DCT
1:14-cv-01142
Rothschild Mobile Imaging Innovations LLC v. Bank Of America Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Mobile Imaging Innovations, LLC (Florida)
- Defendant: Bank of America Corporation (Delaware), Bank of America, N.A. (Federally Chartered), and Mitek Systems, Inc. (Delaware)
- Plaintiff’s Counsel: Stamoulis & Weinblatt LLC; Shore Chan Depumpo LLP
- Case Identification: 1:14-cv-01142, D. Del., 09/08/2014
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendants Bank of America Corporation and Mitek Systems, Inc. are incorporated in Delaware and are subject to personal jurisdiction there.
- Core Dispute: Plaintiff alleges that Defendants’ mobile banking applications and platforms, which enable services such as mobile check deposit, infringe four patents related to capturing, associating, and retrieving data with digital images.
- Technical Context: The technology at issue falls within the domain of mobile remote deposit capture (RDC), a widely adopted feature in the financial services industry that allows customers to deposit checks using a camera-equipped mobile device.
- Key Procedural History: The complaint alleges that Defendant Mitek had actual knowledge of the patents-in-suit due to a prior lawsuit, Rothschild Mobile Imaging Innovations LLC v. Mitek Systems Inc, et al., Case No. 1:14-cv-00617, filed in the same district. Subsequent to the filing of this complaint, Inter Partes Review (IPR) proceedings were initiated against all four patents-in-suit. These IPRs resulted in the cancellation of all claims of U.S. Patent Nos. 7,450,163, 7,991,792, and 7,995,118, and the cancellation of claims 27, 28, 38, and 39 of U.S. Patent No. 7,456,872. These subsequent events raise fundamental questions about the viability of the infringement claims as originally pleaded.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-29 | Earliest Priority Date for all four patents-in-suit |
| 2008-11-11 | U.S. Patent No. 7,450,163 Issues |
| 2008-11-25 | U.S. Patent No. 7,456,872 Issues |
| 2011-08-02 | U.S. Patent No. 7,991,792 Issues |
| 2011-08-09 | U.S. Patent No. 7,995,118 Issues |
| 2014-05-13 | "First Mitek Suit" (1:14-cv-00617) Filed |
| 2014-09-08 | Complaint Filed in the Present Action |
| 2018-02-08 | IPR Certificate Issues for U.S. Patent No. 7,456,872 |
| 2018-02-13 | IPR Certificates Issue for 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 difficulty of organizing and retrieving digital photographs, which are often stored with generic, numerical filenames that lack descriptive meaning, making cataloging a "time consuming and arduous affair" (’163 Patent, col. 1:24-27, col. 1:35-42).
- The Patented Solution: The invention is a digital imaging device (e.g., a camera or mobile phone) that, after capturing an image, prompts the user to input information about it (’163 Patent, Fig. 4). This information is then associated with the digital image file, either by creating a separate linked file or by appending the data to the image file itself (’163 Patent, col. 2:50-54). The device can also later scan a "symbology" (e.g., a barcode) on a printed version of the image to retrieve the associated data (’163 Patent, col. 2:20-27).
- Technical Importance: The technology aimed to streamline the workflow for annotating and organizing the rapidly growing number of digital images being created by consumers and professionals.
Key Claims at a Glance
The complaint asserts infringement of "one or more claims" without specification (Compl. ¶25). Independent claim 1 is representative and foundational.
- A digital imaging camera device comprising:
- a capture module for capturing an image and creating a digital image file;
- an input module for inputting storage location information regarding the captured image, indicative of a storage location on a separate external computing device;
- a processing module for associating the inputted information to the digital image file;
- a transmission module for transmitting the image and associated information to the external computing device;
- a scanning module for reading a symbology associated with a printed version of the image to retrieve the image file and associated information; and
- a display module for displaying the retrieved image and information.
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 to not only associate information with an image but also to securely verify the context of its creation, including the user's identity, location, and the precise time and date of capture (’872 Patent, col. 2:1-6). This is described as a "critical need" for authenticating data and verifying user activities (’872 Patent, col. 10:65-67).
- The Patented Solution: The invention is a "Locational Image Verification Device" that captures an image and associates it with data from several other modules: a "user verification module" (e.g., biometrics), a "locational information module" (e.g., GPS), and a "date and time module" (’872 Patent, Fig. 2). The system also includes an "encryption module" to secure the image and its associated verification data upon capture, making it "virtually tamper proof" (’872 Patent, col. 15:53-56).
- Technical Importance: This technology addresses applications where image authenticity is paramount, such as for insurance adjusters documenting damage, law enforcement gathering evidence, or field service agents verifying tasks.
Key Claims at a Glance
The complaint asserts infringement of "one or more claims" without specification (Compl. ¶30). Independent claim 1 is representative.
- A locational image verification device for verifying an assignment of a user comprising:
- a user verification module for verifying a user's identity, which enables operation and provides an assignment;
- a capture module for capturing an image relating to the assignment;
- a locational information module for determining the device's location when capturing the image;
- 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 image file; and
- an encryption module for encrypting the image and associated information upon capture.
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
- Technology Synopsis: This patent focuses on a system for linking physical, printed images to data stored on a computer network. It describes creating a unique identifier—comprising a site location number (SLN), customer identification number (CIN), date image was taken (DIT), and picture sequence number (PSN)—encoding this identifier as a "symbology" (e.g., a barcode or alphanumeric string), and printing it with the image. This symbology can later be scanned to retrieve the image and associated data from a server (’792 Patent, Abstract).
- Asserted Claims: The complaint alleges infringement of "one or more claims" of the ’792 Patent (Compl. ¶36).
- Accused Features: The "Mobile Imaging Instrumentalities," including the Bank of America mobile banking application and Mitek's underlying platform, are accused of infringement (Compl. ¶36).
U.S. Patent No. 7,995,118 - "Device and Method for Embedding and Retrieving Information in Digital Images," Issued August 9, 2011
- Technology Synopsis: As a continuation of the application leading to the ’163 Patent, this patent covers similar ground. It describes a digital imaging device that includes modules for capturing an image, inputting information about the image, associating that information with the image file, and scanning a symbology on a printed version to retrieve the information. It is substantially similar in scope and disclosure to the ’163 Patent (’118 Patent, Abstract).
- Asserted Claims: The complaint alleges infringement of "one or more claims" of the ’118 Patent (Compl. ¶41).
- Accused Features: The "Mobile Imaging Instrumentalities," including the Bank of America mobile banking application and Mitek's underlying platform, are accused of infringement (Compl. ¶41).
III. The Accused Instrumentality
- Product Identification: The complaint collectively refers to the accused products and services as the "Mobile Imaging Instrumentalities" (Compl. ¶12). This group includes specific Bank of America services like "Mobile Deposit" and "Mobile Photo Bill Pay," the "Bank of America - Mobile Banking" application, and the underlying "Mobile Imaging Platform" and software provided by Mitek Systems, Inc. (Compl. ¶12).
- Functionality and Market Context: The core accused functionality is mobile remote deposit capture. The complaint alleges that the Mobile Imaging Instrumentalities are "especially designed for mobile devices" and allow banking customers to "easily capture and upload digital images" of checks to Defendants' servers for deposit (Compl. ¶27, ¶7). The complaint alleges this service provides a commercial benefit to Bank of America by attracting and retaining customers, increasing deposits, and generating revenue (Compl. ¶27).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain claim charts or detailed infringement contentions. The following tables summarize the infringement theories as they can be inferred from the general allegations against the "Mobile Imaging Instrumentalities."
’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; | The mobile banking app using a device’s camera to capture an image of a check. | ¶27 | col. 7:11-27 |
| an input module...for inputting storage location information...on a separate external computing device; | The app's user interface allowing a customer to select a specific bank account for deposit, where that account exists on the bank's remote servers ("external computing device"). | ¶27 | col. 10:5-10 |
| a processing module for associating the inputted information to the digital image file; | Backend server software linking the selected account information with the corresponding check image file. | ¶27 | col. 6:62-65 |
| a transmission module for transmitting the digital image file and the associated information...; | The mobile app transmitting the check image and associated deposit information over a network to the bank's servers. | ¶27 | col. 8:37-54 |
| a scanning module for reading a symbology associated with a printed version of the digital image...; | The bank’s backend system processing the check image to read data from it, which Plaintiff may argue constitutes reading a "symbology" (e.g., the MICR line). | ¶27 | col. 8:18-36 |
| a display module...for displaying the retrieved digital image file and associated information. | The mobile app displaying a confirmation of the deposit, which may include an image of the check and transaction details, after processing by the server. | ¶27 | col. 7:36-46 |
’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 of the device...; | The mobile banking app's login process, requiring a username and password or other credentials to authenticate the user before a transaction. | ¶32-33 | col. 12:26-42 |
| a capture module for capturing an image relating to the assignment...; | The mobile app using the device’s camera to capture a check image as part of the "assignment" of making a deposit. | ¶32 | col. 11:13-29 |
| a locational information module for determining a location of the device when capturing the image; | The complaint does not provide sufficient detail for analysis of this element. | N/A | col. 12:43-51 |
| a date and time module for determining a date and time of the image capture; | The system automatically generating and associating a timestamp with the mobile deposit transaction. | ¶32 | col. 12:5-12 |
| a processing module for associating the assignment, the user identity, location information and the time and date...; | Backend server software associating the user's identity, the transaction details, and the timestamp with the check image file. | ¶32 | col. 17:3-6 |
| an encryption module for encrypting the digital image file and associated information upon image capture. | The use of secure network protocols (e.g., SSL/TLS) to encrypt the check image and transaction data during transmission from the mobile device to the server. | ¶32 | col. 12:31-40 |
- Identified Points of Contention:
- Scope Questions: A central issue is whether the patents, which describe systems for cataloging personal photos or verifying field service activities, can be construed to cover mobile check deposit. This raises questions such as: Does selecting a bank account constitute inputting "storage location information" as taught in the patent? Can a server's automated reading of a check's MICR line be considered a "scanning module for reading a symbology"?
- Technical Questions: The complaint provides no specific factual allegations that the accused system uses a "locational information module" to determine the geographic location of image capture as required by the ’872 Patent. The viability of this infringement theory would depend on evidence of such functionality.
V. Key Claim Terms for Construction
Term: "storage location information" (’163 Patent, claim 1)
- Context and Importance: The infringement theory for the ’163 Patent appears to depend on this term being broad enough to encompass a user selecting a bank account for a deposit. Defendants may argue for a narrower construction limited to file directories, which would create a mismatch with the accused functionality.
- Intrinsic Evidence for a Broader Interpretation: The claim language itself is general, requiring information "indicative of a storage location on a separate external computing device" without specifying the format of that location (’163 Patent, col. 10:7-10).
- Intrinsic Evidence for a Narrower Interpretation: The specification's primary embodiment describes a user selecting a file path, such as "a folder on his local computer," to store personal photographs, suggesting a direct mapping to a file system structure (’163 Patent, col. 8:49-50; Fig. 7).
Term: "locational information module" (’872 Patent, claim 1)
- Context and Importance: Infringement of the ’872 Patent hinges on whether the accused system includes a module for determining the device's physical location at the time of image capture. Practitioners may focus on whether this requires specific hardware like a GPS receiver or if it can be met by less precise, network-based methods.
- Intrinsic Evidence for a Broader Interpretation: The specification discloses the module may employ "Global Positioning Satellite (GPS) Technology, Loran Technology, or any other available locational technology," which could support an argument that methods other than GPS fall within the claim scope (’872 Patent, col. 5:54-59).
- Intrinsic Evidence for a Narrower Interpretation: The patent’s objective is to "verify the activities of the user" and provide proof of presence at a "specific address location," which suggests a need for precise geographic data, as would be provided by GPS, rather than more general location information (’872 Patent, col. 15:58-63).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants actively induce infringement by providing downloadable applications and instructions that "allow mobile device users and banking customers to easily capture and upload digital images to Defendants' servers" in an infringing manner (Compl. ¶27, ¶32). This is based on Defendants allegedly providing the means (the app) and the instructions for its infringing use.
- Willful Infringement: Willfulness is alleged based on Mitek’s purported "actual knowledge" of the patents-in-suit. The complaint anchors this allegation to the filing of a prior lawsuit, the "First Mitek Suit," which put Mitek on notice of the patents and the infringement allegations before the complaint in this action was filed (Compl. ¶26, ¶31, ¶37, ¶42).
VII. Analyst’s Conclusion: Key Questions for the Case
The procedural history subsequent to the complaint's filing is dispositive. The cancellation of all claims of three of the four patents-in-suit, and key claims of the fourth, in IPR proceedings fundamentally reshapes the dispute. The central questions are therefore less about the merits of the original complaint and more about its remaining viability.
- A primary legal question is one of viability: Given the cancellation of all claims of the ’163, ’792, and ’118 patents via IPR, on what basis can the infringement counts related to these patents proceed?
- A key question for the remaining patent (’872) is one of scope and evidence: Can Plaintiff prove that the accused mobile banking system infringes one of the surviving claims of the ’872 patent, which were not analyzed in the complaint? This would require both a favorable claim construction and sufficient evidentiary support for elements such as the "locational information module", a feature not detailed in the complaint's allegations.
- A final question concerns claim preclusion: Does the cancellation of the asserted independent claims in IPR effectively preclude the Plaintiff from pursuing infringement under the doctrine of equivalents or asserting dependent claims that were not specifically pled in the original, generally-worded complaint?