Sony Fights Back Against ObjectVideo

By: John Honovich, Published on May 08, 2011

Since ObjectVideo filed suit against Bosch, Samsung and Sony in April 2011, speculation has been rife over whether these large companies would pay up to avoid the nuisance or use their large scale to contest.

For Sony, at least, it has become clear that they will fight back against the allegations of patent infringement. In this note, we examine how and why Sony contends the patents are invalid.

Our analysis indicates that Sony's position is grounded in 2 fundamental aspects of US patent law: (1) "Conditions for patentability; novelty and loss of right to patent" and (2) "Duty to disclose information material to patentability." Let's start by examining what these mean:

  • Novelty and loss of right to patent is defined in 35 U.S.C. 102. Essentially, if an invention has been made known to the public for more than 1 year prior to a patent application filing, a person shall not be entitled to a patent.
  • Duty to disclose information (37 CFR 1.56 [link no longer available]), more commonly known as inequitable conduct, requires an applicant to "disclose to the [Patent] Office all information known to that individual to be material to patentability." If the applicant does not, even if the patent is otherwise valid, the courts can decide not to enforce the patent.

Here's essentially what Sony is claiming: A) ObjectVideo disclosed the 'art' in question (tripwires, calibration, etc.) more than a year prior to filing their first patent application cited in the suit and B) ObjectVideo willfully failed to disclose information showing this when they filed the patent.

The case is made in Sony's 64 page court filing - "Sony Electronic's Answers and Counterclaims" (25MB PDF). Of those 64 pages, the majority is boilerplate. The most interesting and relevant section is pages 48 - 57. The following are key excerpts that will help you understand Sony's claims:

  • Sony claims, "ObjectVideo developed, offered to sell, or sold its Automated Video Surveillance (AVS) product more than one year prior to the filing of US Patent Application No. 10/704,645" in 2003. The AVS product and publicly available documents 'taught' some of the claimed elements in the patents and were, therefore, prior art.
  • Sony claims that the applicants knew of the AVS product but failed to disclose 'with deceptive intent' to avoid prejudicing the pending patent applications.
  • Sony cites a "Critical Assets' IEEE White paper from December 2002 (see copy) that was not disclosed in the applications.

While we are not attornies and offer no legal opinions, one important question remains for us. The application for the first of ObjectVideo patents listed in this lawsuit was filed October 9, 2001 (the '945' patent). Even if the claims against the other applications (filed in 2003 or later) are deemed valid, could the original patent still be enforced?

For another defense agains the OV patents, see our report on a claim that late 1990 patent applications in Japan show prior art that should invalidate OV's patents.

5 reports cite this report:

Samsung Responds to OV's Lawsuit on Jul 17, 2011
Samsung has filed a legal response to ObjectVideo's lawsuit, becoming the last of the three companies sued to do so. In its filing, Samsung...
Can ObjectVideo Block Bosch, Samsung and Sony Cameras from the US? on Jun 29, 2011
ObjectVideo has expanded its patent litigation campaign to the US International Trade Commission (ITC), adding to their claim in US District Court....
Bosch Responds to ObjectVideo Lawsuit on Jun 21, 2011
The ObjectVideo lawsuit continues to make its way through the legal process. First, Sony responded to the lawsuit and now Bosch is responding. In...
ObjectVideo Responds to Sony's Counterclaim on Jun 21, 2011
In May 2011, Sony filed a counterclaim against ObjectVideo's April 2011 patent infringement allegations. In the counterclaim, Sony made a number of...
2011 Mid Year Video Surveillance Review on Jun 11, 2011
The first half of 2011 featured a number of important shifts within the video surveillance industry. In this report, we provide an overview of the...
Comments : Members only. Login. or Join.

Related Reports

UK ICO Approves Unconsented Facial Recognition At Security Conferences on Feb 05, 2020
The UK's data protection agency has declined IPVM's GDPR complaint against Dahua for using face recognition without consent at IFSEC last year,...
France Declares School Facial Recognition Illegal Due to GDPR on Oct 31, 2019
France is the latest European country to effectively prohibit facial recognition as a school access control solution, even with the consent of...
UK Facewatch GDPR Compliance Questioned on Aug 27, 2019
Even as the GDPR strictly regulates biometrics, a UK company called Facewatch is selling anti-shoplifter facial recognition systems to hundreds of...
First GDPR Facial Recognition Fine For Sweden School on Aug 22, 2019
A school in Sweden has been fined $20,000 for using facial recognition to keep attendance in what is Sweden's first GDPR fine. Notably, the fine is...
Cisco Settles False Claims Act Suit For Video Surveillance Vulnerabilities on Aug 01, 2019
Cisco entered the video surveillance market in 2007 and suffered for many years through a variety of its own errors and arrogance. The conclusion...
New GDPR Guidelines for Video Surveillance Examined on Jul 18, 2019
The highest-level EU data protection authority has issued a new series of provisional video surveillance guidelines. While GDPR has been in...
First Video Surveillance GDPR Fine In France on Jul 08, 2019
The French government has imposed a sizeable fine on a small business for violating the GDPR after it constantly filmed employees without informing...
Nortek and SDS Fight Over Failed Settlement on Jun 05, 2019
Distributor SDS said they reached a deal with Nortek but Nortek says no settlement was reached and the suit is still on. In this post, based on...
ADT's Top Dealer "The Defenders" Sued 20+ Times on May 07, 2019
ADT's largest authorized dealer, The Defenders, has been sued more than 20 times since 2012, IPVM has verified through analyzing legal...
UK Camera Commissioner Calls for Regulating Facial Recognition on Apr 15, 2019
IPVM interviewed Tony Porter, the UK’s surveillance camera commissioner after he recently called for regulations on facial recognition in the...

Most Recent Industry Reports

USA's Feevr Thermal Temperature System Examined on Mar 31, 2020
This US company has burst on to the scene, brashly naming itself 'feevr' and branding itself as a "COVID 19 - AI BASED NON CONTACT THERMAL...
JCI Coronavirus Cuts on Mar 31, 2020
JCI has made coronavirus cuts, the company told employees in an email that IPVM has reviewed. Inside this note, we examine the cuts made, the...
Add Door Operators To Fight Coronavirus on Mar 31, 2020
IPVM recommends that integrators advocate and end-users consider adding door operators to fight the spread of coronavirus. This delivers...
Video Surveillance Business 101 on Mar 30, 2020
This report explains the fundamental elements of the video surveillance business for those new to the industry. This is part of our Video...
FDA Gives Guidance on 'Coronavirus' Thermal Fever Detection Systems on Mar 30, 2020
The US FDA has given IPVM guidance on the use of thermal fever detection systems being marketed for coronavirus, as an explosion of such devices...
Worsen: Integrators Hit Even Harder By Coronavirus on Mar 30, 2020
Integrator's problems have worsened over the past 2 weeks, according to new IPVM survey results. Inside this report, we share statistics and...
Pivot3 Mass Layoffs on Mar 27, 2020
Pivot3 has conducted mass layoffs, the culmination of grand hopes, a quarter of a billion dollars in VC funding, and multiple failures to gain...
Athena CEO Criticizes 'Deplorable' 'Nitpicking', IPVM Refutes on Mar 27, 2020
UPDATE: NBC News Report Cites IPVM On Coronavirus 'Fever Detection' Cameras Athena Security's CEO Lisa Falzone has strongly objected to IPVM's...
Hikvision Admits Sanctions Harming Its Financial Performance on Mar 27, 2020
While Hikvision initially downplayed being sanctioned for human rights abuses, the company is now admitting a significant impact in a new PRC...