DCT
1:14-cv-00617
Rothschild Mobile Imaging Innovations LLC v. Mitek Systems Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Mobile Imaging Innovations, LLC (Florida)
- Defendant: Mitek Systems, Inc. (Delaware)
- Plaintiff’s Counsel: Stamoulis & Weinblatt LLC; Shore Chan DePumpo LLP
- Case Identification: 1:14-cv-00617, D. Del., 05/16/2014
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the defendant, Mitek Systems, Inc., is a Delaware corporation and is subject to personal jurisdiction in the state.
- Core Dispute: Plaintiff alleges that Defendant’s mobile imaging products, including its remote deposit capture platform, infringe four patents related to capturing digital images and associating them with metadata for organization, retrieval, and verification.
- Technical Context: The technology concerns methods for embedding data—such as user input, location, time, and identity verification—into digital image files at the point of capture on a mobile device, a foundational process for modern mobile financial transactions.
- Key Procedural History: The complaint alleges that Plaintiff's patents pre-date Defendant's own mobile deposit patents by at least three years. Subsequent to the filing of this complaint, Inter Partes Review (IPR) proceedings were initiated against the patents-in-suit. In 2018, the Patent Trial and Appeal Board issued certificates cancelling all asserted claims of the '163, '792, and '118 patents, and a subset of the claims of the '872 patent.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-29 | Earliest Priority Date for all Patents-in-Suit |
| c. 2008-01-01 | Defendant Mitek allegedly "pioneered" accused mobile imaging software |
| 2008-11-11 | U.S. Patent No. 7,450,163 Issued |
| 2008-11-25 | U.S. Patent No. 7,456,872 Issued |
| 2011-08-02 | U.S. Patent No. 7,991,792 Issued |
| 2011-08-09 | U.S. Patent No. 7,995,118 Issued |
| 2014-05-16 | Complaint Filed |
| 2015-01-26 | IPR proceedings initiated against patents-in-suit |
| 2018-02-08 | IPR certificate issues cancelling claims of U.S. Patent No. 7,456,872 |
| 2018-02-13 | IPR certificates issue cancelling all claims of U.S. Patent Nos. 7,450,163, 7,991,792, and 7,995,118 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,450,163 - "Device and Method for Embedding and Retrieving Information in Digital Images," issued November 11, 2008
The Invention Explained
- Problem Addressed: The patent describes the process of organizing and cataloging photographs as an "extensive, manual procedure." Digital cameras assign meaningless numerical filenames, making it "extremely difficult to retrieve and/or reorganize the images" later ('163 Patent, col. 1:15-34).
- The Patented Solution: The invention proposes a digital imaging device that, after capturing an image, prompts the user to input information about it. This information is then associated with the digital image file, either by creating a separate linked data file or by appending the data to the image file itself. The system also describes scanning a "symbology" (e.g., a barcode) printed with an image to retrieve the associated digital file and information from a computer. ('163 Patent, Abstract; Fig. 4; col. 2:36-41).
- Technical Importance: The technology aimed to streamline photo management by enabling metadata association at or near the time of image capture, directly on the capture device. ('163 Patent, col. 1:41-44).
Key Claims at a Glance
- The complaint asserts infringement of "one or more claims" without specifying which ones (Compl. ¶20). Independent claim 1 is representative of the invention.
- Independent Claim 1 recites a digital imaging camera device with:
- A "capture module" for capturing an image.
- An "input module" for a user to input "storage location information" for the image on an "external computing device".
- A "processing module" to associate the inputted information with the image file.
- A "transmission module" to transmit the image and associated information to the external device.
- A "scanning module" to read a "symbology" from a printed version of the image to retrieve the file.
- A "display module" to display the retrieved image and information.
- The complaint reserves the right to modify its infringement allegations as the case proceeds (Compl. ¶42).
U.S. Patent No. 7,456,872 - "Device and Method for Embedding and Retrieving Information in Digital Images," issued November 25, 2008
The Invention Explained
- Problem Addressed: The patent identifies a need for "verifying information captured via digital images" and for a "secure format containing information on the time and day, specific location and user identification" to authenticate user activities ('872 Patent, col. 2:2-6, col. 2:60-65).
- The Patented Solution: The invention is a "Locational Image Verification Device" that enhances a digital camera with security and authentication features. It integrates a "user verification module" (e.g., biometric or password), a "locational information module" (e.g., GPS), and a date/time module. Upon capture, it associates this verification data with the image and uses an "encryption module" to secure the resulting file and its associated data. ('872 Patent, Abstract; col. 13:45-57).
- Technical Importance: The patented system provides a method for creating authenticated, geo-tagged, and time-stamped digital records, useful for evidentiary purposes such as verifying field assignments for insurance adjusters or military personnel ('872 Patent, col. 16:25-52).
Key Claims at a Glance
- The complaint asserts infringement of "one or more claims" (Compl. ¶25). Independent claim 1 is representative.
- Independent Claim 1 recites a "locational image verification device for verifying an assignment of a user" with:
- A "user verification module" to verify a user's identity and provide an "assignment".
- A "capture module" to capture an image related to the assignment.
- A "locational information module" to determine the device's location.
- A "date and time module".
- A "processing module" to associate the assignment, identity, location, and time/date with the image file.
- An "encryption module" to encrypt the image file and associated information upon capture.
- The complaint reserves the right to modify its allegations (Compl. ¶42).
U.S. Patent No. 7,991,792 - "System and Method for Embedding Symbology in Digital Images and Using the Symbology to Organize and Control the Digital Images," issued August 2, 2011
- Patent Identification: U.S. Patent No. 7,991,792, "System and Method for Embedding Symbology in Digital Images and Using the Symbology to Organize and Control the Digital Images," issued August 2, 2011 (Compl. ¶11).
- Technology Synopsis: This patent discloses a system for linking physical printed images to data stored on a network. It describes creating a unique, multi-part identifier composed of a site location number (SLN), a customer identification number (CIN), the date the image was taken (DIT), and a picture sequence number (PSN). This identifier is encoded as a symbology and printed with the image, allowing a user to scan it later to retrieve the original digital file and its associated data from an online service ('792 Patent, Abstract).
- Asserted Claims: "one or more claims" (Compl. ¶30). Independent claim 1 is representative.
- Accused Features: The complaint accuses Mitek's mobile imaging platform, which facilitates the capture and transmission of images (e.g., of checks) for processing by financial institutions, a process that inherently involves the creation and association of unique identifiers with image-based transactions (Compl. ¶15).
U.S. Patent No. 7,995,118 - "Device and Method for Embedding and Retrieving Information in Digital Images," issued August 9, 2011
- Patent Identification: U.S. Patent No. 7,995,118, "Device and Method for Embedding and Retrieving Information in Digital Images," issued August 9, 2011 (Compl. ¶13).
- Technology Synopsis: This patent, related to the '163 patent, describes a digital imaging device that enables a user to input subject and storage location information. A distinct feature is the use of a "second capture module" specifically configured to scan "coded information" (e.g., a barcode or other symbology) for association with a captured image before the data package is transmitted to an external computing device ('118 Patent, Claim 1).
- Asserted Claims: "one or more claims" (Compl. ¶35). Independent claim 1 is representative.
- Accused Features: The accused Mitek products allegedly perform the functions of capturing an image of a document (e.g., a check) and using the device's capture abilities to scan and extract coded information from it (such as the MICR line), then associating that information with the image for transmission (Compl. ¶15).
III. The Accused Instrumentality
Product Identification
- The complaint names a suite of "Infringing Mobile Imaging Instrumentalities," including "Mitek's Mobile Deposit, Mobile Photo Bill Pay, Mobile Photo Account Opening, Mobile Photo Payments, Mobile Photo Balance Transfer, Mobile Photo Account Funding, Mobile Insurance Quote and Mobile Imaging Platform" (Compl. ¶15).
Functionality and Market Context
- The accused products are described as "mobile imaging software" that enables users of smartphones and tablets to "remotely deposit checks, pay their bills, get insurance quotes, and transfer credit card balances by snapping a picture" (Compl. ¶17). Plaintiff alleges that Mitek "pioneered" this software in 2008 and that its technology is used by "many of the largest banks in the United States and the world," giving it significant market presence (Compl. ¶¶16, 17).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'163 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a capture module for capturing an image and creating a digital image file; | Mitek's software utilizes a smartphone's camera to capture an image of a document, such as a check. | ¶17 | col. 3:11-14 |
| an input module...for inputting storage location information...on a separate external computing device...; | A user, by launching a specific banking application that incorporates Mitek's technology, designates that bank's remote server as the storage location for the transaction. | ¶¶15, 16 | col. 10:5-13 |
| a processing module for associating the inputted information to the digital image file; | Mitek's platform associates the captured image with related data, such as account and transaction information, for processing. | ¶16 | col. 2:63-65 |
| a transmission module for transmitting the digital image file and the associated information to the external computing device...; | The software transmits the captured image and associated data over a network to the financial institution's servers. | ¶16 | col. 4:41-44 |
| a scanning module for reading a symbology associated with a printed version of the digital image file...and receive the digital image file and associated information retrieved...; | The complaint does not provide sufficient detail for analysis of this element. | col. 10:17-25 | |
| a display module...for displaying the retrieved digital image file and associated information. | The smartphone's screen displays the captured image to the user for confirmation before submission. | ¶17 | col. 4:36-39 |
- Identified Points of Contention:
- Scope Questions: A likely point of dispute is whether a user's selection and use of a specific bank's application constitutes "inputting storage location information" as required by the claim, or if the claim requires a more explicit user designation of a server or file path.
- Technical Questions: The infringement theory for the '163 patent appears to break down on the "scanning" and "retrieving" limitations. The complaint provides no facts alleging that Mitek's products read a symbology from a printed image to retrieve a previously stored digital file, which is the full cycle recited in the claim.
'872 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a user verification module for verifying an identity of a user...and provides an assignment to the user; | Banking applications powered by Mitek require user authentication (e.g., login credentials). The "assignment" is the task of making a mobile deposit. | ¶17 | col. 5:26-31 |
| a capture module for capturing an image relating to the assignment...; | The smartphone camera is used to capture the check image to complete the mobile deposit "assignment." | ¶17 | col. 3:11-14 |
| a locational information module for determining a location of the device when capturing the image; | The device's GPS or network-based location services can be used by the application to determine the location of the transaction. | ¶17 | col. 6:51-54 |
| a date and time module for determining a date and time of the image capture; | The smartphone's operating system provides a date and time stamp for the transaction. | ¶17 | col. 6:4-9 |
| a processing module for associating the assignment, the user identity, location information and the time and date to the digital image file; | Mitek's platform allegedly combines the image with associated metadata, including user, location, and time data. | ¶16 | col. 6:1-3 |
| an encryption module for encrypting the digital image file and associated information upon image capture. | Financial applications use standard network encryption protocols (e.g., SSL/TLS) to securely transmit the image and transaction data. | ¶16 | col. 6:31-36 |
- Identified Points of Contention:
- Scope Questions: A central question is whether the claim preamble, "a locational image verification device for verifying an assignment of a user," is a limiting element. If so, a court would need to decide if a user-initiated check deposit qualifies as an "assignment," a term the patent illustrates with employer-directed tasks.
- Technical Questions: The complaint does not specify how the accused products perform the association and encryption steps. A factual question will be whether the platform merely transmits data over an encrypted channel or if it performs the claimed step of creating an encrypted digital image file that includes the associated identity, location, and time data "upon image capture" as a single package.
V. Key Claim Terms for Construction
For the '163 Patent
- The Term: "symbology"
- Context and Importance: The viability of the infringement claim hinges on this term, as the claim requires a complete cycle of storing an image, printing it with a "symbology", and then later scanning that "symbology" to retrieve the original file. Practitioners may focus on this term because the complaint provides no facts showing the accused products perform this retrieval loop.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the "symbology" may be in "any form currently practiced in the art including barcodes (e.g., UPC, EAN, PDF417, etc.), photosymbols, standard or specialized text, etc, or any future type of symbology" ('163 Patent, col. 6:12-16). This broad definition could be argued to cover various machine-readable markings.
- Evidence for a Narrower Interpretation: The context consistently links the "symbology" to a printed image and its use for later retrieval ('163 Patent, col. 2:56-60, "retrieving the associated information by scanning a symbology printed with the captured digital image"). This suggests the term is tied to a physical-to-digital workflow, which may not map onto the purely digital transactions of the accused products.
For the '872 Patent
- The Term: "verifying an assignment of a user"
- Context and Importance: This phrase from the preamble of claim 1 may be deemed limiting, and its construction is critical to determining if the patent applies to consumer financial transactions or is restricted to enterprise or governmental contexts.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff could argue that an "assignment" is simply any task given to a user, including the implicit task to "deposit this check" when using a banking app. The claims themselves do not restrict the type of user or assignment.
- Evidence for a Narrower Interpretation: The detailed description provides specific examples of assignments, such as an employer directing a social worker to visit clients or a supervisor tasking an insurance adjuster with assessing damaged residences ('872 Patent, col. 15:62-col. 16:24). This context suggests an "assignment" is a task directed from a third party (like an employer) to a user for verification, not a self-initiated consumer action.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement of infringement under 35 U.S.C. § 271(b) for all four patents. The allegations state Mitek provides its platform to third parties (e.g., banks and their customers) and encourages infringement by "advertising and marketing the infringing use," creating distribution channels, and "providing instructions and technical support" (e.g., Compl. ¶¶22, 27).
- Willful Infringement: For each patent, the complaint alleges that Mitek had knowledge of the patent and infringement "at least since filing of this lawsuit" (e.g., Compl. ¶¶21, 26). This pleading supports a claim for post-filing willfulness only. The prayer for relief seeks a finding of willfulness and enhanced damages (Compl. p. 11, ¶¶ B, E).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can terms rooted in the context of manual photo-cataloging ("inputting storage location information") or employer-verified fieldwork ("verifying an assignment") be construed to cover the automated, user-initiated processes of a mobile check deposit application? The mismatch between the problems described in the patents and the real-world function of the accused products raises significant claim construction questions.
- A second key question will be one of evidentiary proof: the complaint provides a high-level, conclusory theory of infringement. The case would depend on Plaintiff’s ability to produce specific evidence demonstrating that Mitek’s platform technically operates in the precise manner recited by the claims, particularly for the multi-step association, scanning, and encryption limitations.
- The dispositive question for much of this case, however, was patent validity. The subsequent cancellation of all asserted claims in three of the four patents-in-suit (and key claims in the fourth) during IPR proceedings underscores that the primary battleground was the patentability of the claimed inventions themselves, a question ultimately resolved against the patent holder for the vast majority of the asserted portfolio.