DCT
2:22-cv-00196
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-00196, D. Wyo., 09/09/2022
- Venue Allegations: Venue is alleged to be proper in the District of Wyoming because 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 secure video conferencing platform infringes a patent related to a remotely accessed system for recording and streaming audio and video content.
- Technical Context: The technology concerns cloud-based video recording systems that allow users to capture and stream media through a simple front-end interface, while the technical processing and storage occur on back-end servers.
- Key Procedural History: No prior litigation, inter partes review proceedings, or licensing history is mentioned in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2004-03-24 | U.S. Patent No. 10,951,855 Priority Date |
| 2020-12-21 | Date of press release for accused SafeVchat platform |
| 2021-03-16 | U.S. Patent No. 10,951,855 Issue Date |
| 2022-01-18 | Date of business update on accused SafeVchat platform |
| 2022-09-09 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,951,855 - "Remotely Accessed Virtual Recording Room"
- Patent Identification: U.S. Patent No. 10,951,855, "Remotely Accessed Virtual Recording Room", issued March 16, 2021.
The Invention Explained
- Problem Addressed: The patent identifies a problem where new systems for online communication often introduce "increased intellectual complexity and/or increased computer system requirements" (’855 Patent, col. 1:57-61). This complexity acts as a barrier to entry for new users, creating a need for a simpler, more efficient system that does not demand extensive computer resources from the user (’855 Patent, col. 1:64-col. 2:11).
- The Patented Solution: The invention is an audio/video recording and delivery system where the user interacts with a simple front-end interface (e.g., a web browser) to control recording, but the actual processing and storage of the media occurs on a "host back end" (’855 Patent, Abstract). This architecture eliminates the need for the user to install specialized recording software or have significant local storage, as the recording functionality resides on the remote server (’855 Patent, col. 2:36-41; Fig. 1). The system generates code that can be embedded elsewhere to provide access to the remotely stored media stream (’855 Patent, Abstract).
- Technical Importance: This server-side recording architecture simplifies the user experience for creating and sharing video content, making it accessible to individuals without specialized technical skills or high-end computer equipment (Compl. ¶21).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶23).
- The essential elements of independent claim 1 include:
- A secure distributed digital audio and video recording system comprising an application on a "mobile front end...capturing device" and a "host back end application server system."
- The host back end server delivers a "stream number" to the application to initiate a recording.
- The application uses the stream number to initiate secure streaming to the host back end server.
- The digital video material is not stored as a complete file on the mobile front end device before streaming begins.
- The application uses a "secure real time messaging protocol" to stream the material as it is being captured.
- The application can stream the material without requiring the local installation of an "additional custom recording software application."
- The host back end application server records the streamed material.
- 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," and other related video products and services offered by Zerify (Compl. ¶9). This includes the associated hardware and software components, collectively referred to as the "Zerify System" (Compl. ¶9).
Functionality and Market Context
- The Zerify System is described as a secure video conferencing platform that allows users to conduct meetings with features such as video recording and live streaming (Compl. ¶23, p. 7).
- The system is alleged to be "clientless," "desktop free and completely browser-based," and "100% Cloud-based," suggesting that it operates without requiring users to install a dedicated desktop client application (Compl. pp. 11, 13). A screenshot of marketing material shows a "No Client Agent to install" feature (Compl. p. 13).
- The complaint alleges the system comprises front-end applications for mobile devices and back-end infrastructure that includes an XMPP server, a video/audio bridge for mixing media streams, and a controller (Compl. ¶25, ¶26). A screenshot from a marketing page describes this back-end architecture (Compl. p. 9).
IV. Analysis of Infringement Allegations
'855 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A secure distributed digital audio and digital video recording system, comprising: an application configured to operate on a mobile front end digital audio and digital video capturing device; | The Zerify System includes an application for mobile devices, such as the SafeVchat app for iOS and Android, that operates on a front-end capturing device. A screenshot of the SafeVchat app's permissions on a mobile device is provided as evidence (Compl. p. 8). | ¶25 | col. 16:1-4 |
| and a host back end application server system comprising one or more host back end application servers, | The Zerify System is alleged to include a host back-end server system, which consists of components like an XMPP server, a video/audio bridge, and a controller. | ¶26 | col. 16:5-7 |
| wherein in response to an interaction with a user, the host back end application server system delivers to the application, each time recording of digital audio and digital video material is sought to be initiated, a stream number that is associated with an account of the user, | The complaint alleges that the host back-end server system delivers a "stream number" associated with a user's account to the application to initiate a recording. | ¶27 | col. 16:8-15 |
| wherein the application is configured to use the stream number to initiate secure streaming of digital audio and digital video material to the host back end application server system, | The application is alleged to use the provided stream number to begin the secure streaming of audio and video to the back-end server. A screenshot from a YouTube video shows options to "live stream" or "record" a conference (Compl. p. 10). | ¶28 | col. 16:16-20 |
| wherein the digital audio and digital video material is not stored as a complete file on the mobile front end...prior to initiation of the secure streaming..., | The complaint alleges that the Zerify System does not store a complete recording file on the user's device before streaming, citing marketing material that states recordings are "not stored permanently" on the client side. | ¶29 | col. 16:21-28 |
| wherein the application is configured to use a secure real time messaging protocol to securely stream the digital audio and digital video material from the mobile front end...over at least a packet-based network connection..., as the digital audio and digital video material is being captured..., | The Zerify application is alleged to use a secure protocol to stream media over the internet to the host back-end server as it is being captured by the user's device. | ¶30 | col. 16:29-39 |
| wherein the application is capable of securely streaming...without requiring local installation and concurrent execution on the mobile front end...of an additional custom recording software application..., and | The Zerify System is alleged to be "100% web-based" and requires "No Client Agent to install," thereby streaming media without needing a separate, locally installed custom recording application. | ¶31 | col. 16:40-51 |
| wherein at least one host back end application server records the digital audio and digital video material securely streamed from the mobile front end digital audio and digital video capturing device. | The complaint alleges that at least one of Zerify's back-end servers records the audio and video material that is streamed from the user's front-end device. | ¶32 | col. 17:1-5 |
- Identified Points of Contention:
- Evidentiary Question: A central point of dispute may be the existence and function of the claimed "stream number." The complaint alleges the server delivers a "stream number" to initiate recording (Compl. ¶27), but the supporting evidence is high-level marketing material that does not explicitly describe this technical mechanism. The case may turn on evidence demonstrating whether the accused system uses an identifier that meets this claim limitation.
- Scope Question: The construction of "mobile front end digital audio and digital video capturing device" will be significant. The claim language specifies a "mobile" device, while the accused product is marketed as a "desktop free and completely browser-based" platform (Compl. p. 11). This raises the question of whether use of the accused service on a laptop or desktop computer falls within the scope of the claim.
V. Key Claim Terms for Construction
The Term: "stream number"
Context and Importance: This term is critical to the infringement analysis, as it defines a specific mechanism for initiating a recording session. The complaint alleges the accused system uses this feature (Compl. ¶27). The case may depend on whether the token, session ID, or other identifier used by the accused system qualifies as a "stream number" as it is described and claimed in the patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a formal definition, which may support an argument that any unique identifier for a given stream session falls within the term's ordinary meaning.
- Evidence for a Narrower Interpretation: The specification states that the application "gives the application definitions of the stream number, which is equivalent to the video number," suggesting it is a specific, pre-defined identifier for a purchased or allocated recording slot ('855 Patent, col. 13:54-58). The specification also describes the stream number in the context of a "flashvar" (flash variable) in an HTML page, which could suggest a specific implementation context ('855 Patent, col. 13:60-63).
The Term: "mobile front end digital audio and digital video capturing device"
Context and Importance: Practitioners may focus on this term because the scope of infringement depends on its definition. While the claim uses the word "mobile," the accused product is also accessible via desktop browsers (Compl. p. 11). The construction of this term will determine whether infringement is limited to use on devices like smartphones and tablets or if it also extends to laptops.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification includes figures depicting a "Personal Computer" (Fig. 1) and a "PDA" (Fig. 3) as examples of the "user front end 70," which could support a construction that is not limited to handheld devices ('855 Patent, Fig. 1, Fig. 3).
- Evidence for a Narrower Interpretation: The explicit use of the word "mobile" in claim 1, which was added during prosecution, could be interpreted as a deliberate limitation distinguishing it from the broader "user front end" described in the specification. A defendant may argue this term was chosen to mean devices that are inherently mobile, such as smartphones.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain counts for indirect or contributory infringement under 35 U.S.C. § 271(b) or (c). The sole count for relief alleges direct infringement under § 271(a) (Compl. ¶22, ¶33).
- Willful Infringement: The complaint does not contain allegations of willful infringement or pre-suit knowledge of the ’855 patent. The prayer for relief does not request enhanced damages.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: Can the plaintiff produce technical evidence to demonstrate that the accused Zerify system operates by delivering a "stream number" from its back-end server to a front-end application to initiate recording, as specifically required by claim 1? The current complaint relies on high-level marketing descriptions for this element.
- A second key issue will be one of claim scope: Can the term "mobile front end...capturing device" be construed to read on the use of a browser-based application on a conventional laptop or desktop computer, or is its scope limited to devices like smartphones and tablets? The resolution of this question will significantly impact the potential scope of infringing activities.
- A third dispositive question will be one of technical operation: Does the accused system’s "clientless" architecture, which allegedly functions without requiring the local installation of "an additional custom recording software application," align with the specific negative limitation in claim 1, or is there a functional distinction that places it outside the claim’s scope?