DCT
2:22-cv-00194
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: Onstream Media Corporation v. Zerify Inc., 2:22-cv-00194, D. Wyo., 09/09/2022
- Venue Allegations: Venue is alleged to be proper in the District of Wyoming because the 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 platforms infringe a patent related to a system for remotely recording and storing audio/video streams via a browser without requiring recording software on the user's device.
- Technical Context: The technology relates to browser-based, client-server architectures for media processing, a field that has grown in significance with the expansion of cloud computing and the desire to reduce reliance on locally installed software.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2008-04-28 | Earliest Priority Date for U.S. Patent No. 10,200,648 |
| 2019-02-05 | U.S. Patent No. 10,200,648 Issued |
| 2022-01-18 | Date of press release in which Defendant announced adding a "new recording feature" |
| 2022-09-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,200,648 - "Remotely Accessed Virtual Recording Room"
The Invention Explained
- Problem Addressed: The patent describes a problem where increasing the capabilities of online business communication systems often leads to "increased intellectual complexity and/or increased computer system requirements" (’648 Patent, col. 1:42-45). This complexity creates a barrier for new users and runs counter to the goal of increasing participation in online transactions like auctions (’648 Patent, col. 1:45-54).
- The Patented Solution: The invention proposes an "Internet-based recording system" where the recording software resides on a "host back end" server, while the user interacts with the system through a standard internet browser on a "user front end" (’648 Patent, col. 2:2-6). This architecture allows a user to record audio and video without needing any specialized recording software installed on their local device (’648 Patent, col. 2:21-25). The system then generates code associated with the stored recording, which can be copied and pasted into an "additional location" (e.g., an auction website) to provide access to the media, which remains stored on the host back end (’648 Patent, Abstract; Fig. 1).
- Technical Importance: This architecture sought to simplify the process of creating and embedding rich media content online, lowering the technical barrier for users participating in e-commerce or other web-based interactions (’648 Patent, col. 1:55-62).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶23).
- Essential elements of independent claim 1 include:
- An Internet-based recording method performing audio and video recording functions over an Internet browser connection between a "user front end" and a "host back end."
- Recording audio and video material that originates on the user front end but is recorded on the host back end "without requiring recording functionality on the user front end."
- Storing the recorded material on the host back end.
- Generating code associated with the recorded material to facilitate access.
- Enabling the generated code to be copied and pasted to an "additional location."
- Activating the pasted code at the additional location provides access to the recorded material.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The complaint names "Zerify Meet, formerly known as SafeVChat," as well as the underlying "Zerify System" which includes servers, software, and other components that enable the video services (Compl. ¶9).
Functionality and Market Context
The accused instrumentality is described as a live streaming and broadcasting platform for secure video conferencing (Compl. ¶¶8-9). The complaint alleges that the system is "100% web-based; No Client Agent to install," allowing users to access its functions, including video recording, directly through a browser (Compl. p. 8). The complaint includes a screenshot from a product review video demonstrating a "Start recording" option within the browser-based user interface (Compl. p. 9). The complaint further alleges that the system makes a recorded meeting available as an "mp4 file" after the session concludes (Compl. ¶26).
IV. Analysis of Infringement Allegations
'648 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An Internet-based recording method that performs all audio and video recording functions over an Internet browser connection established between a user front end and a host back end... | The Zerify System is alleged to provide an "Internet-based recording method" that operates via a browser connection between the user and a "host back end." | ¶24 | col. 13:43-48 |
| recording audio and video material over the Internet browser connection, wherein audio and video material originates on the user front end and is recorded on the host back end without requiring recording functionality on the user front end; | The complaint alleges that audio and video originating from the user's device is recorded on Zerify's host back end and that the system is "100% web-based; No Client Agent to install." | ¶¶24, p. 8 | col. 13:49-54 |
| storing the recorded audio and video material on the host back end; | The Zerify System allegedly stores the recorded audio and video on its "host back end." | ¶25 | col. 13:55-56 |
| generating code associated with the recorded and stored audio and video material to facilitate accessing the recorded and stored audio and video material; | The system is alleged to generate code for accessing the material, noting that after a meeting is recorded, "the complete audio and video file is made available as an mp4 file." | ¶26 | col. 13:57-60 |
| and enabling the generated code to be copied and pasted to an additional location, wherein activating the generated code provides access to the recorded audio and video material from the additional location. | The complaint alleges the method enables the generated code to be copied and pasted, which in turn provides access to the recording from the new location. A screenshot shows options to "record your video conference into an mp4 file" or "share your conference as a YouTube video." | ¶¶27, p. 10 | col. 13:61-65 |
Identified Points of Contention
- Scope Questions: The patent repeatedly frames the "additional location" in the context of an "auction website" and the "code" as hypertext markup language for embedding a player (’648 Patent, Abstract; col. 2:29-30; col. 6:44-48). A potential dispute is whether providing a link to a downloadable MP4 file or a shareable link to a platform like YouTube meets the claim limitation of "enabling the generated code to be copied and pasted to an additional location, wherein activating the generated code provides access."
- Technical Questions: A central question may be the interpretation of "without requiring recording functionality on the user front end." The complaint cites a document stating the accused product uses a browser "implementing the webRTC API" (Compl. p. 9). The court will have to consider whether a browser's native media-capturing APIs constitute "recording functionality on the user front end" as contemplated by the patent, or if the limitation only precludes the need for specialized, non-standard plugins or applications.
V. Key Claim Terms for Construction
- The Term: "without requiring recording functionality on the user front end"
- Context and Importance: This negative limitation is central to the patent's stated goal of simplifying the user experience. Its construction will be critical to determining infringement, as it defines the boundary between the host's responsibilities and the user's. Practitioners may focus on this term because the accused product's alleged use of the standard WebRTC API (Compl. p. 9) raises the question of whether such native browser features constitute the precluded "functionality."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (i.e., less functionality allowed on the front end): The specification contrasts the invention with systems that "require some type of additional ‘plug in’ or other additional custom software application to be downloaded and installed locally" (’648 Patent, col. 5:62-65). This language may support an argument that the limitation is primarily concerned with avoiding non-standard, add-on software, rather than features inherent to a modern browser.
- Evidence for a Narrower Interpretation (i.e., more functionality allowed on the front end): The claim requires recording "on the host back end," and the specification describes the "recording software 20" as being "located on the host back end 60" (’648 Patent, col. 6:11-12). This could support an argument that any substantive processing or data handling steps performed by the browser before transmission to the server could be considered "recording functionality" that is not on the host back end, potentially placing technologies like WebRTC outside the claim's scope.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead specific facts to support a claim for indirect infringement, such as alleging that Defendant's user manuals instruct users to perform the infringing steps.
- Willful Infringement: The complaint does not contain a specific count for willful infringement or allege facts demonstrating that Defendant had pre-suit knowledge of the ’648 patent.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction and technical scope: Can the limitation "without requiring recording functionality on the user front end" be interpreted to read on a system that utilizes a standard browser's native WebRTC API for media capture? The resolution will depend on whether this inherent browser capability is considered the type of "functionality" the patent sought to move to the "host back end."
- A second key issue will be one of functional and definitional equivalence: Does the accused system's alleged output—an MP4 file or a shareable link to a third-party site like YouTube—meet the claim requirement of "generating code" that is "copied and pasted to an additional location" to provide access? The court will need to determine if this modern method of sharing is equivalent to the patent's disclosure, which focuses on generating and embedding hypertext markup language code.