DCT
1:14-cv-01143
Rothschild Mobile Imaging Innovations LLC v. Citigroup Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Mobile Imaging Innovations, LLC (Florida)
- Defendant: Citigroup Inc. (Delaware), Citibank, N.A. (federally chartered), NCR Corporation (Maryland), and Mitek Systems, Inc. (Delaware)
- Plaintiff’s Counsel: Stamoulis & Weinblatt LLC; Shore Chan Depumpo LLP
- Case Identification: 1:14-cv-01143, D. Del., 07/08/2015
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendants Citigroup Inc and Mitek Systems, Inc. are incorporated in Delaware and all defendants conduct business within the state.
- Core Dispute: Plaintiff alleges that Defendants’ mobile banking and imaging services, such as mobile check deposit, infringe four patents related to capturing digital images, associating them with user-inputted or automatically generated information, and using symbology to retrieve the images and associated data.
- Technical Context: The patents address methods for embedding and linking metadata (such as location, user ID, and descriptive text) to digital images, a foundational technology for mobile imaging applications, including financial services like remote deposit capture.
- Key Procedural History: The complaint references prior litigation against Defendant Mitek, where allegations of willful infringement were dismissed due to a lack of pre-suit notice; Plaintiff repleads willfulness based on knowledge gained during that prior case and service of the original complaints. Notably, after the filing of this complaint, all asserted claims of all four patents-in-suit were cancelled in Inter Partes Review (IPR) proceedings before the U.S. Patent and Trademark Office, with certificates issued in February 2018.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-29 | Earliest Priority Date for all 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 |
| 2014-05-19 | Mitek served with original complaint, establishing knowledge date |
| 2014-09-08 | Citibank served with original complaint, establishing knowledge date |
| 2015-07-08 | First Amended Complaint Filing Date |
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’s background describes the difficulty of organizing digital photographs and associating meaningful information with them, noting that digital cameras typically assign generic numerical filenames that make later retrieval challenging (Compl. Ex. A, ’163 Patent, col. 1:21-44).
- The Patented Solution: The invention is a digital imaging device, such as a camera or mobile phone, that captures an image and then prompts the user to input information about it. A processing module associates this user-provided information with the digital image file, either by creating a separate linked file or by appending the data to the image file itself. Crucially, the device also includes a "scanning module" designed to read a "symbology" (e.g., a barcode) printed with a physical copy of the image, which allows the device to retrieve the original digital file and its associated information from a computer or network (’163 Patent, Abstract; col. 2:5-34).
- Technical Importance: The technology aimed to solve the practical problem of digital photo management by creating a durable link between a physical photograph and its corresponding digital data, facilitating organization and retrieval.
Key Claims at a Glance
- The complaint asserts infringement of one or more claims, with Claim 1 being a representative independent claim (Compl. ¶27).
- The essential elements of independent Claim 1 include:
- A "capture module" for creating a digital image file.
- An "input module" for inputting "storage location information" regarding where the digital image file will be stored on a separate external computing device.
- A "processing module" for associating the inputted information with the image file.
- A "transmission module" for sending the image file and associated information to the external computing device.
- A "scanning module" for reading a "symbology" from a printed version of the image file.
- The transmission module is adapted to transmit the symbology to the external device and "receive the digital image file and associated information retrieved" at the external device based on the symbology.
- A "display module" for displaying the retrieved file 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: As a continuation-in-part of the '163 Patent, the ’872 Patent addresses a further need for associating verifiable information with a captured image, including location, date, time, and authenticated user identity, to create a secure, auditable record (’872 Patent, col. 2:1-6).
- The Patented Solution: The invention adds several key modules to the digital imaging device concept: a "user verification module" (e.g., for password or biometric authentication), a "locational information module" (e.g., GPS), a "date and time module", and an "encryption module". The combination of these modules allows for the creation of a secure, encrypted digital image file that is durably associated with verified data about who took the picture, as well as where and when it was taken (’872 Patent, Abstract; Fig. 2).
- Technical Importance: This technology extends the concept of image metadata to applications requiring evidentiary integrity, such as documenting insurance claims, verifying service calls, or law enforcement activities, by creating a tamper-resistant record of an event.
Key Claims at a Glance
- The complaint asserts infringement of one or more claims, with Claim 1 being a representative independent claim (Compl. ¶42).
- The essential elements of independent Claim 1 include:
- A "user verification module" for verifying an identity of a user of the device and providing an assignment to the user.
- A "capture module" for capturing an image related to the assignment, wherein the user verification module verifies the user's identity "at a time of the image capture".
- A "locational information module" for determining the device's location when capturing the image.
- A "date and time module".
- A "processing module" for associating the assignment, user identity, location, and time/date with the image file.
- An "encryption module" for encrypting the image file 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 networked system for managing digital images. It describes a method where a user registers with an online image storage site to receive a unique Site Location Number (SLN) and Customer Identification Number (CIN). These identifiers, along with the date and a picture sequence number, are encoded into a symbology that is printed with the physical image, allowing the image to be linked back to its corresponding file on the online service for retrieval and processing (’792 Patent, Abstract).
- Asserted Claims: The complaint asserts infringement of one or more claims, with Claim 1 being a representative independent claim (Compl. ¶58).
- Accused Features: The complaint accuses the "Mobile Imaging Instrumentalities" generally, alleging they form part of a system for capturing, transmitting, and organizing images with associated information (Compl. ¶¶63-67).
U.S. Patent No. 7,995,118 - "Device and Method for Embedding and Retrieving Information in Digital Images"
- Issued: August 9, 2011
- Technology Synopsis: This patent, a continuation of the application leading to the '163 Patent, describes a digital imaging device for capturing an image and associating information with it. Its claims are distinct in requiring both a "first capture module" for capturing the primary image and a "second capture module" specifically configured to scan coded information or symbology associated with the image (’118 Patent, Claim 1).
- Asserted Claims: The complaint asserts infringement of one or more claims, with Claims 1, 19, and 20 being the independent claims (Compl. ¶74).
- Accused Features: The complaint broadly accuses the "Mobile Imaging Instrumentalities" of infringing by providing functionality to capture images and associate them with user and transaction data (Compl. ¶¶79-82).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are collectively referred to as "Mobile Imaging Instrumentalities." These include specific services like "Mobile Deposit," "Mobile Photo Bill Pay," and the "Citi Mobile" application, as well as the underlying software, platforms, and systems provided by Defendants (Compl. ¶14).
Functionality and Market Context
The complaint describes the accused functionality as allowing banking customers to use mobile devices (e.g., smartphones) to capture and upload digital images, such as images of checks for remote deposit, to Defendants' servers (Compl. ¶33, ¶49). These services process the digital images and store them with associated user and account information. The complaint alleges these mobile banking services are commercially important, driving customer engagement and generating revenue for Citibank (Compl. ¶34, ¶49).
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; | Defendants' mobile applications use the mobile device's camera to capture images of documents, such as checks for deposit. | ¶33 | col. 4:11-13 |
| an input module disposed on the camera device for inputting storage location information regarding each captured image... | The mobile applications are pre-configured to upload the captured images and associated user information to Defendants' specific servers. | ¶33, ¶49 | col. 4:51-54 |
| a processing module for associating the inputted information to the digital image file; | Defendants' systems process and store the uploaded digital images with the associated user and account information provided by their users. | ¶34, ¶49 | col. 4:47-50 |
| a scanning module for reading a symbology associated with a printed version of the digital image file... | The complaint does not specifically allege how the accused products read a symbology from a printed image to retrieve a stored digital file. | ¶33 | col. 5:18-24 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the "input module" limitation, which requires inputting "storage location information", can be met by a pre-configured application that automatically sends data to a predetermined server. A further question is whether scanning a check to initiate a deposit constitutes "reading a symbology... to receive the digital image file and associated information," as the claim requires a retrieval function, not a data-capture function.
- Technical Questions: What evidence does the complaint provide that the accused products perform the claimed retrieval step? The complaint focuses on the initial capture and upload of images for a transaction, which appears to be a fundamentally different technical operation from retrieving a previously stored file by scanning a symbology on a printed version of that file.
’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 complaint does not provide sufficient detail for analysis of this specific element, beyond general allegations of infringement. | ¶42 | col. 5:27-30 |
| wherein the user verification module verifies the identity of the user of the device at a time of the image capture; | The complaint does not provide sufficient detail for analysis of this specific element. | ¶42 | col. 17:1-3 |
| 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 specific element. | ¶42 | col. 5:52-54 |
| an encryption module for encrypting the digital image file and associated information upon image capture. | The complaint does not provide sufficient detail for analysis of this specific element. | ¶42 | col. 6:31-33 |
- Identified Points of Contention:
- Scope Questions: A primary question will be whether a standard mobile application login process qualifies as a "user verification module" that "verifies the identity of the user... at a time of the image capture." The patent specification suggests a feature designed to create a secure, auditable record for evidentiary purposes, which may imply a higher standard of verification than a simple login.
- Technical Questions: The complaint does not allege specific facts detailing how the accused mobile banking apps perform contemporaneous user verification, location capture, or encryption in the manner claimed.
V. Key Claim Terms for Construction
The Term: "scanning module for reading a symbology associated with a printed version of the digital image file... wherein the transmission module is adapted to... receive the digital image file and associated information retrieved at the external computing device based on the symbology" ('163 Patent, Claim 1)
Context and Importance: This term is critical because it defines the retrieval function at the core of the patented invention. The infringement theory appears to equate capturing an image of a check for deposit with the claimed function of scanning a symbol on a printed photo to retrieve the digital file. Practitioners may focus on this term to determine if there is a fundamental functional mismatch between the patent's disclosure and the accused products' operation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide a basis for a broad interpretation that would cover initiating a new transaction.
- Evidence for a Narrower Interpretation: The specification repeatedly describes the scanning module's purpose as retrieval: "The user will be able to scan the printed digital images... [to] extract the name of the digital image and the file locations... This information would then be transferred... to the relational database containing information on the digital images" (’163 Patent, col. 6:26-41). This suggests the scanning step is for accessing an existing record, not creating a new one.
The Term: "user verification module for verifying an identity of a user of the device... at a time of the image capture" (’872 Patent, Claim 1)
Context and Importance: The temporal requirement "at a time of the image capture" is central to the patent's goal of creating a verifiable, evidentiary record. The dispute may turn on whether a one-time login to an application session satisfies this limitation, or if the claim requires a distinct verification action contemporaneous with the capture of each image.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification mentions a "password protection algorithm" as one possibility, which could arguably cover a session login (’872 Patent, col. 5:31-32).
- Evidence for a Narrower Interpretation: The specification also describes biometric devices like "a retinal scanning device, finger print reader, facial recognition reader" and states the module's purpose is to "indicate and verify the identity of the user... at the time of the image capture," suggesting a robust, event-specific authentication process tied to the act of creating the image record (’872 Patent, col. 5:30-41).
VI. Other Allegations
- Indirect Infringement: The complaint alleges Defendants actively induce infringement by providing customers with websites, downloadable applications, and instructions that allegedly direct users to perform the claimed methods, such as capturing and uploading images with associated information (Compl. ¶¶32-34, 47-49).
- Willful Infringement: The complaint alleges willful infringement based on Defendants' knowledge of the patents. It alleges Mitek and Citibank had actual knowledge from at least May 19, 2014, and September 8, 2014, respectively, due to service in prior lawsuits (Compl. ¶28, ¶29). Knowledge for NCR is alleged from no later than the service of this complaint (Compl. ¶30). The complaint alleges Defendants continued their infringing conduct despite this knowledge (Compl. ¶38, ¶54).
VII. Analyst’s Conclusion: Key Questions for the Case
While post-filing Inter Partes Review proceedings resulted in the cancellation of all asserted claims, thereby rendering the case moot, the central disputes raised by the complaint as filed were:
- A core issue would have been one of functional equivalence: does the accused functionality of mobile check deposit, which involves scanning a document to initiate a financial transaction, perform the same function as the patented method of scanning a "symbology" on a printed photograph to retrieve a previously stored digital file and its associated metadata?
- A second key question would have been one of definitional scope: can claim terms such as "user verification module... at a time of the image capture," which are described in the patent in a context of creating a secure evidentiary record, be construed broadly enough to read on the conventional login and data-handling procedures of a standard mobile banking application?