DCT

2:22-cv-00195

Onstream Media Corp v. Zerify Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:22-cv-00195, D. Wyo., 09/09/2022
  • Venue Allegations: Venue is asserted on the basis that Defendant Zerify Inc. is a corporation organized under the laws of Wyoming and therefore resides in the judicial district.
  • Core Dispute: Plaintiff alleges that Defendant’s cloud-based video conferencing products and services infringe a patent related to a remotely accessed system for recording, storing, and delivering audio/video streams.
  • Technical Context: The technology concerns web-based systems that allow users to record audio and video through a browser without needing specialized local software, a function now common in the video conferencing and content creation markets.
  • 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
2004-03-24 U.S. Patent No. 9,467,728 Priority Date
2016-10-11 U.S. Patent No. 9,467,728 Issue Date
2022-01-18 Date of news release cited in complaint regarding product features
2022-09-09 Complaint Filing Date

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

U.S. Patent No. 9,467,728 - "Remotely Accessed Virtual Recording Room"

  • Patent Identification: U.S. Patent No. 9,467,728, “Remotely Accessed Virtual Recording Room,” issued October 11, 2016.

The Invention Explained

  • Problem Addressed: The patent describes a need to improve online business communications, such as for online auctions, where sellers need to showcase products effectively. It notes that existing systems for increasing these capabilities often resulted in “increased intellectual complexity and/or increased computer system requirements,” creating a barrier for non-technical users (Compl. ¶¶ 18-20; ’728 Patent, col. 1:46-61).
  • The Patented Solution: The invention proposes a system architecture that centralizes the technical workload. A user at a "user front end" (e.g., a personal computer with a browser) streams audio and video to a "host back end" (a server system) (Compl. ¶24; ’728 Patent, Abstract). The host back end performs the recording and storage, eliminating the need for the user to have specialized recording software or significant local storage (Compl. ¶21; ’728 Patent, col. 2:17-31). The system then generates embeddable code that allows the recorded video, still stored on the host, to be accessed and played from an "additional location," such as a third-party auction website (’728 Patent, col. 2:32-43).
  • Technical Importance: This server-side architecture aimed to simplify the process of creating and distributing online video content, making it accessible to users without extensive technical expertise or powerful local computing resources (’728 Patent, col. 1:56-61).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent claim 1 (Compl. ¶23). The right to assert other claims is not explicitly mentioned.
  • Independent Claim 1 recites a method with the following key elements:
    • Transmitting a platform-independent web application from a host back end to a user front end.
    • The web application initiates streaming of audio/video from a receiving device at the user front end to the host back end.
    • Recording the audio/video material on the host back end and storing it as a complete video file.
    • Generating code associated with the stored video to facilitate access from an "additional location," with the code's content depending on the type supported by that location.
    • Enabling the generated code to be copied and pasted to the additional location, where its activation provides access to the video material.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are "Zerify Meet, formerly known as SafeVChat," and the associated "Zerify System" (Compl. ¶9). This system is described as comprising the necessary hardware and software to operate the video services, including servers, client software, and cloud-based components (Compl. ¶9).

Functionality and Market Context

  • The complaint describes the accused products as providing live streaming and video conferencing services (Compl. ¶8). The system is presented as "100% Cloud-based" and an "Entirely Web Based" conferencing solution that does not require a desktop client (Compl. p. 8). A key accused feature is the ability to record a video conference and make it available as an mp4 file (Compl. ¶28, p. 11). The complaint includes a marketing image identifying Zerify Meet as a "Forrester WAVE LEADER 2022," suggesting a notable market position (Compl. p. 7).

IV. Analysis of Infringement Allegations

’728 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
transmitting, to the user front end from the host back end via a network, a platform-independent web application, wherein the web application initiates the streaming of audio and video material... The Zerify System allegedly provides an Internet-based recording method via a "platform-independent web application" that initiates streaming from the user's device to Zerify's host back end (Compl. ¶25). This is supported by a technical description of the system using a "browser (implementing the webRTC API)" as participant software (Compl. p. 9). ¶25 col. 14:55-64
recording the audio and video material on the host back end via the web application and storing the recorded audio and video material as a complete video file; The Zerify System is alleged to record and store the audio and video material on its host back end (Compl. ¶26). The complaint includes a screenshot from a product review video that explicitly shows a menu option to "Start recording" and states that a user can "record your video conference into an mp4 file" (Compl. p. 11). ¶26, ¶28 col. 14:65-col. 15:1
generating code associated with the recorded and stored audio and video material to facilitate accessing... from an additional location, wherein the content of the generated code depends on a type of code supported by the additional location; The complaint alleges the Zerify System generates code associated with the recorded video to facilitate access from an additional location, and that the "complete audio and video file is made available as an mp4 file" (Compl. ¶¶27-28). ¶27 col. 15:2-9
enabling the generated code to be copied and pasted to the additional location, wherein activating the generated code provides access to the recorded audio and video material... The complaint alleges the system enables the generated code to be copied and pasted, which in turn provides access to the recorded material from an additional location (Compl. ¶29). ¶29 col. 15:10-15
  • Identified Points of Contention:
    • Technical Questions: The complaint provides direct visual evidence for the system's ability to record video to a file on a host server. A screenshot from a YouTube review shows a user interface with a "Start recording" option (Compl. p. 11). However, the complaint does not provide similarly direct evidence for the "generating code" and "enabling the... code to be copied and pasted" limitations. The core technical question will be what evidence demonstrates that Zerify's system performs these specific steps, as opposed to simply providing a user with a downloadable file or a direct link to it.
    • Scope Questions: A central dispute may concern the scope of "generating code... to facilitate accessing... from an additional location." The patent specification describes generating blocks of HTML or JavaScript to embed a video player into a third-party website like eBay (’728 Patent, col. 8:33-45, col. 9:18-col. 10:34). The question will be whether providing a URL link to a stored MP4 file, as alleged in the complaint (Compl. ¶28), meets this claim limitation, or if the term is limited by the specification's examples to embeddable player code.

V. Key Claim Terms for Construction

  • The Term: "platform-independent web application"

    • Context and Importance: This term appears in the first step of the asserted claim and defines the mechanism that initiates the patented method. Its construction is important for determining whether modern browser-based technologies like WebRTC, which may have specific browser version requirements, fall within the claim scope.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent does not provide an explicit definition, which may support giving the term its plain and ordinary meaning: an application that runs in a web browser without being tied to a specific operating system. The specification notes the system only requires an "Internet browser and standard Internet plug-ins" (’728 Patent, col. 7:12-13).
      • Evidence for a Narrower Interpretation: The patent was filed in 2004 and mentions technologies like Flash as an exemplary recording application (’728 Patent, col. 8:47-48). A party could argue the term should be construed in light of the technologies available at the time of invention, potentially cabining its scope.

  • The Term: "generating code... to facilitate accessing"

    • Context and Importance: This term is critical because the infringement allegation hinges on whether Zerify's system "generates code" in the manner claimed. The outcome of the case may depend on whether providing a link to a finished video file constitutes "generating code" or if something more, like creating a custom embeddable script, is required.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language itself is general and does not specify the type of code (e.g., HTML, URL). A party could argue that a URL is a form of "code" that "facilitates access."
      • Evidence for a Narrower Interpretation: The specification provides highly specific examples of the "generated code," including blocks of HTML OBJECT tags and JavaScript designed to embed a Flash player into a third-party webpage (’728 Patent, col. 9:18-col. 10:44). Practitioners may focus on this term because these detailed embodiments could be used to argue that the claim requires the generation of embeddable, executable script for a player, not merely a hyperlink to a data file.

VI. Other Allegations

  • Indirect Infringement: The complaint states on "information and belief" that Zerify "directly or indirectly" develops and sells the accused products (Compl. ¶7). However, the sole count for relief is for direct infringement under 35 U.S.C. § 271(a) (Compl. ¶¶ 22-31). The complaint does not plead specific facts to support the knowledge and intent elements required for claims of induced or contributory infringement.
  • Willful Infringement: The complaint does not contain an allegation of willful infringement.

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

The dispute appears to center on the alignment between the functionality of a modern cloud-based video service and the specific steps recited in a patent from an earlier era of web technology. Key questions for the court will likely include:

  1. A core issue will be one of definitional scope: Can the claim term "generating code," which the patent specification illustrates with detailed examples of embeddable HTML for a custom player, be construed to cover the creation of a standard MP4 file and a shareable link to it?
  2. A key evidentiary question will be one of functional mismatch: While the complaint provides evidence of a cloud-based recording feature, what evidence will be presented to prove that the accused Zerify System performs the specific, multi-step process of (a) generating code dependent on the destination site, (b) enabling that code to be copied and pasted, and (c) having that pasted code provide access, as opposed to simply allowing a user to share a link to a video file?