DCT
1:14-cv-01144
Rothschild Mobile Imaging Innovations LLC v. Wells Fargo & Co
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Mobile Imaging Innovations, LLC (Florida)
- Defendant: Wells Fargo & Company (Delaware), Wells Fargo Bank, N.A. (Federally Chartered), Fiserv, Inc. (Wisconsin), and Mitek Systems, Inc. (Delaware)
- Plaintiff’s Counsel: Stamoulis & Weinblatt LLC; Shore Chan DePumpo LLP
- Case Identification: 1:14-cv-01144, D. Del., 07/08/2015
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendants Wells Fargo & Company and Mitek Systems, Inc. are incorporated in Delaware.
- Core Dispute: Plaintiff alleges that Defendants’ mobile imaging products and services, such as mobile check deposit and mobile bill pay applications, infringe four patents related to capturing digital images and associating them with various forms of information.
- Technical Context: The technology at issue involves methods for embedding metadata—such as user information, location, time, and storage instructions—into digital image files at the point of capture using a mobile device.
- Key Procedural History: The complaint states that Defendant Mitek was previously accused of infringing the patents-in-suit in an earlier case filed on May 19, 2014. It also notes that the Court previously dismissed willfulness allegations against Mitek based on a lack of pre-suit notice, which Plaintiff repleads in the current amended complaint. The complaint further alleges that Defendant Wells Fargo had pre-suit knowledge of the patent portfolio as of January 25, 2013, based on an email from the Plaintiff.
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 |
| 2013-01-25 | Alleged date of Wells Fargo's knowledge of the patent portfolio |
| 2014-05-19 | Alleged date of Mitek's knowledge of the patents from prior litigation |
| 2015-03-30 | Court dismisses prior willfulness allegations against Mitek |
| 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 (’163 Patent)
The Invention Explained
- Problem Addressed: The patent’s background section describes the difficulty of organizing and associating useful information with digital images, which are often stored with generic numerical filenames, making them hard to catalog and retrieve later ( ’163 Patent, col. 1:29-44).
- The Patented Solution: The invention is a digital imaging device that, after capturing an image, prompts a user to input information, such as where to store the image on an external computer (’163 Patent, col. 2:35-41; Fig. 4). This information is then associated with the digital image file before being transmitted. The device also includes a "scanning module" designed to read "symbology" (e.g., a barcode or text) on a printed version of a digital image to retrieve the image and its associated information from storage (’163 Patent, Abstract; col. 2:21-26).
- Technical Importance: The technology sought to solve the growing problem of digital photo management by integrating the cataloging process directly into the image capture workflow on a single device.
Key Claims at a Glance
The complaint does not identify specific asserted claims, alleging infringement of "one or more claims" (Compl. ¶27). Independent claim 1 is representative of the device claims.
- Independent Claim 1: A digital imaging camera device comprising:
- a capture module for capturing an image and creating a digital image file;
- an input module on the camera for inputting storage location information for an external computing device;
- a processing module for associating the inputted information with the digital image file;
- a transmission module for transmitting the file and associated information to the external device;
- a scanning module for reading a symbology on a printed version of the image file to facilitate retrieval; 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 (’872 Patent)
The Invention Explained
- Problem Addressed: The patent identifies a need not only to associate information with an image but also to securely verify the time, location, and user identity associated with the image capture, particularly for authenticating user activities ( ’872 Patent, col. 2:1-6).
- The Patented Solution: The invention is a "locational image verification device" that builds upon the ’163 Patent by adding modules for security and authentication (’872 Patent, Abstract). It explicitly includes a "locational information module" (e.g., GPS) to determine geographic coordinates, a "user verification module" (e.g., biometric scanner or password) to confirm the user's identity at the time of capture, and an "encryption module" to secure the image and all associated data (’872 Patent, col. 5:26-40; col. 6:1-12). The device is described in the context of verifying that a user has completed a specific "assignment" at a particular place and time (’872 Patent, col. 13:42-49).
- Technical Importance: This technology aimed to create a verifiable, tamper-resistant record of an event by cryptographically binding an image to its context (who, what, where, when).
Key Claims at a Glance
The complaint does not identify specific asserted claims, alleging infringement of "one or more claims" (Compl. ¶42). Independent claim 1 is representative of the device claims.
- Independent Claim 1: A locational image verification device for verifying a user's assignment, comprising:
- a user verification module for verifying a user's identity;
- a capture module for capturing an image related to the assignment;
- a locational information module for determining the device's location;
- a date and time module;
- a processing module for associating the assignment, identity, location, and time/date with the image file; and
- an encryption module for encrypting the image and associated information.
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 (’792 Patent)
Technology Synopsis
This patent discloses a system for generating a unique identifier for a digital image, comprising a site location number (SLN), a customer identification number (CIN), the date the image was taken (DIT), and a picture sequence number (PSN) ( ’792 Patent, Abstract). This composite identifier is encoded and printed with the image, creating a "symbology" that links the physical print back to the digital file stored on a network, thereby facilitating organization and retrieval from a central database (’792 Patent, col. 2:9-20).
Asserted Claims
The complaint alleges infringement of "one or more claims" (Compl. ¶58).
Accused Features
The "Mobile Imaging Instrumentalities," which allegedly allow users to capture images and associate them with user and account data for processing on Defendants' servers (Compl. ¶58, ¶65).
U.S. Patent No. 7,995,118 - Device and Method for Embedding and Retrieving Information in Digital Images, issued August 9, 2011 (’118 Patent)
Technology Synopsis
As a continuation of the application leading to the ’163 Patent, this patent describes a similar digital imaging device. The claims focus on a device with a first capture module for imaging, an input module for the user to provide subject and storage information, and a second capture module configured to scan coded information ( ’118 Patent, Claim 1). The device associates this collected data with the image file for transmission to an external computer for storage or lookup (’118 Patent, Abstract).
Asserted Claims
The complaint alleges infringement of "one or more claims" (Compl. ¶74).
Accused Features
The "Mobile Imaging Instrumentalities," which allegedly allow users to capture images and associate them with user and account data for processing on Defendants' servers (Compl. ¶74, ¶81).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are collectively termed "Mobile Imaging Instrumentalities" (Compl. ¶14). Specific examples cited include "Mobile Deposit," "Mobile Photo Bill Pay," "Mobile Photo Account Opening," the "Mobile Imaging Platform," and the "Wells Fargo Mobile" applications (Compl. ¶14).
Functionality and Market Context
The complaint alleges that these products and services, provided through websites and downloadable applications, allow mobile device users and banking customers to capture digital images of documents, such as checks (Compl. ¶34, ¶49). This functionality enables users to upload these images, along with associated user information, to Defendants' servers for processing, such as depositing a check into a bank account (Compl. ¶34). The complaint alleges these services direct customers to bank with Wells Fargo and generate increased revenues (Compl. ¶34). 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 | The use of a mobile device camera within Defendants' applications to capture an image of a document, such as a check. | ¶34 | col. 4:11-14 |
| an input module...for inputting storage location information regarding each captured image, the storage location information being indicative of a storage location on a separate external computing device | A user's selection of a bank account for deposit within the mobile application, which directs the subsequent image file to a specific storage location on Defendants' servers. | ¶34 | col. 4:51-54 |
| a processing module for associating the inputted information to the digital image file | Software within the mobile applications and/or on Defendants' servers that links the captured check image with the user's account and transaction data. | ¶34 | col. 4:49-54 |
| a transmission module for transmitting the digital image file and the associated information to the external computing device for storage | The mobile device's networking capabilities (e.g., Wi-Fi, cellular data) used by the application to upload the image and associated data to Defendants' servers. | ¶34 | col. 5:40-44 |
| a scanning module for reading a symbology associated with a printed version of the digital image file | The complaint does not specifically allege this functionality. The infringement theory appears to equate capturing an image of an original document (a check) with scanning a symbology. | ¶34 | col. 6:18-24 |
| a display module...for displaying the retrieved digital image file and associated information | The display of the captured check image on the mobile device's screen for user review and confirmation before submission. | ¶34 | col. 4:37-39 |
- Identified Points of Contention:
- Scope Questions: A primary question may be whether capturing an image of an original document, such as a check, satisfies the claim limitation of "reading a symbology associated with a printed version of the digital image file." The patent specification appears to describe a process where an image is first captured and printed, and that print is later scanned to retrieve the original file, which differs from the accused functionality of capturing an original document.
'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 login and authentication process (e.g., username and password) required to access and use the accused mobile banking applications. | ¶34 | col. 5:26-31 |
| a capture module for capturing an image relating to the assignment | The use of the mobile device camera to capture a check image to perform the "assignment" of making a mobile deposit. | ¶49 | col. 4:11-14 |
| a locational information module for determining a location of the device when capturing the image | The complaint does not allege that the accused products determine a user's geographic location. The infringement theory may depend on a broad interpretation of "location." | ¶49 | col. 5:48-59 |
| a date and time module for determining a date and time of the image capture | The mobile device's internal clock, which automatically provides time and date information for the transaction. | ¶49 | col. 6:4-8 |
| a processing module for associating the assignment, the user identity, location information and the time and date to the digital image file | Software that associates the check image with the user's identity, account data (as "location"), and transaction timestamp. | ¶49 | col. 6:19-29 |
| an encryption module for encrypting the digital image file and associated information upon image capture | The complaint does not explicitly allege encryption, but secure transmission of financial data, as alleged, typically involves encryption. | ¶49 | col. 6:30-41 |
- Identified Points of Contention:
- Scope Questions: The infringement analysis may turn on the construction of "locational information module." The specification strongly suggests a geographic location technology like GPS, whereas the complaint does not allege the accused products use such technology. The question for the court will be whether a non-geographic identifier, such as a bank account number, can be considered a "location" under the patent's claims.
- Technical Questions: What evidence does the complaint provide that the accused products perform verification of an "assignment" in the manner claimed? The patent appears to contemplate verification of field-service-type tasks, which raises the question of whether a user-initiated bank deposit constitutes a pre-defined "assignment."
V. Key Claim Terms for Construction
The Term: "scanning module for reading a symbology associated with a printed version of the digital image file" (’163 Patent, Claim 1)
- Context and Importance: This term is critical because the accused products capture original documents, while the claim language suggests a two-step process where a digital image is first printed and then that print is scanned. The viability of the infringement allegation against the ’163 Patent may depend on whether "reading a symbology" can be construed to cover the initial capture of a document containing text or numbers.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that "symbology may be in any form currently practiced in the art including barcodes... photosymbols, standard or specialized text, etc." (’163 Patent, col. 6:13-16). This could support an argument that the numbers and text on a check constitute a "symbology."
- Evidence for a Narrower Interpretation: The overall context describes printing an image with symbology that "encodes that file name of the image and file location" in order to link the print back to the stored digital file (’163 Patent, col. 6:5-9). This suggests the symbology is metadata added to a print of the image, not inherent features of the original object being photographed.
The Term: "locational information module" (’872 Patent, Claim 1)
- Context and Importance: Infringement of the ’872 Patent requires this module. The dispute will likely focus on whether this term is limited to geographic location. Practitioners may focus on this term because the complaint provides no facts alleging the accused products determine a user's geographic position.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "locational" is not facially limited to geography. An argument could be made that in the context of banking, an account number is a form of "location" for funds.
- Evidence for a Narrower Interpretation: The specification provides an explicit and detailed definition, stating the module "may include a receiver and antenna employing conventional locational information processing technology such as Global Positioning Satellite (GPS) Technology, Loran Technology, or any other available locational technology, to indicate the exact location, e.g., latitude, longitude and altitude, of the device" (’872 Patent, col. 5:48-59). This provides strong intrinsic evidence that the term requires a geographic-sensing capability.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement of infringement for all asserted patents. The factual basis is Defendants' alleged acts of providing websites and downloadable applications "especially designed for mobile devices," which allegedly instruct and enable banking customers to perform the claimed methods of capturing and uploading images with associated user data (Compl. ¶32-34; ¶47-49; ¶63-65; ¶79-81).
- Willful Infringement: The complaint alleges willful infringement for all asserted patents. The allegations are based on Defendants' alleged knowledge of the patents.
- For Wells Fargo, knowledge is alleged as of January 25, 2013, from an email and patent summary sent by Plaintiff (Compl. ¶29, ¶44, ¶60, ¶76).
- For Mitek, knowledge is alleged as of May 19, 2014, from service of a complaint in prior litigation (Compl. ¶28, ¶43, ¶59, ¶75).
- For Fiserv, knowledge is alleged from the date of service of the instant complaint, or potentially earlier from communications with its co-defendants (Compl. ¶30, ¶45, ¶61, ¶77).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "scanning module for reading a symbology associated with a printed version of the digital image file" from the ’163 Patent be construed to cover the accused products' function of capturing an image of an original document containing text and numbers, such as a bank check?
- A key evidentiary question will be one of technical mismatch: do the accused mobile banking applications incorporate a "locational information module" as required by the ’872 Patent? The case may turn on whether this term is limited to its specified embodiment of geographic positioning technology (e.g., GPS) or if it can be interpreted more broadly to encompass logical identifiers like a bank account.
- Given the specific dates of alleged notice provided in the complaint, a central issue for damages will be willful infringement: did Wells Fargo's and Mitek's conduct after their alleged dates of awareness constitute an objectively reckless disregard of a known risk of infringement?