DCT
1:20-cv-00167
Rothschild Digital Confirmation LLC v. Servicechannelcom
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Digital Confirmation, LLC (Texas)
- Defendant: ServiceChannel.com, Inc. (Delaware)
- Plaintiff’s Counsel: Stamoulis & Weinblatt LLC
- Case Identification: 1:20-cv-00167, D. Del., 02/02/2020
- Venue Allegations: Venue is based on Defendant’s incorporation in Delaware and its continuous and systematic business transactions within the state.
- Core Dispute: Plaintiff alleges that Defendant’s software for mobile devices, used for contractor work verification, infringes a patent related to a device and method for securely embedding locational, temporal, and user verification data into digital images.
- Technical Context: The technology addresses the need for creating verifiable, tamper-resistant digital records that link a photograph to a specific time, location, and user, a function valuable in fields requiring auditing, proof of presence, or work validation.
- Key Procedural History: The asserted patent, U.S. Patent No. 7,456,872, was the subject of an Inter Partes Review (IPR2015-00624). While the IPR resulted in the cancellation of several method claims (Claims 27, 28, 38, and 39), the device claim asserted in this complaint (Claim 1) survived the proceeding.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-29 | U.S. Patent No. 7,456,872 Priority Date |
| 2008-11-25 | U.S. Patent No. 7,456,872 Issued |
| 2015-01-26 | Inter Partes Review (IPR2015-00624) Filed against Patent |
| 2020-02-02 | 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 and inefficiency of manually organizing digital photographs and associating them with reliable information (’872 Patent, col. 2:28-42). It notes a "critical need" for a system to securely verify information captured in digital images, such as the time, location, and user identity, to authenticate the activities of a user (’872 Patent, col. 2:61-65).
- The Patented Solution: The invention is a “Locational Image Verification Device” (LIVD) that integrates multiple functions into a single device (’872 Patent, col. 2:30-33). As detailed in the specification and illustrated in Figure 2, the device uses a "capture module" to take a picture, a "user verification module" to confirm the user’s identity, a "locational information module" (e.g., GPS) to get coordinates, and a "date and time module" to log the timestamp (’872 Patent, Fig. 2). A "processing module" associates all this metadata with the image file, and an "encryption module" secures the data to prevent tampering (’872 Patent, Abstract).
- Technical Importance: The technology provides a method for creating an auditable, non-repudiable record linking a photographic event to a specific person, place, and time, thereby serving to "verify the activities of the user, or to authenticate various data points" (’872 Patent, col. 2:64-65).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶¶ 26, 44, 51).
- Independent Claim 1 requires:
- 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, wherein the user verification module verifies the user's identity at the time of image 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 image file and associated information upon capture.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused products are identified as ServiceChannel's "locational image software for devices," including a product marketed as a "GPS check-in app for contractor-partners" (the "Accused Product") (Compl. ¶¶ 6, 22, 25).
Functionality and Market Context
The complaint alleges the Accused Product is software installed on mobile devices that allows users, such as field technicians or contractors, to verify their work assignments (Compl. ¶¶ 25-26). Its functionality includes user login via ID and password, capturing images related to a job, and collecting associated data such as GPS location and time (Compl. ¶¶ 27-30). This information is then allegedly linked to the captured photos and stored, providing a record of work performed at a specific location and time (Compl. ¶31).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
Claim Chart Summary
| 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 is described as a "locational image verification device for verifying an assignment of a user (e.g., the consumer)." | ¶26 | col. 16:56-58 |
| 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 Accused Product requires user login with a "unique ID and password," which upon verification enables device operation and provides an assignment. | ¶27 | col. 5:26-30 |
| 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 captures an image related to the assignment, and the complaint alleges that "upon successful login attempt, the user can capture an image," which it equates to verifying identity at the time of capture. | ¶28 | col. 4:13-17; col. 5:27-41 |
| a locational information module for determining a location of the device when capturing the image; | The Accused Product uses the mobile device's "GPS signal to capture a real time location of the mobile device" when the image is captured. | ¶29 | col. 5:53-65 |
| a date and time module for determining a date and time of the image capture; | The Accused Product on the mobile device includes a module for determining the date and time of the image capture, associating it with "job time spent." | ¶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 is alleged to associate the assignment, user identity, location, and time/date by "collecting the field information from the user and linking the captured photos, real time location date and a time spent on the field to complete assignments." | ¶31 | col. 4:50-54 |
| an encryption module for encrypting the digital image file and associated information upon image capture. | The Accused Product allegedly includes an "encryption module for storing and protecting the collected field information data in the database" and for "data encryption." | ¶32 | col. 6:31-41 |
Identified Points of Contention
- Scope Questions: A central question may be whether the term "assignment", as used in the patent in the context of a task list provided to a user (e.g., by a supervisor), can be construed to read on the "job time spent with the field data collected by the user" as alleged in the complaint (Compl. ¶30; ’872 Patent, col. 14:15-20).
- Technical Questions: The complaint alleges that a one-time login satisfies the limitation "verifies the identity of the user of the device at a time of the image capture" (Compl. ¶28). This raises the question of whether this temporal requirement is met by an initial login, or if the claim requires a distinct verification action that is contemporaneous with the act of capturing the image, as discussed in the patent specification (see ’872 Patent, col. 14:30-38).
V. Key Claim Terms for Construction
The Term: "assignment"
- Context and Importance: The entire preamble and several claim elements depend on this term. Its definition will determine whether the "jobs" or "consumer" tasks managed by the Accused Product fall within the scope of the claims. Practitioners may focus on this term to dispute whether the accused system operates on a pre-defined "assignment" as contemplated by the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is general, referring to "verifying an assignment of a user" without significant limitation (’872 Patent, col. 17:49).
- Evidence for a Narrower Interpretation: The detailed description repeatedly frames "assignment" in the context of a supervisor providing specific geographic tasks to an employee, such as visiting clients or damaged residences along a pre-defined route (’872 Patent, col. 14:58-63, col. 15:36-41).
The Term: "verifies the identity of the user of the device at a time of the image capture"
- Context and Importance: This limitation appears to require a specific temporal link between identity verification and the act of taking a picture. The dispute may center on whether a user's persistent logged-in state is sufficient, or if a separate, discrete verification step is required at the moment of capture.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint alleges that the ability to take a picture "upon successful login" constitutes verification "at a time of the image capture" (Compl. ¶28), suggesting that the verified state persists from login through capture.
- Evidence for a Narrower Interpretation: The specification describes an optional but distinct step where "the user will be asked to use the user verification module 132 to re-verify the user's identity at the time of image capture" (’872 Patent, col. 14:30-33). This suggests the patent contemplates a re-verification event separate from the initial login that enables the device.
VI. Other Allegations
Indirect Infringement
The complaint alleges active inducement, stating that ServiceChannel "instructs its customers to install the Accused Product on mobile devices and use the Accused Product" in a manner that directly infringes the ’872 patent (Compl. ¶¶ 25, 51). The allegations point to marketing materials and distribution platforms as evidence of intent (Compl. ¶51).
Willful Infringement
Willfulness is alleged based on knowledge obtained upon service of the complaint. The complaint states, "Defendant's infringement of the '872 patent will thus be knowing and intentional at least upon the service of this Complaint" (Compl. ¶43). There are no allegations of pre-suit knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of temporal scope: does the Accused Product’s one-time user login satisfy the claim requirement to "verify[] the identity of the user... at a time of the image capture," or does the patent demand a distinct, contemporaneous act of verification concurrent with the photo being taken?
- A second key question will be one of definitional scope: can the term "assignment", which the patent describes in the context of supervisor-directed tasks and routes, be construed broadly enough to cover the user-driven "job" tracking and data collection functionality of the Accused Product?
- An evidentiary question will be one of functional operation: what proof will be offered that the Accused Product’s "encryption module for storing and protecting... data in the database" performs the claimed function of "encrypting the digital image file and associated information upon image capture," as required by the final limitation of Claim 1?