Rothschild Digital Confirmation LLC v. Simpro Software Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Rothschild Digital Confirmation, LLC (Texas)
  • Defendant: simPRO Software Ltd. d/b/a simPRO United States (Colorado)
  • Plaintiff’s Counsel: Kizzia Johnson, PLLC; CHAVOUS INTELLECTUAL PROPERTY LAW LLC
• Case Identification: 1:19-cv-01341, D. Colo., 05/08/2019
• Venue Allegations: Venue is alleged to be proper in the District of Colorado because Defendant is a Colorado corporation with its headquarters and principal place of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s "simPRO Connect" field service management software infringes a patent related to securely capturing digital images with associated user, location, and time metadata for verification purposes.
• Technical Context: The technology concerns methods for embedding verifiable data into digital image files at the point of capture, primarily for authenticating the activities of a user in a commercial or evidentiary setting.
• Key Procedural History: U.S. Patent No. 7,456,872 was the subject of an Inter Partes Review (IPR) proceeding (IPR2015-00624), which concluded on February 8, 2018. The IPR resulted in a certificate from the USPTO cancelling claims 27, 28, 38, and 39. The complaint, filed in 2019, asserts infringement of both claim 1 and the cancelled claim 27.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,456,872 - "Device and method for embedding and retrieving information in digital images"

The Invention Explained

• Problem Addressed: The patent background describes the difficulty and inefficiency of manually cataloging digital photographs and associating them with reliable contextual information. It highlights a "critical need" for a system to securely capture images along with verifiable data about the time, location, and user identity, which can serve to "verify the activities of the user, or to authenticate various data points." (’872 Patent, col. 1:48-67).
• The Patented Solution: The invention is a "Locational Image Verification Device" (LIVD) that integrates several modules. These modules work together to capture an image, verify the user's identity (e.g., via password or biometrics), determine the device's precise location (e.g., via GPS) and the exact time of capture, and then securely associate this metadata with the image file, including through encryption. (’872 Patent, Abstract; col. 12:31-42; Fig. 2). This creates a tamper-resistant record of an event.
• Technical Importance: The technology provides a method for creating authenticated digital records, which has applications in fields requiring proof of presence or action, such as insurance assessment, law enforcement, or field service verification. (’872 Patent, col. 16:34-53).

Key Claims at a Glance

• The complaint asserts independent claims 1 (apparatus) and 27 (method) (Compl. ¶52). As noted, a USPTO IPR Certificate cancelled claim 27 prior to the filing of this lawsuit (’872 Patent, IPR Certificate, p. 2).
• Independent Claim 1 recites a locational image verification device comprising the following essential elements:
  • A "user verification module" for verifying a user's identity, which then enables device operation and "provides an assignment to the user."
  • A "capture module" for capturing an image related to the assignment, where the user's identity is verified at the time of capture.
  • A "locational information module" for determining the device's location at capture.
  • A "date and time module" for determining the date and time of capture.
  • A "processing module" for associating the assignment, user identity, location, and time/date with the digital image file.
  • An "encryption module" for encrypting the digital image file and associated information "upon image capture."
• The complaint does not explicitly reserve the right to assert other claims, but alleges infringement of "at least claims 1 and 27" (Compl. ¶52).

III. The Accused Instrumentality

Product Identification

• The accused product is Defendant's "simPRO Connect" software, described as a mobile application for field service management (Compl. ¶25).

Functionality and Market Context

• The simPRO Connect application is used by field technicians on mobile devices. The complaint alleges that the software enables users to log in, receive work assignments, and use the mobile device's camera to capture photos related to their work (Compl. ¶26-28). The application is alleged to capture and associate location data via GPS, time and date information, and user identity with the captured images and other job data (Compl. ¶29-30). This information is then collected and linked to complete assignments, and the complaint alleges the data is stored and protected via encryption (Compl. ¶30-31).
• The complaint alleges the product is used for commercial purposes, marketed to consumers in Colorado, and that its use constitutes the basis for infringement (Compl. ¶6, ¶8).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

• Claim Chart Summary: The complaint alleges that the "simPRO Connect" application, when installed on a mobile device, creates an infringing "locational image verification device."

’872 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Question: The complaint asserts infringement of claim 27, which was cancelled in a prior IPR proceeding. This raises a threshold question as to whether this count can proceed.
  • Technical Question: Claim 1 requires an "encryption module" that encrypts the image file and associated data "upon image capture." The complaint points to an "encryption module for storing and protecting the collected field information data in the database" (Compl. ¶31). This raises the question of whether the accused encryption occurs on the mobile device immediately at capture, as the claim language may require, or at a later time, such as during transmission or upon storage in a remote server database.
  • Scope Question: Claim 1 requires a "user verification module" that "provides an assignment to the user." The complaint alleges a login function that enables a user to access assignments (Compl. ¶27). The litigation may turn on whether "provides an assignment" requires the module itself to deliver the assignment information, or if merely unlocking access to it is sufficient to meet the limitation.

V. Key Claim Terms for Construction

• The Term: "upon image capture"

• Context and Importance: This temporal language in the "encryption module" limitation is critical. The patent's emphasis on security and authentication suggests that immediate encryption on the device itself is a key feature to prevent tampering. Practitioners may focus on this term to determine if the claim requires encryption to occur substantially simultaneously with the image capture on the local device, or if it can encompass later encryption, for example, when data is synced to a server.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent does not explicitly define a specific time interval for "upon image capture," which could allow for an interpretation that includes encryption that occurs as part of the same overall process of capturing and saving the image and its associated data.
  • Evidence for a Narrower Interpretation: The patent describes an embodiment where information captured by various modules is "immediately encrypted by the encryption module 140 (step 712)" (’872 Patent, col. 14:50-56). The placement of the encryption module 140 within the block diagram of the device itself (Fig. 2) may further support a narrow construction limited to encryption on the device at the time of the capture event.

• The Term: "user verification module ... provides an assignment to the user"

• Context and Importance: The meaning of "provides an assignment" will be central to determining infringement. If construed narrowly to mean the module must generate or push the assignment to the user, the accused login function might not infringe. If construed broadly to mean the module enables access to an assignment, infringement may be more plausible.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes a process where a user receives assignments from an "office or supervisor" through the Global Computer Network, and then uses the device to perform those assignments (’872 Patent, col. 14:57-64). This context suggests the "user verification module" acts as a gateway to these pre-existing assignments, not as their source.
  • Evidence for a Narrower Interpretation: The claim language "provides an assignment" could be interpreted to require an active role by the module. A defendant might argue that in their system, the login module only provides authentication, and a separate, distinct software function retrieves and displays the assignment, meaning the "user verification module" itself does not "provide" it.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that simPRO induces infringement by instructing its customers to install and use the simPRO Connect app in a manner that infringes the ’872 patent. The alleged inducing acts include selling, advertising, and providing the software via websites and digital distribution platforms (Compl. ¶59).
• Willful Infringement: The complaint makes a boilerplate allegation of willful infringement, stating that Defendant "will have knowledge of infringement of the '872 patent upon the service of this Complaint" and that subsequent infringement will be knowing and intentional (Compl. ¶51). No facts are alleged to support pre-suit knowledge.

VII. Analyst’s Conclusion: Key Questions for the Case

1. Viability of Asserted Claims: A threshold issue is the complaint's assertion of claim 27, which the USPTO's public records show was cancelled via an Inter Partes Review a year before the suit was filed. The viability of this count is a fundamental question for the court.

2. Timing of Encryption: A central technical dispute will likely be one of temporal and locational functionality: does the accused system's encryption occur "upon image capture" on the user's mobile device, as claim 1 may require for its security function, or does it occur at a later stage (e.g., upon upload to a server), potentially placing it outside the claim's scope?

3. Definitional Scope: The case may also turn on a key question of claim construction: does the phrase "provides an assignment to the user" require the "user verification module" to be the source of the assignment, or is it sufficient for the module to merely authenticate a user and unlock access to an assignment provided by another part of the software system?