DCT
1:19-cv-01601
Rothschild Digital Confirmation LLC v. Replicon Software Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Digital Confirmation, LLC (Texas)
- Defendant: Replicon Software, Inc. (Delaware)
- Plaintiff’s Counsel: STAMOULIS & WEINBLATT, LLP
- Case Identification: 1:19-cv-01601, D. Del., 08/28/2019
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is a Delaware corporation that transacts business in the state, has a regular and established place of business in the district, and has committed the alleged acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s mobile time-tracking software infringes a patent related to creating a verifiable record by capturing a digital image and securely embedding it with location, time, and user identity information.
- Technical Context: The technology addresses the need for authenticating and documenting activities in the field by binding verifiable metadata (e.g., GPS location, timestamp, user ID) to a digital photograph at the moment of capture.
- Key Procedural History: The patent-in-suit, U.S. Patent No. 7,456,872, was the subject of an Inter Partes Review (IPR), IPR2015-00624. The proceeding resulted in the cancellation of method claims 27 and 28, and dependent claims 38 and 39. The asserted independent device claim 1 survived the IPR challenge, but the arguments made during that proceeding may inform the court’s interpretation of the surviving claim's scope.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-29 | '872 Patent Priority Date |
| 2008-11-25 | '872 Patent Issue Date |
| 2015-01-26 | IPR Filed for '872 Patent (IPR2015-00624) |
| 2018-02-08 | IPR Certificate Issued, Cancelling Claims 27, 28, 38, 39 |
| 2019-08-28 | 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," issued November 25, 2008
The Invention Explained
- Problem Addressed: The patent identifies a "critical need" for a system to verify and authenticate information captured in digital images, such as the time, location, and user identity associated with an image, which was difficult with conventional digital photography (’872 Patent, col. 1:48-65).
- The Patented Solution: The patent describes a "Locational Image Verification Device" (LIVD) that combines several functions into a single device. It uses a capture module to take a picture, a user verification module to confirm the operator's identity, a locational module (e.g., GPS) to get coordinates, and a time/date module. A processing module then associates all of this information with the image file, and an encryption module secures the file and its associated data to prevent tampering (’872 Patent, Abstract; col. 2:30-40, Fig. 2).
- Technical Importance: This approach aimed to create a tamper-proof digital record that could serve to verify the activities of a user or authenticate data points for business or evidentiary purposes (’872 Patent, col. 1:63-65).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶44).
- The essential elements of independent claim 1 are:
- 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 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's identity is verified at the time of capture;
- A locational information module for determining the device's location during image capture;
- A date and time module for determining the date and time of image capture;
- A processing module for associating the assignment, user identity, location, and time/date with the digital image file; and
- An encryption module for encrypting the digital image file and associated information upon capture.
III. The Accused Instrumentality
Product Identification
- The accused products are Replicon's "Mobile Time Sheet product" and associated "locational image software" (Compl. ¶22, ¶25).
Functionality and Market Context
- The complaint describes the accused product as a mobile application that allows employees to track time and verify their work activities (Compl. ¶25, ¶27). It allegedly operates by requiring a user to log in (user verification), and then allowing the user to capture photos related to their work using the device's camera (Compl. ¶27-28). The application is alleged to use the device's GPS to record location, associate a timestamp with the data, and link this information to the user's identity and the captured image (Compl. ¶29-31). The complaint further alleges the product includes security features to protect the collected data (Compl. ¶32).
No probative visual evidence provided in complaint.
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 checks the user's entered login credentials to verify their identity, which enables use of the application. | ¶27 | col. 5:27-43 |
| 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 mobile device's camera is used to capture an image related to the user's assignment, which can be done after a successful login has verified the user's identity. | ¶28 | col. 4:13-29 |
| a locational information module for determining a location of the device when capturing the image; | The application uses the mobile device's GPS signal to capture the real-time location of the device when an image is taken. | ¶29 | col. 5:52-64 |
| a date and time module for determining a date and time of the image capture; | The application associates the job time spent with the field data collected by the user, which is enabled by the device's date and time module. | ¶30 | 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; | The mobile device's processor collects and links field information, captured photos, location data, and time spent to complete assignments. | ¶31 | col. 4:50-54 |
| an encryption module for encrypting the digital image file and associated information upon image capture. | An encryption module stores and protects the collected field information data in a database via data encryption. | ¶32 | col. 6:31-41 |
- Identified Points of Contention:
- Scope Questions: Claim 1 requires the "user verification module... provides an assignment to the user." The complaint alleges the user logs in and is then able to perform tasks. This raises the question of whether merely enabling access to a list of tasks after login satisfies the claim that the verification module itself "provides" the assignment.
- Technical Questions: The claim requires an "encryption module for encrypting the digital image file and associated information." The complaint alleges an "encryption module for storing and protecting the collected field information data in the database" (Compl. ¶32). The court may need to determine if encrypting data stored in a database is technically and legally equivalent to encrypting the "digital image file" itself as required by the claim.
V. Key Claim Terms for Construction
The Term: "assignment"
Context and Importance: This term appears in multiple limitations of claim 1. Its definition is critical to determining whether a general-purpose time-tracking application falls within the scope of a device for verifying specific, pre-defined tasks. Practitioners may focus on this term because its construction will dictate how narrowly the patent is tied to structured, pre-assigned work orders versus more general user activities.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification refers generally to "verifying activities or assignments of a user," which could support a broad definition including any user-defined task (’872 Patent, col. 3:8-9).
- Evidence for a Narrower Interpretation: The detailed description describes a scenario where a supervisor downloads "specific geographic assignments" to the device for the user to complete, suggesting a more structured, pre-defined meaning (’872 Patent, col. 14:57-64).
The Term: "user verification module... provides an assignment to the user"
Context and Importance: This phrase structurally links the act of verification with the delivery of the task. Infringement may turn on whether the accused login function, which gates access to a task list, can be considered to "provide" the assignment, or if the claim requires a more integrated function where the verification process itself triggers the presentation of a specific assignment.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff may argue that by authenticating the user, the module is the cause for the assignment becoming available, thus "providing" it in a functional sense. The specification does not tightly constrain this interaction.
- Evidence for a Narrower Interpretation: A defendant may argue that the plain language requires an active "providing" step by the module, distinct from merely "enabl[ing] operation." The patent's description of receiving assignments from a supervisor could be interpreted as a separate process from the user's later identity verification (’872 Patent, col. 14:50-64).
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement under 35 U.S.C. § 271(b), asserting that Defendant encourages infringement by advertising and selling the Accused Product and providing instructions to customers on how to use it in an infringing manner (Compl. ¶25, ¶51).
- Willful Infringement: The complaint alleges that Defendant's infringement will be "knowing and intentional at least upon the service of this Complaint," forming a basis for post-suit willfulness (Compl. ¶43). No 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: can the term "assignment", as used in the patent, be construed to cover the general time-and-activity logging functions of the accused product, or is it limited to the more structured, pre-loaded tasks described in the patent's specific embodiments?
- A key evidentiary question will be one of technical implementation: does the accused product's security system, which allegedly encrypts "field information data in the database," meet the specific claim requirement of an "encryption module for encrypting the digital image file," and does this occur "upon image capture"?
- A central legal question will be the impact of the prior IPR proceeding: how will the arguments and claim cancellations from the IPR of the ’872 patent affect the court's construction of the surviving asserted claim, and what estoppel effects may limit the scope of infringement arguments that the patent owner can now advance?