Contour IP Holding, LLC v. GoPro, Inc.

Background

Contour sued GoPro for patent infringement, alleging that several GoPro products infringe patents concerning point-of-view digital video cameras. Contour later filed a second case asserting the same patents against newer GoPro products. The court consolidated the cases and considered three matters: Contour’s motion to strike GoPro’s inequitable-conduct affirmative defense, GoPro’s motion for judgment on the pleadings based on patent ineligibility, and construction of two patent terms.

The second suit asserts claim 11 of U.S. Patent No. 8,890,954 and claim 3 of U.S. Patent No. 8,896,694. Claim 11 describes a portable point-of-view digital video camera that creates a lower-quality and a higher-quality video stream, sends the lower-quality stream wirelessly to a personal portable computing device, receives control signals, and adjusts camera settings based partly on those signals.

Motion to Strike

Contour moved to strike GoPro’s twelfth affirmative defense, which alleged inequitable conduct. Inequitable conduct is a defense asserting that someone involved in obtaining a patent misrepresented or withheld material information from the Patent and Trademark Office with an intent to deceive it. Federal Rule of Civil Procedure 9(b) requires the alleged misconduct to be pleaded in detail, including who committed it, what occurred, when and where it occurred, why it was misleading, and how it was carried out.

The court rejected Contour’s argument that GoPro’s allegations were legally impossible merely because the Ambarella engineers who developed certain processors could not have been inventors based on their alleged contribution of prior-art information. The court said that an alleged duty to disclose Contour’s use of the processors was different from an incorrect-inventorship theory, and whether the information was material could depend on factual questions about public availability.

The court nevertheless found GoPro’s pleading deficient because it referred generally to “Contour and/or” inventors, prosecution counsel, and others instead of identifying the specific individuals who allegedly committed the misconduct. The court also found that GoPro’s allegations concerning Laura O’Donnell did not explain the alleged omission with the required detail. The court granted Contour’s motion to strike. GoPro may move for leave to amend its answer within 21 days, and any proposed amendment must identify every person accused and plead the required details for each person.

Motion for Judgment on the Pleadings

GoPro argued that Contour’s asserted patent claims cover subject matter that is not eligible for patent protection under 35 U.S.C. § 101. The court applied the two-step framework for determining whether a patent claims an abstract idea rather than a patent-eligible application. At the first step, a court asks what the claims are directed to. At the second step, it asks whether the claim elements, individually or in combination, add an inventive concept beyond the allegedly ineligible idea.

The court denied GoPro’s motion for judgment on the pleadings without prejudice to GoPro raising the issue again at summary judgment based on an evidentiary record. The court explained that, at the pleading stage, it had to accept Contour’s well-pleaded allegations as true and generally could consider only the pleadings, materials incorporated into them, and matters subject to judicial notice.

Contour alleged that point-of-view cameras faced a concrete problem: users could not readily see and control video while using the cameras for their intended purpose, such as while the cameras were attached to the body during movement. Contour alleged that its solution streamed lower-quality video to a smartphone for viewing and control while storing higher-quality video for later use.

The court concluded that the allegations prevented it from finding, based only on the pleadings, that the claims operated only in a generic environment or lacked an inventive concept. The court stated that GoPro’s arguments might succeed on an evidentiary record, including evidence concerning whether the Ambarella processors were well-understood, routine, and conventional, but GoPro could not establish those points on the present record.

Claim Construction

Claim construction is the court’s determination of what patent-claim language means. The first disputed issue concerned the phrase describing control signals, including signals for frame alignment, multi-camera synchronization, remote file access, resolution, lighting, color, or audio settings. GoPro argued that the claims required the accused technology to include a personal portable computing device, such as a smartphone. Contour argued that the language described the control signals the camera processor must be configured to receive, without making the separate computing device itself a claimed component.

The court adopted Contour’s interpretation. It held that the claims are directed to a video camera or camera system, not to a video camera together with a personal portable computing device. Based on the claims’ language and structure, the camera processor is configured to send the first video stream to the personal portable computing device and receive control signals from it. The court found that the patent specification, prosecution history, and cited expert statements did not justify reading the separate device into the claimed invention.

The second disputed term was “generate.” The court had previously construed that term to require recording in parallel a first image-data stream and a second, higher-quality stream, with wording varying slightly between the claims. GoPro sought what it described as a clarification that would address processing or alteration before recording and whether one stream could be generated from the other.

The court declined to alter the earlier construction. It explained that the parties had already completed claim construction, discovery, and summary-judgment briefing in reliance on that construction. The court stated that its earlier summary-judgment analysis applied the construction rather than changed it, and that there was no convincing reason to rewrite the construction because of how it had been applied.

Disposition

The court granted Contour’s motion to strike GoPro’s twelfth affirmative defense, while allowing GoPro to move for leave to amend within 21 days under the conditions stated in the order. The court denied GoPro’s motion for judgment on the pleadings. The court construed the disputed patent terms as described in the order and directed the parties to file future papers on the consolidated, lower-numbered docket.