DCT
2:22-cv-00193
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-00193, D. Wyo., 09/09/2022
- Venue Allegations: Venue is alleged to be proper in the District of Wyoming because Defendant Zerify Inc. is a Wyoming corporation and therefore resides in the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s video conferencing products and services infringe a patent related to remotely recording and delivering audio and video streams without requiring installation of special software on the user's device.
- Technical Context: The technology concerns web-based systems for live media streaming and recording, a market characterized by a shift from installable client software to browser-based solutions to lower barriers to entry for users.
- Key Procedural History: No prior litigation, Inter Partes Review (IPR) proceedings, or licensing history is mentioned in the complaint. The asserted patent is noted as being subject to a terminal disclaimer.
Case Timeline
| Date | Event |
|---|---|
| 2004-03-24 | U.S. Patent No. 10,694,142 Earliest Priority Date |
| 2020-06-23 | U.S. Patent No. 10,694,142 Issued |
| 2022-01-18 | Date of StrikeForce Technologies (Zerify) business update |
| 2022-09-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,694,142 - "Remotely Accessed Virtual Recording Room"
- Issued: June 23, 2020
The Invention Explained
- Problem Addressed: The patent identifies a problem where adding new capabilities to online communication systems often increases their "intellectual complexity and/or increased computer system requirements," which can deter user adoption (Compl. ¶18; ’142 Patent, col. 1:54-62). There was a recognized need for an improved system that is "simple, efficient, and does not have extensive computer system requirements" (Compl. ¶20; ’142 Patent, col. 2:4-6).
- The Patented Solution: The invention is a system and method where audio/video recording and storage functions are handled by a "host back end" (e.g., a central server), while the user interacts with the system through a standard web browser on a "user front end" device (’142 Patent, Abstract). This architecture avoids the need to install special recording software or plugins on the user's computer, as the recording is initiated by code sent from the host and executed in the browser, with the resulting media stream sent back to the host for recording and storage (’142 Patent, col. 6:1-14).
- Technical Importance: This approach aimed to simplify the user experience for creating and sharing video content online by centralizing the technical burdens of recording and storage, making such features accessible without specialized local software (’142 Patent, col. 1:62-67).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶23).
- Independent Claim 1 recites a method with the following essential elements:
- Delivering, in response to a user interaction, a first code from a host back end to a user front end over an Internet connection.
- The first code is configured to be executed at the user front end to initiate streaming of audio/video material from capturing devices at the user front end to the host back end.
- The first code is not installed at the user front end.
- Streaming the audio/video material from the user front end to the host back end.
- Recording the streamed audio/video material on the host back end.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused products are "Zerify Meet, formerly known as SafeVChat," along with the underlying hardware and software systems (collectively, the "Zerify System") that enable their operation (Compl. ¶9).
Functionality and Market Context
The Zerify System is alleged to be a live streaming and broadcasting platform that provides a method for recording audio and video material (Compl. ¶¶8, 24). The complaint alleges the system is "100% web-based" and "100% Cloud-based," operating without a "Client Agent to install" (Compl. p. 8). A screenshot from a whitepaper shows a "System Features" list that includes "No Desktop Client - Entirely Web Based Conferencing" (Compl. p. 10). The platform is further alleged to provide features such as "Video Recording" and "Live Stream," as shown in marketing materials (Compl. p. 8). A screenshot from a product review video shows a user interface with options to "Start recording" and "live stream your video conference" (Compl. p. 9).
IV. Analysis of Infringement Allegations
10,694,142 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for recording audio and video material over an Internet connection established between a user front end and a host back end, the method comprising: delivering, in response to a user interaction, a first code from the host back end over an Internet connection each time recording...is sought to be initiated; | The Zerify System is alleged to be a "100% Cloud-based" system that, in response to user interaction, delivers a "first code from the host back end" to initiate recording. | ¶25 | col. 17:36-42 |
| said first code configured to be executed at the user front end and to initiate the streaming of audio and video material as it is being captured by one or more capturing devices at the user front end to the host back end, | The complaint alleges the delivered code is "configured to be executed at the user front end and to initiate the streaming of audio and video material as it is being captured by one or more capturing devices at the user front end to the host back end." | ¶25 | col. 17:42-46 |
| wherein said first code is not installed at the user front end; | The complaint alleges the accused system is "100% web-based; No Client Agent to install." A visual from Defendant's materials shows a feature list including "No Desktop Client - Entirely Web Based Conferencing" (Compl. p. 10), which Plaintiff offers as evidence that the code is not installed. | ¶25 | col. 17:47-49 |
| streaming the audio and video material, as it is being captured by said one or more capturing devices, from the user front end to the host back end; and | The Zerify System allegedly "employs and provides a method for recording audio and video material...comprising streaming the audio and video material, as it is being captured by said one or more capturing devices, from the user front end to the host back end." | ¶26 | col. 17:50-53 |
| recording on the host back end the audio and video material streamed over the Internet connection. | The Zerify System is alleged to provide a method that includes "recording on the host back end the audio and video material streamed over the Internet connection." The complaint includes a screenshot from a video demonstrating a "Start recording" feature in the user interface (Compl. p. 9). | ¶27 | col. 17:54-56 |
Identified Points of Contention
- Scope Questions: A central question may be whether the accused system's architecture fits the patent's "user front end" / "host back end" model. The definitions of these terms will be critical in determining if Zerify's cloud-based infrastructure constitutes a "host back end" as contemplated by the patent.
- Technical Questions: The case may turn on the technical meaning of the negative limitation "not installed at the user front end." The court will need to determine if transient, browser-executed code (e.g., JavaScript, WebRTC APIs) falls outside the scope of "installed," which the patent specification contrasts with downloadable "plug in" or "custom software" applications (col. 6:6-11). The complaint relies on marketing statements like "No Client Agent to install" to meet this limitation (Compl. p. 8).
V. Key Claim Terms for Construction
"first code... not installed at the user front end"
- Context and Importance: This negative limitation is central to the patent's claimed point of novelty over prior systems that required local software. Practitioners may focus on this term because its construction will likely determine infringement. The dispute will center on whether the code used by the accused web-based service (e.g., JavaScript executed by a browser) qualifies as "not installed."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (favoring non-infringement): An argument could be made that any code executed on the user's machine, even if temporary, is in some sense "installed" in memory or a browser cache for the duration of its execution.
- Evidence for a Narrower Interpretation (favoring infringement): The specification explicitly contrasts the invention with "traditional video recording and player systems that typically require some type of additional 'plug in' or other additional custom software application to be downloaded and installed locally" (’142 Patent, col. 6:6-11). This suggests "installed" refers to persistent software applications, not transient, browser-based scripts.
"host back end"
- Context and Importance: The claims require specific actions (delivering code, recording material) to occur on the "host back end." The applicability of this term to a modern, distributed cloud computing environment, as allegedly used by Zerify, will be a key issue.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (favoring infringement): The specification provides a broad definition: "A host in this environment is generally defined as a company that is utilizing an audio/video stream recording, storage, and delivery system" (’142 Patent, col. 2:18-22). It also describes the host back end as including servers that process and record the video stream (col. 6:20-34).
- Evidence for a Narrower Interpretation (favoring non-infringement): A defendant might argue that the patent's examples depict a more monolithic server architecture (see Fig. 1) than the distributed microservices common in modern cloud platforms, suggesting a potential mismatch in scope.
VI. Other Allegations
Indirect Infringement
The complaint makes a passing allegation of "direct indirect infringement" (Compl. ¶29) but does not plead specific facts to support the knowledge and intent elements required for either induced or contributory infringement. For instance, there are no allegations that Zerify's user manuals or instructions guide users to perform the claimed method.
Willful Infringement
The complaint does not include a specific count for willful infringement and does not plead facts alleging either pre-suit or post-suit knowledge of the patent by the defendant. The prayer for relief includes a standard request for damages under 35 U.S.C. § 284 but does not explicitly request enhanced damages.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technological interpretation: can the claim limitation "not installed at the user front end," which the patent contrasts with 2000s-era "plug-ins," be construed to read on the modern, browser-based technologies (e.g., JavaScript, WebRTC) that execute transiently on a user's device to enable the accused video conferencing service?
- A second central question is one of architectural mapping: does the patent's "host back end / user front end" dichotomy, as described and depicted, encompass the distributed cloud infrastructure on which a modern service like Zerify Meet likely operates, or is there a fundamental mismatch between the claimed architecture and the accused system's implementation?
- A key evidentiary question will be what proof demonstrates that the accused system's operation involves the specific sequence recited in claim 1—namely, the delivery of a "first code" from the host that then "initiate[s]" streaming from the client back to the host—as opposed to a different sequence of client-server interactions.