-00192, D. Wyo., 09/09/2022
- Venue Allegations: Venue is alleged to be proper in the District of Wyoming on the basis that Defendant Zerify Inc. is a Wyoming corporation 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 system for remotely recording audio/video streams on a backend server without requiring recording-specific software on the user's device.
- Technical Context: The technology addresses the field of browser-based media streaming, seeking to simplify the user experience by centralizing the recording and processing functions on a host server, thereby reducing client-side software and hardware burdens.
- Key Procedural History: The patent-in-suit is a continuation of a chain of applications tracing back to 2004, which may be relevant for establishing the effective filing date for prior art purposes. The complaint does not mention any prior litigation, licensing history, or post-grant proceedings involving the patent.
Case Timeline
| Date | Event |
|---|---|
| 2004-03-24 | '109 Patent Earliest Priority Date |
| 2020-06-02 | '109 Patent Issue Date |
| 2020-12-21 | News release date for "SafeVChat" (accused product's former name) |
| 2022-01-18 | News release date announcing a "new recording feature" for accused product |
| 2022-09-09 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,674,109 - “Remotely Accessed Virtual Recording Room,” issued June 2, 2020
The Invention Explained
- Problem Addressed: The patent identifies a problem where new online communication systems often introduce "increased intellectual complexity and/or increased computer system requirements" for users (Compl. ¶18; ’109 Patent, col. 1:51-56). It notes a "continuing need for an improved system and/or method that is simple, efficient, and does not have extensive computer system requirements" (Compl. ¶20; ’109 Patent, col. 1:65-col. 2:2).
- The Patented Solution: The invention is an "Internet-based recording system" that allows a user to record an audio/video stream using only a standard web browser and basic peripherals (e.g., a webcam) on a "user front end" device (’109 Patent, col. 5:22-29). The actual processing and recording of the media stream is performed by "recording software" located on a remote "host back end" server, which is accomplished "without requiring recording functionality on the user front end" (’109 Patent, col. 2:21-34). Figure 1 illustrates this architecture, showing the user front end (70) connecting over the Internet to a host back end (60) that contains the recording software (20) and storage (30).
- Technical Importance: This server-side architecture aimed to lower the barrier to entry for users to create and distribute video content by eliminating the need for them to install and manage specialized local recording software or have significant local storage capacity (Compl. ¶21).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶23).
- The essential elements of independent claim 1 include:
- transmitting, via a network, a browser-independent recording application from a backend server to a client device, the application executing in a browser on the client device;
- receiving, at the backend server, a media stream at the client device via the network, wherein the media stream is captured via the browser-independent recording application executing in the browser without using recording management software installed on the client device; and
- recording the media stream on the backend server using the browser-independent recording application.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendant's "Zerify Video Products and Services," which include "Zerify Meet, formerly known as SafeVChat," and the underlying "Zerify System" of hardware and software components (Compl. ¶9).
Functionality and Market Context
- The accused product is a video conferencing platform that the complaint alleges is "100% web-based" and requires "No Client Agent to install," functioning as an "Entirely Web Based Conferencing" system (Compl., p. 8). A screenshot of the product's "System Features" provided in the complaint highlights this clientless architecture (Compl., p. 8).
- The complaint alleges the system provides "Video Recording" and "Live Stream" capabilities (Compl., p. 9). It further alleges that the system is a "distributed audio and video recording system" where recording occurs on a "host back end server system" after being streamed from a "front end audio and video capturing device" (Compl. ¶26).
IV. Analysis of Infringement Allegations
’109 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| transmitting, via a network, a browser-independent recording application from a backend server to a client device, the application executing in a browser on the client device | The Zerify System allegedly transmits a "browser-independent recording application from a backend server to a client device," which then executes within the user's browser. This is supported by marketing materials describing the service as "100% web-based; No Client Agent to install." | ¶24 | col. 5:22-29 |
| receiving, at the backend server, a media stream at the client device via the network, wherein the media stream is captured via the browser-independent recording application executing in the browser without using recording management software installed on the client device | The Zerify System's backend server allegedly receives a media stream from the client device, with the stream being captured by the in-browser application "without using recording management software installed on the client device." The complaint points to product descriptions of the service as "Clientless" and "completely browser-based." | ¶25 | col. 6:20-27 |
| recording the media stream on the backend server using the browser-independent recording application | The Zerify System is alleged to be a distributed system where the "host back end server records audio and video material" that is streamed from the user's device. A screenshot from a product review shows a "Start recording" button in the user interface, which allegedly initiates this server-side recording. | ¶28, p. 11 | col. 2:21-26 |
Identified Points of Contention
- Scope Questions: A central question for the court will be the proper construction of the term "browser-independent recording application." Does this term describe an application that is merely cross-browser compatible, or does it require a higher level of functional independence from the browser's native capabilities (e.g., WebRTC APIs)? The accused product's use of modern web technologies will be scrutinized against this claim language.
- Technical Questions: The infringement allegation hinges on the claim that the accused system operates "without using recording management software installed on the client device." A key technical question is whether the client-side code (e.g., JavaScript) loaded by a user's browser to capture and stream media constitutes "recording management software." The complaint relies on marketing claims of a "clientless" system, and the actual software architecture will be a focal point of discovery.
V. Key Claim Terms for Construction
The Term: "browser-independent recording application"
- Context and Importance: This term appears in all three clauses of the asserted independent claim and is fundamental to the invention's architecture. Its definition will be critical in determining whether a modern, browser-based application that leverages browser-native APIs for media handling falls within the scope of the claims.
- Evidence for a Broader Interpretation: The patent’s specification repeatedly emphasizes the goal of avoiding the need for users to "downloaded and installed locally" any "additional custom software application" (’109 Patent, col. 6:4-6). This context may support an interpretation where any application that runs entirely within a standard browser session, without requiring a separate installation process, is considered "browser-independent."
- Evidence for a Narrower Interpretation: The term itself suggests some level of independence from the browser. A defendant may argue that an application built entirely upon a browser's specific, complex APIs (like WebRTC) is functionally dependent on the browser, not independent of it. The patent does not explicitly define the term, leaving its precise meaning open to debate.
The Term: "recording management software"
- Context and Importance: This term defines what is absent from the client device in the claimed method. The infringement case rests on the allegation that the accused system lacks such software on the client side. Whether the client-side components of the Zerify system meet this definition will be a primary point of dispute.
- Evidence for a Broader Interpretation: A plaintiff may argue that "recording management software" refers to substantial, standalone applications for managing a library of recordings (e.g., editing, organizing, and storing files locally), which the patent sought to avoid. The patent's focus on eliminating "extensive computer system requirements" could support this view (’109 Patent, col. 2:1-2).
- Evidence for a Narrower Interpretation: A defendant may argue that any client-side code, including transient JavaScript, that actively manages the capture, initiation, or control of the media stream for recording purposes qualifies as "recording management software." Since the patent does not provide an explicit definition, the ordinary meaning of the words in the context of the art will be highly contested.
VI. Other Allegations
- Indirect Infringement: The complaint makes a passing allegation that Zerify "directly or indirectly" infringes (Compl. ¶7), but it does not plead specific facts required to support a standalone claim for either induced or contributory infringement, such as knowledge of the patent and specific intent to encourage infringement.
- Willful Infringement: The complaint does not contain an allegation of willful infringement or facts that would support a finding of willfulness, such as pre-suit knowledge of the patent.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "browser-independent recording application," which originates from a 2004 priority date, be construed to read on a modern web application that is intrinsically reliant on browser-native APIs like WebRTC for its functionality? The court's interpretation of this term in light of the patent's specification may be dispositive.
- A key evidentiary question will be one of technical characterization: does the client-side code executed by a user's browser in the accused Zerify system constitute "recording management software" as negated by Claim 1? The analysis will move beyond marketing materials to a technical examination of the system's actual operation, focusing on the function and substance of the software components on both the client and server side.