[co-author:  J.R. Tulloch, Law Clerk]

On August 31, 2020, a U.S. District Court found that GoPro infringed two camera streaming patents from the action camera company, Contour, LLC. In the claim filed by Contour against GoPro, the company alleged infringement of two patents, U.S. Patent No. 8,890,954 and U.S. Patent No. 8,896,694. Both patents are entitled “Portable digital video camera configured for remote image acquisition control and viewing” and claim a hands-free, point-of-view digital video camera that allows remote operation as well as simultaneous streaming and camera storage.

The patents owned by Contour describe sending a live signal to your phone or another device as well as the ability to access the internal storage of the camera remotely. The patents expressly disclose the use of a Bluetooth-based wireless system used in conjunction with a GPS to track the location of the camera. Similarly, the GoPro app allows you to capture a live feed from the camera while recording, access previous recordings, and adjust the settings of the camera remotely. Therefore, the court agreed with Contour’s claim that GoPro’s remote app infringes on the technology patents and has done so since 2014.

John Keville, partner at Winston & Strawn LLP and attorney for Contour, stated “We are pleased with the rulings from US District Court’s Northern District. This is a positive step forward not just for Contour, but for encouraging innovation and fostering entrepreneurship through the protection and enforcement of patents. We look forward to a jury trial and a favorable resolution.”

In December, 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.

In an interesting twist to this story, the company taking GoPro to court is Contour IP Holding, LLC, a private-equity-firm that purchased the patents from the action camera maker Contour, LLC in 2015, which is no longer in business.