DCT
1:19-cv-01472
Rothschild Digital Confirmation LLC v. Mize Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Digital Confirmation, LLC (Texas)
- Defendant: Mize, Inc. (Delaware)
- Plaintiff’s Counsel: Stamoulis & Weinblatt, LLP
- Case Identification: 1:19-cv-01472, D. Del., 08/06/2019
- Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant is a Delaware corporation, transacts business in the state, and has a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s field service management software infringes a patent related to a device that verifies a user's assignment by capturing a digital image and securely embedding location, time, and user identity information.
- Technical Context: The technology provides a method for creating a verifiable, tamper-resistant record of real-world events, which is applicable to industries requiring proof of service, compliance, or inspection.
- Key Procedural History: An Inter Partes Review (IPR) of the asserted patent was previously instituted (IPR2015-00624). The resulting review certificate, issued February 8, 2018, confirmed the patentability of the asserted independent claim 1 while cancelling method claims 27, 28, 38, and 39. This history establishes that the asserted claim has survived a validity challenge at the Patent Trial and Appeal Board.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-29 | '872 Patent Priority Date |
| 2008-11-25 | '872 Patent Issue Date |
| 2015-01-26 | Inter Partes Review (IPR2015-00624) Filed |
| 2018-02-08 | '872 Patent Inter Partes Review Certificate Issued |
| 2019-08-06 | Complaint Filing Date |
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 describes a need to move beyond simple digital photography to create secure, verifiable records. It identifies the difficulty in associating metadata (like location and time) with images and highlights a "critical need" to authenticate user activities by securely capturing an image along with its context, such as the user's identity, location, and time. (’872 Patent, col. 1:48-67).
- The Patented Solution: The invention is a "Locational Image Verification Device" (LIVD) that captures a digital image and associates it with data such as user identity, location, date, and time. (’872 Patent, Abstract). The device is designed to verify a user's completion of an "assignment" by creating an auditable record; this record, including the image and associated data, is then encrypted to ensure its integrity and prevent tampering. (’872 Patent, col. 13:46-54; col. 14:55-59).
- Technical Importance: The technology aimed to provide a reliable system for creating tamper-resistant evidence of real-world activities, addressing verification needs in fields like insurance adjustment, field service, and law enforcement. (’872 Patent, col. 1:61-67).
Key Claims at a Glance
- The complaint asserts infringement of independent claim 1. (Compl. ¶40).
- The essential elements of Claim 1, a device claim, are:
- A user verification module for verifying a user's identity, which upon verification enables device operation and "provides an assignment to the user."
- A capture module for capturing an image related to the assignment and creating a digital image file, where the user verification module confirms the user's identity "at a time of the image capture."
- A locational information module for determining the device's location when the image is captured.
- A date and time module for determining the date and time of the image 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 dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant Mize's "My Customer Portal" product and associated software ("the Accused Product"). (Compl. ¶25).
Functionality and Market Context
- The Accused Product is described as a software solution for field service management, used on mobile devices. (Compl. ¶¶ 25, 26). The complaint alleges that technicians use the product to manage jobs, record time and expenses, and capture images or video as part of their work. (Compl. ¶28, p. 7). The system allegedly verifies a user's identity through a login process before allowing access to assigned jobs. (Compl. ¶27). A screenshot from the complaint shows a user login screen for the accused "Channel Connect" application. (Compl. p. 6). The complaint further alleges the product uses a mobile device’s GPS to determine location and logs the time associated with job activities. (Compl. ¶¶ 29, 30).
IV. Analysis of Infringement Allegations
'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, wherein upon verification, the user verification module enables operation of the device and provides an assignment to the user; | The mobile application requires users to enter login credentials, which verifies the user's identity and allows access to assignments. | ¶27 | col. 5:26-30; col. 14:5-14 |
| a capture module for capturing an image relating to the assignment and creating a digital image file, wherein the user verification module verifies the identity of the user of the device at a time of the image capture; | The camera on the mobile device is used to capture an image related to a work assignment after the user has been verified through a login. The complaint includes a screenshot showing options to "Take Photo" or "Capture Video". | ¶28; p. 8 | col. 4:13-20; col. 14:31-34 |
| a locational information module for determining a location of the device when capturing the image; | The product allegedly uses the mobile device's GPS signal to determine the real-time location. A screenshot shows job listings with specific street addresses. | ¶29; p. 9 | col. 5:53-61 |
| a date and time module for determining a date and time of the image capture; | The product allegedly determines the date and time, associating "the job time spent with the field data collected by the user." A screenshot displays a timestamped activity log. | ¶30; p. 10 | 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; | A processor on the mobile device is alleged to collect and link the assignment, user ID, location, and time data with the captured photos. | ¶31 | col. 17:3-8 |
| an encryption module for encrypting the digital image file and associated information upon image capture. | The product allegedly includes an "encryption module for storing and protecting the collected field information data," citing marketing materials that mention "128-bit encryption standards." | ¶32; p. 14 | col. 6:31-41; col. 17:9-11 |
Identified Points of Contention
- Scope Questions: Claim 1 requires that the "user verification module... provides an assignment to the user." The complaint alleges a login screen authenticates the user, who then accesses a list of assignments. A central question may be whether authenticating a user to view a pre-existing list of jobs satisfies the claim language of "provides an assignment," or if the claim requires the module to actively deliver or generate the assignment upon verification.
- Technical Questions: The claim requires an encryption module that encrypts the image file and associated information "upon image capture." The complaint supports this element with a marketing screenshot referencing general data privacy and "128-bit encryption standards" for the application. (Compl. ¶32, p. 14). This raises the evidentiary question of whether the accused product performs the specific function of encrypting the image file and its metadata at or near the time of capture, as required by the claim, or if it merely provides general data-at-rest encryption for the application's database, which may not meet the temporal limitation "upon image capture."
V. Key Claim Terms for Construction
The Term: "provides an assignment to the user"
- Context and Importance: The construction of this phrase is central to whether the user verification module of the accused product meets the corresponding claim limitation. Practitioners may focus on this term because the accused product appears to separate the function of user authentication (login) from the function of displaying assignments that are already loaded in the application.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define "provides." Plaintiff may argue that enabling a logged-in user to access and view their assignments is a form of "providing."
- Evidence for a Narrower Interpretation: Defendant may argue that the term implies an active delivery of information. The specification describes a scenario where assignment information is received "from the user's office or supervisor" (col. 14:57-61), which could suggest that "providing" is an active transmission event triggered by verification, not merely unlocking access to a static list.
The Term: "upon image capture"
- Context and Importance: This term sets a temporal requirement for the encryption step. Its construction will be critical in determining whether the accused product's general security features meet the specific timing of the claimed encryption module.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that "upon" means "in connection with" or "as part of the process of," without requiring strict immediacy. The patent uses the phrase "immediately upon capture" in a different context (col. 14:55-56), suggesting that the omission of "immediately" here implies a broader timeframe.
- Evidence for a Narrower Interpretation: Defendant may argue that "upon image capture" requires the encryption to occur as a direct and temporally proximate consequence of the capture event. The patent emphasizes creating a "virtually tamper proof" record, stating information is "immediately encoded with encryption algorithms upon storage" (col. 16:15-17), which supports an interpretation that the encryption is integral to the capture and save process itself, not a later, separate security measure.
VI. Other Allegations
- Indirect Infringement: The complaint alleges Mize induces infringement by instructing customers to install and use the Accused Product in an infringing manner, and that Mize advertises and sells the product with the intent that customers use it on mobile devices as claimed. (Compl. ¶¶ 25, 51).
- Willful Infringement: Willfulness is alleged based on knowledge of infringement that "will have" occurred after the service of the complaint. The prayer for relief seeks enhanced damages for post-filing infringement. (Compl. ¶43; p. 19, ¶5). No specific facts supporting pre-suit knowledge are alleged.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Does the accused product's user authentication system, which grants a logged-in user access to a list of pre-loaded jobs, satisfy the claim requirement that the "user verification module... provides an assignment to the user"? The outcome may depend on whether "provides" is interpreted to mean active delivery or merely enabling access.
- A key evidentiary question will be one of technical and temporal specificity: Can Plaintiff prove that the accused product's general encryption capabilities perform the specific function of encrypting "the digital image file and associated information upon image capture," as required by the claim? The complaint’s reliance on high-level marketing claims for this limitation suggests that demonstrating a direct, causal, and temporal link between image capture and encryption will be a central point of contention.