DCT
2:22-cv-00197
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-00197, D. Wyo., 09/09/2022
- Venue Allegations: Venue is alleged to be proper as Defendant Zerify Inc. is a corporation organized under the laws of the State of Wyoming and therefore resides in the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s web-based video conferencing and recording platform infringes a patent related to a system for remotely recording media streams on a backend server without requiring specialized software on the client device.
- Technical Context: The technology concerns server-side media stream recording, a foundational architecture for modern cloud-based video conferencing and live-streaming services that simplifies the user experience.
- Key Procedural History: No prior litigation, inter partes review (IPR) proceedings, or licensing history is mentioned in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2004-03-24 | Earliest Priority Date for U.S. Patent No. 10,038,930 |
| 2018-07-31 | U.S. Patent No. 10,038,930 Issued |
| 2020-12-21 | Press release regarding Defendant's "SafeVchat" platform cited |
| 2022-01-18 | Press release regarding Defendant's "SafeVchat" platform cited |
| 2022-09-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,038,930 - Remotely Accessed Virtual Recording Room, Issued July 31, 2018
The Invention Explained
- Problem Addressed: The patent describes a problem where adding advanced capabilities to online communication systems, such as video recording, often increases their complexity and computer system requirements, which can deter user adoption ('930 Patent, col. 1:49-57; Compl. ¶18). There was a recognized need for a system that was "simple, efficient, and does not have extensive computer system requirements" ('930 Patent, col. 1:63-col. 2:3; Compl. ¶20).
- The Patented Solution: The invention proposes a system where all audio and video recording functions are handled by a "host back end" server, accessed by a user via a standard internet browser ('930 Patent, Abstract). A user streams media from their "front end" device to the backend server, which performs the recording, eliminating the need for the user to install or manage specialized recording software or have significant local storage ('930 Patent, col. 2:19-32). Figure 1 of the patent illustrates this architecture, showing a user front end (70) communicating over the internet with a host back end (60) that contains the recording software (20) and storage (30).
- Technical Importance: This server-side architecture sought to lower the barrier to entry for users wanting to create and share recorded video content by centralizing the technical burden of recording and storage.
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶23).
- The essential elements of independent claim 1 are:
- transmitting, via a network, a browser-independent recording application from a backend server to a client device, the browser-independent recording application executing in a browser on the client device;
- receiving, at the backend server, a media stream from a media input 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.
- 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 associated hardware and software components, collectively referred to as the "Zerify Products and Services" or the "Zerify System" (Compl. ¶9).
Functionality and Market Context
The Zerify System is a video conferencing platform that the complaint alleges is "desktop free and completely browser-based" (Compl. p. 9). The complaint provides a screenshot of marketing materials listing "No Desktop Client - Entirely Web Based Conferencing" as a system feature (Compl. p. 8). The system is alleged to provide functionality for live streaming, video conferencing, and video recording (Compl. ¶¶8, 26). The complaint cites a press release announcing that Zerify added a "new recording feature" to its platform (Compl. p. 8). A screenshot from a product review video shows options to "live stream your video conference" or "just record your video conference into an mp4 file" (Compl. p. 11).
IV. Analysis of Infringement Allegations
’930 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 browser-independent recording application executing in a browser on the client device; | The Zerify System allegedly provides a method comprising transmitting a "browser-independent recording application from a backend server" which then executes "in a browser on the client device." | ¶24 | col. 15:51-56 |
| receiving, at the backend server, a media stream from a media input at the client device via the network, | The Zerify System allegedly provides a method of "receiving, at the backend server, a media stream from a media input at the client device via the network." | ¶25 | col. 15:57-59 |
| 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 | The media stream is allegedly "captured via the browser-independent recording application executing in the browser without using recording management software installed on the client device." The complaint points to Zerify's marketing of its platform as "Clientless" (Compl. p. 9). | ¶25 | col. 15:60-63 |
| recording the media stream on the backend server using the browser-independent recording application. | The Zerify System allegedly provides a method of "recording the media stream on the backend server using the browser-independent recording application." | ¶26 | col. 15:64-65 |
Identified Points of Contention
- Scope Questions: A primary issue may be the scope of the term "browser-independent recording application". The complaint alleges Zerify's web-based platform is such an application. A question for the court will be whether this term, originating from a 2004 priority date, can be construed to cover modern web application architectures (e.g., using WebRTC and HTML5) or if it is limited to technologies contemplated at the time, such as Flash or Java applets, which are explicitly mentioned in the patent's specification (col. 8:52-53).
- Technical Questions: The infringement analysis may focus on the distinction between a transmitted "application" that executes in a browser versus a native function of the browser itself. What evidence does the complaint provide that the accused product transmits a distinct "application" that performs the capture, as opposed to simply invoking native browser APIs to access the camera and microphone for streaming? The resolution of this question could determine whether the accused system's architecture matches the specific steps required by the claim.
V. Key Claim Terms for Construction
The Term: "browser-independent recording application"
Context and Importance
This term is the technological core of the asserted claim. The entire infringement theory rests on whether Zerify's browser-based video platform constitutes such an "application." Practitioners may focus on this term because its construction will likely determine whether the patent, filed in the era of web plugins, can read on modern, browser-native web technologies.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The patent 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" ('930 Patent, col. 5:6-9). A party could argue that any code delivered from a server that enables recording within a standard browser without a separate installation falls within this definition, regardless of the underlying technology (e.g., Flash, JavaScript, WebAssembly).
- Evidence for a Narrower Interpretation: The specification explicitly describes an embodiment that "utilizes a Flash recording application" ('930 Patent, col. 8:52-53). A party could argue this demonstrates that the inventor contemplated a discrete, plugin-based application (like Flash) as the "application," and that the term should not be expanded to cover modern, integrated browser APIs which may not be considered a separate, transmitted "application" in the same sense.
The Term: "without using recording management software installed on the client device"
Context and Importance
This negative limitation is crucial for distinguishing the invention from prior art that required client-side installations. Its interpretation is tied to what constitutes "recording management software" and where the line is drawn between the browser and "installed" software.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The patent's focus on eliminating the need for users to install "special software" or "custom software" suggests this term broadly covers any recording-related program not part of a standard browser installation ('930 Patent, col. 5:37, col. 5:7-8). A party could argue that because the accused product is marketed as having "No Desktop Client" (Compl. p. 8), it plainly meets this limitation.
- Evidence for a Narrower Interpretation: A party could argue that modern web browsers have evolved to natively include sophisticated media handling and recording APIs (e.g., WebRTC). It could be argued that using these built-in browser functions is not operating "without" recording management software, but rather using software that is now integral to, and "installed" with, the browser itself.
VI. Other Allegations
Indirect Infringement
The complaint makes a general allegation regarding Zerify "directly or indirectly" promoting its services but does not plead a separate count for indirect infringement or provide specific factual allegations to support the knowledge and intent elements required for such a claim (Compl. ¶7). The single count for relief is for direct infringement under 35 U.S.C. § 271(a) (Compl. ¶22, ¶27).
Willful Infringement
The complaint does not contain an allegation of willful infringement or plead facts suggesting Defendant had pre-suit knowledge of the '930 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 the patent specification links to 2004-era technologies like Flash, be construed to cover the modern, browser-native architecture of the accused Zerify Meet platform?
- A key evidentiary question will be one of architectural equivalence: does the accused system's operation involve the "transmitting" of a distinct "application" that subsequently "captures" the media stream, as claimed, or does it utilize inherent browser functions in a way that falls outside the patent's specific, sequential method, creating a fundamental mismatch in technical operation?
- The case may also turn on the interpretation of the negative limitation "without using recording management software installed on the client device," raising the question of whether sophisticated, built-in APIs in modern browsers constitute such software, potentially placing even fully browser-based systems outside the claim's scope.