DCT
1:19-cv-02365
Coding Tech LLC v. Kofax Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Coding Technologies, LLC (Texas)
- Defendant: Kofax, Inc. (Delaware)
- Plaintiff’s Counsel: Stamoulis & Weinblatt LLC
- Case Identification: 1:19-cv-02365, D. Del., 12/27/2019
- Venue Allegations: Venue is alleged to be proper in the District of Delaware on the basis that Defendant is a Delaware corporation and is therefore deemed a resident of the district.
- Core Dispute: Plaintiff alleges that Defendant’s Kofax Mobile Bill Pay application infringes a patent related to using a mobile device to capture and process information from a code pattern to facilitate a mobile service, such as bill payment.
- Technical Context: The technology at issue involves using a mobile device’s camera to capture data from a physical document, such as a bill, to automate the process of initiating an online transaction.
- Key Procedural History: The asserted patent is a continuation of a series of prior applications, with the earliest priority date tracing back to applications filed in South Korea in 2003.
Case Timeline
| Date | Event |
|---|---|
| 2003-03-07 | Earliest Priority Date of U.S. Patent 9,240,008 |
| 2016-01-19 | U.S. Patent 9,240,008 Issued |
| 2019-12-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,240,008 - "Method for Providing Mobile Service Using Code-pattern," Issued January 19, 2016
The Invention Explained
- Problem Addressed: The patent background describes the inconvenience of manually entering information, such as website URLs from advertisements, into a mobile device (Compl., Ex. A, ’008 Patent, col. 1:53-59). It also identifies a need for more convenient methods for travelers to obtain local information or for users to pay bills without needing to handle traditional paper payment slips (giro) ('008 Patent, col. 2:2-13, col. 2:45-49).
- The Patented Solution: The invention provides a method and system where a mobile terminal's camera is used to photograph a "code pattern" (such as a barcode) printed on an object like a bill or advertisement ('008 Patent, Abstract). The terminal, or a connected server, decodes the pattern to extract information (e.g., billing data, a URL) and uses that information to initiate a service, such as processing a payment or retrieving online content ('008 Patent, col. 2:27-34; Fig. 35). This automates the transfer of information from a physical medium to a digital service.
- Technical Importance: This approach sought to bridge the gap between physical media and online services by reducing the need for manual data entry, thereby increasing convenience and reducing errors for mobile users ('008 Patent, col. 6:45-50).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 9 (Compl. ¶13).
- Independent Claim 9 is a terminal (device) claim comprising the following essential elements:
- A camera configured to capture a code pattern image having billing information;
- A processor configured to analyze the code pattern image to obtain code information, which in turn is used to obtain user and billing information by referencing a billing database;
- Wherein payment of a bill is processed based on the obtained billing and user information.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the "Kofax Mobile Bill Pay app, and any other similar products and services controlled by Defendant" (Compl. ¶13).
Functionality and Market Context
- The complaint alleges the accused product is a software application that allows users to make bill payments using a smartphone (Compl. ¶14). A user points their smartphone camera at a bill, and the application "auto-captures the document and extracts the relevant data in real time" (Compl. ¶14). A screenshot provided in the complaint shows a smartphone capturing an image of a paper bill (Compl. p. 4). Another visual shows a list of fields extracted from the bill, including "Payee Name," "Account number," and "Amount due" (Compl. p. 5). The complaint alleges the product then uses this extracted information to facilitate payment of the bill (Compl. ¶17).
IV. Analysis of Infringement Allegations
U.S. Patent No. 9,240,008 Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a camera configured to capture a code pattern image having billing information | The Product utilizes a smartphone's camera to capture an image of a bill, which the complaint alleges is a "code pattern image" containing billing information (Compl. p. 4). | ¶¶14-15 | col. 39:15-16 |
| a processor configured to analyze the code pattern image to obtain code information...obtaining user information and billing information...in reference of billing database | The complaint alleges the smartphone's processor analyzes the captured bill image to obtain billing information and user information, referencing a "billing database for user's bill" (Compl. p. 5). | ¶16 | col. 39:17-21 |
| wherein payment of a bill is processed based on the billing information and user information | The complaint alleges that payment is processed using the billing and user information extracted from the bill image, and cites marketing materials stating customers can "snap a picture of a bill to create a payment transaction in real time" (Compl. p. 6). | ¶17 | col. 39:21-23 |
- Identified Points of Contention:
- Scope Question: A central issue may be whether an unstructured image of a paper bill, as captured by the accused product, constitutes a "code pattern image" as that term is used in the patent. While the claim language is broad, the patent specification's examples and figures predominantly focus on structured "barcodes," which could suggest a narrower scope than what the complaint alleges ('008 Patent, col. 11:7-13, Fig. 1).
- Technical Question: The claim requires the processor to obtain information "in reference of billing database." The complaint’s allegations regarding this step are not detailed (Compl. ¶16). A key question will be whether the accused product performs a simple Optical Character Recognition (OCR) to extract text, or if it performs a more complex analysis that involves an active comparison or lookup against a database during the information extraction phase, as depicted in certain patent embodiments ('008 Patent, Fig. 35, step S3550).
V. Key Claim Terms for Construction
The Term: "code pattern image"
- Context and Importance: The viability of the infringement claim hinges on whether an ordinary image of a bill falls within this term's definition. Practitioners may focus on this term because the accused product is alleged to operate on standard bills, whereas the patent specification heavily emphasizes formal barcodes.
- Intrinsic Evidence for a Broader Interpretation: The patent uses the general term "code pattern" in the summary when describing a method for paying bills, which might support an interpretation that is not strictly limited to barcodes ('008 Patent, col. 2:45-49). The claim itself uses the broader "code pattern image" rather than the more specific "barcode image."
- Intrinsic Evidence for a Narrower Interpretation: The detailed description and figures almost exclusively use "barcode" as the exemplary "code pattern" ('008 Patent, col. 11:7-13; Figs. 1, 3, 5-7, etc.). An argument could be made that the invention is directed at structured, machine-readable codes, not the unstructured text of a typical document.
The Term: "in reference of billing database"
- Context and Importance: This term defines how the processor must interact with a "billing database" to obtain information. The infringement analysis depends on whether the accused product's data extraction method meets this functional requirement.
- Intrinsic Evidence for a Broader Interpretation: A party could argue that this language only requires that the extracted information corresponds to, or is later used in connection with, a billing database, without requiring an active lookup during the analysis step. The complaint appears to adopt this view, referring to a "billing database for user's bill" without detailing an interaction (Compl. ¶16).
- Intrinsic Evidence for a Narrower Interpretation: Patent embodiments describe a more active process. For instance, a flowchart shows a distinct step of comparing received billing information with information "stored in billing database" to verify its accuracy before processing payment ('008 Patent, Fig. 35, step S3550). This suggests the "reference" is an integral part of the patented method's verification or analysis logic.
VI. Other Allegations
- Indirect Infringement: While not pleaded as a separate count, the complaint's allegations could potentially support a claim for induced infringement. The complaint cites Defendant's marketing materials and product descriptions which allegedly instruct and encourage end-users (e.g., banking customers) to use the accused app in a manner that performs the claimed steps (Compl. ¶¶14, 17).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "code pattern image," which is primarily exemplified in the patent by formal barcodes, be construed broadly enough to read on an unstructured image of a paper bill as allegedly captured by the accused product?
- A key evidentiary question will be one of functional operation: does the accused product’s processor perform the claimed step of obtaining information “in reference of billing database,” requiring an active lookup or comparison, or does it perform a simpler data extraction (e.g., OCR) that does not align with the specific process disclosed in the patent's embodiments?