GoPro sued by patent trolls owning ex Contour patens - forced to remove functions from remote app

EspenB

Action camera maker Contour strikes from the grave:

So, if you are less than stoked after being upgraded to the new Quik app this week just to find that the remote settings for "Pro Tune" is nowhere to be found in the app the reason is that GoPro is in litigation with a company which holds two old Contour patens:

"the court agreed with Contour’s claim that GoPro’s remote app infringes on the technology patents and has done so since 2014."

"In December (2020), a jury is scheduled to hear evidence and will decide whether GoPro has willfully infringed on the patents and how much in damages must be paid. So far, liability has not been established; however, if it is, GoPro will be required license the rights from Contour since Contour has valid patents on the technology. Contour will also be allowed to share evidence of GoPro CEO Nick Woodman taking apart and copying Contour action cameras at the trial."

https://www.jdsupra.com/legalnews/contour-ip-holding-llc-v-gopro-inc-70318/

EspenB

https://dronedj.com/2020/09/03/us-court-finds-gopro-infringes-contour-camera-patents/

EspenB

https://casetext.com/case/contour-ip-holding-llc-v-gopro-inc-7

"On January 3, 2020, the parties filed a joint letter in which GoPro requested an order authorizing the deposition of a corporate representative of third-party Socionext Inc. in Japan. Dkt. No. 328. GoPro seeks information on the design and functionality of GPI, which Socionext supplies. Contour opposed the request out of concern for fairness, given that Socionext had neither agreed to allow counsel for Contour to depose the witness nor responded to Contour's subpoena. By the time of the hearing, the former issue had been resolved; Socionext has agreed that Contour may depose its corporate representative on the same day as GoPro. Dkt. No. 329. The parties have agreed to split the time.

At the hearing, Contour expressed its lingering concern over whether Socionext would comply with its subpoena. GoPro indicated its belief that Socionext has likely provided both parties with all the information relevant to both subpoenas because GoPro itself requested "all technical documents" related to the chip.

As my separate order of January 8, 2020 confirms, the deposition should go forward. See Dkt. No. 331. In the event that there is more to produce in response to Contour's subpoena, I strongly recommend that Socionext do so by January 22, 2020. If there is any reason to suspect that Contour is at a disadvantage leading up to and during the deposition, the parties can raise that issue with me after it has taken place."

Vitaliy_Kiselev

@EspenB

Patent trolls is wrong term, as any patent holder who started to protect their rights becomes enemy of the people.

Patents will be among first things that will be fully abolished during revolution.

EspenB

@Vitaliy_Kiselev

So I was a bit short in my original post as I was only out shooting PHOTOS with the app yesterday.

But of course the main thin missing from the post-litigation GoPro "APP" (now "Quik") is the fact that there is no live view on the phone during video recording anymore.

Should this feature a) be patentable in itself and b) be prior art (I know GoPro failed to provide such evidence in the litigation, but...)

Also, the patent is probably not only for action cams, but for every camera providing live view to an app during recording...)

It's a bummer that GoPro themselves did not purchesed these patents as Contour was folding, failing that they should have paid licensing fees. But I guess they never imagined that the "live view" patent would hold up in court.

In any case it's a serious bummer that features which have been available for 6+ years is no longer possible. Even my Hero4's could live view to the app. :-p

EspenB

I guess GoPro could settle with Contour IP Holdings. But rembember that happened to the "take a high res photo during video recording" feature found on devices up until Hero5: Suddenly it was gone on the Hero6 with no explanation. But it turned out to be a patent by Ambarella, their previous chipmaker. They could not implement this on the Socionext GP1 chip for legal reasons.

EspenB

It seems like the patent case GoPro vs Contour IP Holdings is still on going, the latest update was this month.

https://www.govinfo.gov/app/details/USCOURTS-cand-3_17-cv-04738/context

Basically GoPro claims that the patent in question was prior art and available on the Ambarella SOC that GoPro used at the time.

EspenB

There seems to be an update to this litigation:

The latest version of the GoPro phone app restores the ability to change the pro tune settings remotely, but live view during video recording is not back as far as I can tell.

https://news.bloomberglaw.com/ip-law/gopro-beats-infringement-suit-as-camera-patents-found-abstract

GoPro Inc. beat a patent infringement suit brought by Contour IP Holding LLC, with a judge finding Contour’s portable camera patents cover subject matter that isn’t eligible for protection.

Contour alleged GoPro action cameras infringed U.S. Patent Nos. 8,890,954 and 8,896,694, related to point-of-view digital cameras.

The patents cover nothing more than the abstract idea of “creating and transmitting video” and “adjusting the video’s settings remotely,” Judge William Orrick in the U.S. District Court for the Northern District of California ruled Friday.

https://casetext.com/case/contour-ip-holding-llc-v-gopro-inc-15

In these consolidated cases, plaintiff Contour IP Holding, LLC (“Contour”), accuses defendant GoPro, Inc. (“GoPro”), of patent infringement related to point-of-view video cameras. The parties intensively litigated the initial case for years. Soon before trial, Contour filed the second suit that asserted the same claims of the same patents against several new GoPro products. As a result, the cases are now at their second round of summary judgment and Daubert motions.

CONCLUSION

GoPro's motion for summary judgment of invalidity is GRANTED. Contour's motion for summary judgment and GoPro's motion to exclude are DENIED AS MOOT.

https://www.akingump.com/en/experience/practices/intellectual-property/ip-newsflash/district-court-granted-summary-judgment-of-invalidity-because-the-patent-recited-a-patent-ineligible-abstract-idea-executed-in-a-generic-digital-video-camera.html

Judge Orrick in the Northern District of California recently granted a motion for summary judgment of invalidity for patent-ineligible subject matter under 35 U.S.C. § 101. The court found that the claims recited the abstract idea of creating and transmitting video at two different resolutions and adjusting the video’s setting remotely.

EspenB

Judgement as PDF:

https://www.govinfo.gov/content/pkg/USCOURTS-cand-3_17-cv-04738/pdf/USCOURTS-cand-3_17-cv-04738-17.pdf

EspenB

It's interesting to note here that "Live preview during recording" was implemented again for the GoPro Hero 12 last year, but this feature has not been restored in any previous generations of the Hero action camera line up.

I think it safe to assume that GoPro now pays Contour IP Holdings for the patent, but only for the Hero 12.

On my Hero10 the live view is still dead as a duck during recording (firmware updated today).

EspenB

https://www.law360.com/articles/1795120/fed-circ-panel-questions-gopro-on-camera-patent-defense

https://www.jdsupra.com/legalnews/lights-camera-action-gopro-s-section-3978626/

Looks like patent case with Contour is still going on after Contour appealed the District courts verdict from 2022 that the patent for live view was basically prior art.

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