What is the likelihood I can get permission to use recording process as Udacity has on their videos?

Question

I'm starting a side business for educational software engineering videos and I absolutely love the overlay with transparency Udacity has on their videos. Today I discovered their process has a patent (https://www.slwip.com/wp-content/uploads/2016/05/USP-9049482B2.-Udacity.pdf) This brings a couple of questions:

1. If I were to produce similar video with the transparent overlay, will I be in total infringement of the patent? How likely is that they consider it an infringement?
2. To err on the side of being cautions, how likely is that I can get their permission to have the same overlay result as in their videos? How costly would it be for me to get permission? I'm barely getting started with the business.

More resources: https://blog.udacity.com/2014/09/udacity-videos-transparent-hand.html

Answer 1

As the answer from @EricS explains, to infringe you need to perform all of the elements in at least one claim. If you can find a way to achieve the same or similar result without performing all of the elements of any claim you would not be infringing a patent just because you achieve a similar result.

Note that several claims (7, 9, 23, 30) do not require a camera or a mobile device. Separately, if you look at the google patents page regarding this patent you will see 8 cited patent references and a few non-patent references that the applicant or examiner found that preceded this patent. That material could give you a starting point to find methods similar to that of the patent that can not be seen as infringing this patent.

That brings up an other important issue. There may well be other patents that would be infringed if one practiced this patent even with a license from Udacity.

By the same token, working around these claims could result in a method that infringes some other patent entirely.

Answer 2

To try to answer your first question, you need to look at the claims in the patent. The first claim is as follows:

1. A composite lecture video generation system comprising:

   a mobile device operable to generate a screen capture video, based on display output being output from a display screen of the mobile device, the screen capture video including display output corresponding to graphical markings;

   a video camera module operable to generate an audio-visual recording of the display screen, the graphical markings, and one or more physical objects positioned between the video camera and the display screen; and

   a composite lecture video generator operable to:

   process the screen capture video to increase a transparency of one or more white portions of the screen capture video;

   synchronize a timing and an orientation of the processed screen capture video with a timing and an orientation of the audio-visual recording, by matching, for each of one or more video frames of the processed screen capture video, the graphical markings included in the corresponding video frame of the processed screen capture video with the graphical markings recorded in a specific video frame of the audio-visual recording; and

   superimpose the synchronized processed screen capture video over the synchronized audio-visual recording to generate a composite lecture video, the composite lecture video including the graphical markings included in the screen capture video superimposed over the graphical markings recorded in the audio-visual recording.

To infringe on a patent you need to implement each and every step in at least one claim. Claim one specifies the use of a video camera. So for instance if your implementation only uses a digitizer and not video camera, you would be clear of claim 1. Each claim needs to be evaluated in this manner separately.

I don't know how you plan on implementing your overlay. What you need to do is read each of the claims and see if your implementation utilizes each and every step in the claim. You should focus on the independent claims (1, 4, 7, 9, 23 and 30).

As to your second question, that is a business matter and not predictable for me. If your overlay clearly infringes on one or more claim, then you should definitely inquire about licensing as there is no real downside. Some companies are happy to license IP for to non-competitive companies and some aren't.

Lastly, if you are using a software product which already has some sort of overlay functionality, it is entirely possible that it is already licensed and free to be used. In this case I would inquire with the software publisher as to the legal status of the functionality being used.