DCT
1:19-cv-01603
Rothschild Digital Confirmation, LLC v TeamConnect, LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Digital Confirmation, LLC (Texas)
- Defendant: TeamConnect, LLC (Delaware)
- Plaintiff’s Counsel: Stamoulis & Weinblatt, LLP
- Case Identification: 1:19-cv-01603, D. Del., 08/28/2019
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation, transacts business in the state, offers its products for sale to Delaware customers via its website, and maintains a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s software for mobile devices, which facilitates photo documentation, infringes a patent related to creating a verifiable digital image by capturing and securely embedding user identity, location, and time data into the image file.
- Technical Context: The technology provides a method and device for creating authenticated digital images, where metadata (such as location, time, and user ID) is securely bound to the image at the moment of capture, primarily for verification and record-keeping purposes.
- Key Procedural History: While not mentioned in the complaint, an Inter Partes Review (IPR) proceeding (IPR2015-00624) concluded on February 8, 2018, resulting in the cancellation of claims 27, 28, 38, and 39 of the asserted patent. The cancellation of independent method claim 27 narrows the present dispute to the patent's remaining apparatus claims.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-29 | U.S. Patent No. 7,456,872 Earliest Priority Date |
| 2008-11-25 | U.S. Patent No. 7,456,872 Issued |
| 2018-02-08 | IPR Certificate Issued, Cancelling Claims 27, 28, 38, 39 |
| 2019-08-28 | Complaint Filed |
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"
- Patent Identification: 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's background section identifies the difficulty of organizing digital photographs and, more critically, the need for a system to securely verify information associated with a captured image, such as the time, date, specific location, and the identity of the user who took the picture ('872 Patent, col. 1:48-68).
- The Patented Solution: The invention is a "Locational Image Verification Device" (LIVD) that integrates several functions to solve this problem. As described, the device includes modules to capture an image, verify the user's identity (e.g., via password or biometrics), determine the precise location and time of capture, and then process and associate this data with the digital image file, which is then encrypted to ensure its integrity ('872 Patent, Abstract; col. 2:30-40). The system architecture is depicted in Figure 2, showing the interrelation of these various modules ('872 Patent, Fig. 2).
- Technical Importance: This approach provides a mechanism for creating a tamper-resistant, verifiable record of an event, which has applications in fields requiring authentication, such as documenting insurance damage, verifying social service visits, or confirming military operations ('872 Patent, col. 15:37-col. 16:24).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶44).
- The essential elements of independent claim 1 include:
- A user verification module for verifying an identity of a user of the device, which enables device operation and verifies the user's identity at the time of image capture.
- A capture module for capturing an image and creating a digital image file.
- 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 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 its associated information.
- The complaint's prayer for relief suggests the right to assert other claims is reserved (Compl. p. 12, ¶1).
III. The Accused Instrumentality
Product Identification
- The "Accused Products" are identified as TeamConnect's locational image software which customers install on mobile devices (Compl. ¶25).
Functionality and Market Context
- The complaint alleges that the Accused Product is software used for "photo-documentation" (Compl. ¶26). When installed on a mobile device, it allegedly allows a user to log in, which verifies their identity (Compl. ¶27). The software then uses the mobile device's camera to capture an image and its GPS to determine location (Compl. ¶28-29). This information, along with date and time, is then allegedly linked to the image file and encrypted in a database (Compl. ¶30-32). The complaint states the service is marketed as "reliable, instant, and secure" (Compl. ¶32).
IV. Analysis of Infringement Allegations
’872 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A locational image verification device for verifying an assignment of a user comprising: | The Accused Product, when installed on a mobile device, comprises a device for verifying an assignment of a user, such as a field technician. | ¶26, ¶33 | col. 17:1-2 |
| 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 software includes a user verification function where a user enters login credentials; a successful login verifies the individual and enables the application. | ¶27, ¶34 | col. 5:27-32 |
| 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 software uses the mobile device's camera to capture a photo. The complaint alleges that upon a successful login, the user can capture an image, which it equates to verifying identity at the time of capture. | ¶28, ¶35 | col. 4:13-17 |
| a locational information module for determining a location of the device when capturing the image; | The software uses the mobile device's GPS signal to determine the real-time location of the device when an image is captured. | ¶29, ¶36 | col. 5:53-58 |
| a date and time module for determining a date and time of the image capture; | The mobile device, enabled by the Accused Product, determines the date and time of the image capture and associates it with collected field data. | ¶30, ¶37 | col. 6:3-9 |
| a processing module for associating the assignment, the user identity, location information and the time and date to the digital image file; | The software, using the mobile device's processor, links the user identity, captured photos, real-time location data, and time spent on the field to complete assignments. | ¶31, ¶38 | col. 14:45-49 |
| and an encryption module for encrypting the digital image file and associated information...upon image capture. | The software includes an encryption function for storing and protecting collected field information in a database, which the complaint alleges occurs upon image capture. Defendant's marketing materials state the service is "secure." | ¶32, ¶39 | col. 6:31-38 |
- Identified Points of Contention:
- No probative visual evidence provided in complaint.
- Scope Questions: Claim 1 recites a "locational image verification device." A primary question will be whether Defendant's software, when installed on a general-purpose mobile device, constitutes the claimed "device," or if the claim requires a more integrated, purpose-built apparatus.
- Technical Questions: The claim requires the "user verification module" to verify the user's identity "at a time of the image capture." The complaint alleges this is satisfied by a successful login that enables subsequent photo capture (Compl. ¶28, ¶35). This raises the question of whether a one-time login at the start of a session is temporally equivalent to verification "at a time of" each specific image capture, as the patent may be read to require.
V. Key Claim Terms for Construction
The Term: "locational image verification device"
- Context and Importance: This term, appearing in the preamble of claim 1, is likely to be treated as a claim limitation. The definition will be critical to determining if the accused instrumentality—software installed on a third-party mobile phone—can be considered the claimed "device."
- Evidence for a Broader Interpretation: The specification explicitly describes an embodiment where the device is a mobile phone ("device 200") containing the claimed modules, suggesting the term is not limited to a standalone camera ('872 Patent, col. 7:60-64; Fig. 3A).
- Evidence for a Narrower Interpretation: The patent consistently refers to an integrated "device" containing various "modules," and Figure 2 depicts a single, self-contained system architecture ('872 Patent, Fig. 2). A party could argue this language points to a singular, cohesive apparatus rather than disparate software running on general-purpose hardware.
The Term: "user verification module ... verifies the identity of the user ... at a time of the image capture"
- Context and Importance: The temporal requirement "at a time of the image capture" is central to the patent's goal of creating a verifiable, authenticated record. Practitioners may focus on this term because the infringement allegation hinges on equating a pre-capture login with a per-capture verification.
- Evidence for a Broader Interpretation: The specification does not mandate a specific time interval, which could support an argument that verification performed in close temporal proximity to the capture (e.g., within the same user session) is sufficient.
- Evidence for a Narrower Interpretation: The specification describes an optional embodiment where a user is asked to "re-verify the user's identity at the time of image capture" ('872 Patent, col. 14:30-32). This could be used to argue that the patent contemplates a specific verification action contemporaneous with the capture itself, rather than relying on a prior state of being "logged in."
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant instructs its customers to install and use the Accused Product on mobile devices in a manner that directly infringes the '872 patent (Compl. ¶25, ¶51).
- Willful Infringement: The complaint alleges that infringement will be willful and knowing from the date of service of the complaint forward (Compl. ¶43). It does not plead facts supporting pre-suit knowledge of the patent.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope: can the claimed "locational image verification device," an apparatus, be read to cover Defendant's software product when installed and operating on a general-purpose, third-party mobile device? The resolution will likely depend on whether the combination of the software and the hardware is considered a single infringing "device."
- A key evidentiary question will be one of temporal functionality: does the accused product's feature of requiring a user to log in before using the camera satisfy the claim limitation of verifying the user's identity "at a time of the image capture," or does the patent require a more direct and contemporaneous verification for each image?
- An unstated but significant strategic question relates to the impact of the prior IPR: with the patent's independent method claim (Claim 27) having been cancelled, the case now rests solely on the apparatus claims. This raises the question of how Plaintiff will prove direct infringement, particularly against the software provider (TeamConnect) as opposed to only its end-users who operate the complete "device."