DCT
1:20-cv-00168
Rothschild Digital Confirmation LLC v. Field Agent Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Digital Confirmation, LLC (Texas)
- Defendant: Field Agent, Inc. (Delaware)
- Plaintiff’s Counsel: Chavous Intellectual Property Law LLC; Stamoulis & Weinblatt LLC
- Case Identification: 1:20-cv-00168, D. Del., 02/02/2020
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is incorporated in Delaware, has a regular and established place of business in the district, and has committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s locational image software infringes a patent related to a device and method for capturing a digital image and securely embedding associated data such as location, time, and user identity.
- Technical Context: The technology addresses the need for authenticating digital images by securely binding metadata (e.g., location, time, user ID) to the image file at the moment of capture, a function with applications in fields requiring verifiable evidence, such as insurance, logistics, and gig-economy tasks.
- Key Procedural History: An Inter Partes Review (IPR) proceeding (IPR2015-00624) was filed against the patent-in-suit, resulting in the cancellation of method claims 27, 28, 38, and 39. The present complaint asserts infringement of device claim 1, which was not cancelled in the IPR.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-29 | Earliest Priority Date for U.S. Patent No. 7,456,872 |
| 2008-11-25 | U.S. Patent No. 7,456,872 Issued |
| 2015-01-26 | Inter Partes Review IPR2015-00624 Filed |
| 2018-02-08 | Inter Partes Review Certificate Issued, Cancelling Claims |
| 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 addresses the difficulty of organizing digital images and associating verifiable information with them. Prior art methods were described as manual, time-consuming, and lacking security, making it difficult to authenticate when, where, and by whom a digital photo was taken (’872 Patent, col. 1:30-58). A specific need was identified to "verify information captured via digital images" and to "enable a user to capture and store images in a secure format containing information on the time and day, specific location and user identification" (’872 Patent, col. 1:60-66).
- The Patented Solution: The invention is a "Locational Image Verification Device" that integrates several modules to solve this problem (’872 Patent, col. 2:31-33). As depicted 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 the location, and a "date and time module" (’872 Patent, Fig. 2). A "processing module" associates all this information with the image file, and an "encryption module" secures the data bundle upon capture to prevent tampering (’872 Patent, col. 14:48-56).
- Technical Importance: This approach provided a system for creating self-authenticating digital images, where the contextual data is securely and automatically bound to the image at the point of creation, a critical function for evidentiary or compliance purposes.
Key Claims at a Glance
- The complaint asserts infringement of independent claim 1 and reserves the right to assert other claims (’872 Patent, col. 16:56-17:9; Compl. ¶40).
- Independent Claim 1 requires:
- A locational image verification device for verifying an assignment of a user, comprising:
- a user verification module for verifying an identity of a user of the device... and provides an assignment to the user;
- 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;
- a locational information module for determining a location of the device when capturing the image;
- a date and time module for determining a date and time of the image capture;
- a processing module for associating the assignment, the user identity, location information and the time and date to the digital image file; and
- an encryption module for encrypting the digital image file and associated information upon image capture.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant Field Agent’s "locational image software for devices," referred to as the "Accused Product" (Compl. ¶22).
Functionality and Market Context
- The complaint alleges that the Accused Product is software that customers install on mobile devices (Compl. ¶25). When installed, it allegedly enables the mobile device to function as an infringing device. The described functionality involves users ("agents") receiving assignments ("jobs"), using their mobile device to capture photos and other data at specific locations to complete the jobs, and submitting the collected data. The system allegedly captures location, time, and user identity, and associates this information with the captured images (Compl. ¶¶26-32).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’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 Accused Product on a mobile device verifies a user's identity via a unique ID and password, which upon successful login, enables the user to receive an assignment. | ¶27 | col. 5:27-52 |
| a capture module for capturing an image relating to the assignment and creating a digital image file | The camera on the mobile device is used to capture an image relating to the assignment (e.g., an image of the field) and create a digital photo file. | ¶28 | col. 3:13-28 |
| wherein the user verification module verifies the identity of the user of the device at a time of the image capture | The complaint alleges that after a successful login, the user can capture an image, and on "information and belief," the Accused Product performs the step of determining the user's identity at the time of capture. | ¶28 | col. 16:60-62 |
| a locational information module for determining a location of the device when capturing the image | The mobile device's GPS signal is allegedly used to capture the real-time location of the device when the image is captured. | ¶29 | col. 5:53-68 |
| a date and time module for determining a date and time of the image capture | The mobile device's date and time module, enabled by the Accused Product, determines the date and time of image capture. | ¶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 processor of the mobile device allegedly collects the field information, including the captured photos, location, and date, and links them to complete the assignment. | ¶31 | col. 17:1-6 |
| an encryption module for encrypting the digital image file and associated information... upon image capture | The complaint alleges the Accused Product includes an "encryption module for storing and protecting the collected field information data in the database" and performs "data encryption upon image capture." | ¶32 | col. 6:31-41 |
- Identified Points of Contention:
- Scope Questions: The asserted claim is for a "device." The complaint alleges that Defendant’s software, when installed on a third-party mobile device, creates an infringing device (Compl. ¶26). A central question may be whether Defendant, who provides only a software component, can be held liable for directly infringing a claim to a multi-component device.
- Technical Questions: Claim 1 requires the "user verification module" to verify the user's identity "at a time of the image capture." The complaint alleges this occurs "after successful login" (Compl. ¶28). The defense may argue that a one-time login verification is not the same as a verification performed contemporaneously with the image capture event itself, as the patent specification appears to contemplate for security purposes (’872 Patent, col. 14:31-34).
V. Key Claim Terms for Construction
The Term: "module" (e.g., "user verification module", "capture module", etc.)
Context and Importance: This term appears in every element of the asserted independent claim. Its construction will determine whether the claim requires distinct hardware or software components, or if it can read on different functional aspects of a single, integrated software application. The infringement allegation rests on mapping functions of the Field Agent app to these "modules."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the invention "may be implemented in various forms of hardware, software, firmware, special purpose processors, or a combination thereof" and that the various modules are coupled by a "system bus" (’872 Patent, col. 3:55-63). This language may support a functional definition, where a "module" is a block of code performing a function, rather than a physically separate component.
- Evidence for a Narrower Interpretation: Figure 2 depicts the modules as discrete, interconnected boxes, which could suggest a more structural or component-based meaning (’872 Patent, Fig. 2). Further, the specification describes the modules as "constituent device components" (’872 Patent, col. 4:4-5), language that could be argued to imply distinct structures.
The Term: "assignment"
Context and Importance: The preamble and multiple elements of claim 1 tie the device's function to verifying an "assignment." The definition of this term is critical to determining the intended scope and utility of the claimed invention. The complaint alleges an "assignment of a user (e.g., the consumer)" (Compl. ¶26), which may be challenged as overly broad.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is not explicitly defined, which may support giving it its plain and ordinary meaning, potentially covering any task given to a user.
- Evidence for a Narrower Interpretation: The detailed description and embodiments frame "assignment" in a commercial or task-based context, such as an employee being given "specific geographic assignments" by a supervisor or being tasked with documenting disaster damage (’872 Patent, col. 13:8-10, col. 15:36-41). This context may support a narrower construction limited to dispatched tasks in a work-related setting.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant "instructs its customers to install the Accused Product on mobile devices and use the Accused Product in a manner that infringes" (Compl. ¶¶25, 51). The basis for knowledge and intent is Defendant's alleged sale and advertisement of the product for use on mobile devices (Compl. ¶51).
- Willful Infringement: The complaint alleges that Defendant's infringement will be "knowing and intentional at least upon the service of this Complaint" (Compl. ¶43). It seeks enhanced damages for post-filing infringement (Compl., Prayer for Relief ¶¶6-7).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of infringement liability: can Field Agent, as a provider of software, be held liable for direct infringement of a device claim, where the complete device is only formed when a customer installs that software on a third-party mobile phone? This will likely involve analysis of divided infringement and control or direction.
- A key question of claim scope will be whether the term "module" requires structurally distinct components or if it can be construed functionally to read on integrated code blocks within a single software application. The outcome will significantly impact how the accused software is compared to the claim limitations.
- A dispositive evidentiary question will be one of technical operation: does the Accused Product's one-time user login satisfy the claim requirement that the user's identity is verified "at a time of the image capture," or does the patent require a more contemporaneous verification to ensure the security and integrity that the invention purports to provide?