DCT
1:20-cv-00169
Rothschild Digital Confirmation LLC v. Terrago Tech Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Digital Confirmation, LLC (Texas)
- Defendant: Terrago Technologies, Inc. (Delaware)
- Plaintiff’s Counsel: Stamoulis & Weinblatt, LLP; Chavous Intellectual Property Law LLC
- Case Identification: 1:20-cv-00169, D. Del., 02/02/2020
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation, transacts business in the state, and offers its products to customers in Delaware through its website.
- Core Dispute: Plaintiff alleges that Defendant’s locational image software for mobile devices infringes a patent related to creating secure, verifiable digital images by embedding user, location, and time data.
- Technical Context: The technology addresses the need for authenticated digital records by securely binding metadata (such as location, time, and user ID) to a digital image at the moment of capture.
- Key Procedural History: The asserted patent, U.S. Patent No. 7,456,872, was the subject of an Inter Partes Review (IPR) proceeding (IPR2015-00624) that concluded with a certificate issued on February 8, 2018. The IPR resulted in the cancellation of method claims 27, 28, 38, and 39. The present complaint asserts device claim 1, which was not cancelled in the IPR.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-29 | ’872 Patent Priority Date |
| 2008-11-25 | ’872 Patent Issue Date |
| 2015-01-26 | Inter Partes Review (IPR2015-00624) Filed against ’872 Patent |
| 2018-02-08 | IPR Certificate Issued, Cancelling Claims 27, 28, 38, 39 |
| 2020-02-02 | 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"
- 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 describes the difficulty of organizing digital images and associating them with verifiable information, such as the location, date, time, and identity of the user who captured them. The background section notes a "critical need" for a system that can "verify the activities of the user, or to authenticate various data points" associated with a digital image (’872 Patent, col. 1:38-65, col. 2:1-2).
- The Patented Solution: The invention is a device that captures a digital image and integrates multiple pieces of contextual data into a secure, verifiable record. It combines several modules: a "user verification module" to confirm the user's identity before operation, a "capture module" for the image itself, a "locational information module" (e.g., GPS), and a "date and time module" (’872 Patent, Fig. 2). A key feature is an "encryption module" that secures the image file and its associated data together, preventing tampering and ensuring the record's integrity (’872 Patent, col. 6:31-42).
- Technical Importance: The technology provides a framework for creating authenticated, geo-tagged, and time-stamped digital evidence, a function with applications in field services, insurance assessment, law enforcement, and other areas where proof of presence and activity is required (’872 Patent, col. 15:36-53).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶44).
- Independent Claim 1 of the ’872 Patent requires:
- 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 taking an image related to the assignment, where the user's identity is verified at the time of image capture.
- A "locational information module" for determining the device's location at capture.
- A "date and time module" for determining the date and time of 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 image file and associated information "upon image capture."
III. The Accused Instrumentality
Product Identification
- The complaint identifies "Terrago's product," referred to as the "Accused Products," which is described as "locational image software" installed on mobile devices (Compl. ¶¶ 22, 25). Specific product families mentioned via website links include TerraGo Edge and TerraGo GeoPDF Toolbar (Compl. ¶26).
Functionality and Market Context
- The Accused Products are alleged to be mobile applications for field data collection (Compl. ¶31). According to the complaint, the software allows a user to log in with a unique ID and password, which enables the use of the mobile device's camera to capture images (Compl. ¶27-28). The software is alleged to then associate the captured image with the user's identity, a GPS location, and a timestamp, and to encrypt this collected information (Compl. ¶¶ 29-32).
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 software requires a user login with a unique ID and password, which verifies the user and enables the operation of the device to capture an image. | ¶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, used after a successful login, captures an image of the "assignment" (e.g., an image of the field). | ¶28 | col. 3:12-28 |
| 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 capture the real-time location of the device when an image is taken. | ¶29 | col. 5:54-61 |
| a date and time module for determining a date and time of the image capture | The software includes a date and time module that associates job time spent with the collected field data. | ¶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 the field information, user identity, location, and time data to the captured photos. | ¶31 | col. 17:5-9 |
| an encryption module for encrypting the digital image file and associated information upon image capture | The software includes an encryption module for storing and protecting collected field information in a database via "data encryption." | ¶32 | col. 6:31-38 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the accused software, which allegedly enables general use after a login, meets the claim limitation that the "user verification module" "provides an assignment to the user." The complaint appears to equate enabling operation with providing an assignment (Compl. ¶27), whereas the patent specification describes providing specific tasks or routes to a user (’872 Patent, col. 13:58-col. 14:20).
- Technical Questions: The infringement analysis may focus on whether the accused product's alleged "data encryption" functionality (Compl. ¶32) meets the temporal and substantive requirements of encrypting "the digital image file and associated information upon image capture." The complaint's allegations point to general database security, which raises the question of whether the encryption occurs at the specific time and on the specific data objects required by the claim.
V. Key Claim Terms for Construction
The Term: "provides an assignment to the user"
- Context and Importance: This phrase appears in the first element of Claim 1 and sets the context for the entire claimed process. The viability of the infringement claim may depend on whether merely authenticating a user to operate an application constitutes "providing an assignment."
- Intrinsic Evidence for a Broader Interpretation: The claim language itself does not specify the nature of the "assignment." A party could argue that once a user is verified, any task they are enabled to perform is a de facto assignment.
- Intrinsic Evidence for a Narrower Interpretation: The detailed description repeatedly frames "assignment" in the context of specific, pre-loaded tasks, such as a list of residences for a social worker to visit or damaged properties for an insurance inspector to photograph (’872 Patent, col. 13:58-col. 14:2; col. 15:61-col. 16:3). This may support a construction requiring a specific, directed task rather than general authorization.
The Term: "upon image capture"
- Context and Importance: This term imposes a strict temporal condition on the encryption step. Whether infringement is found could depend on evidence demonstrating the exact timing of the accused product's encryption relative to the image capture event.
- Intrinsic Evidence for a Broader Interpretation: A party might argue "upon" means "in connection with" or "as a result of," allowing for some delay between capture and encryption (e.g., during a later sync to a server).
- Intrinsic Evidence for a Narrower Interpretation: The specification describes a preferred embodiment where information is "immediately encrypted by the encryption module 140" after being captured and associated (’872 Patent, col. 14:55-57, describing step 712). This suggests a narrow construction requiring the encryption to occur contemporaneously with the capture event.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendant instructs its customers to install and use the Accused Products on mobile devices in a manner that directly infringes, and that Defendant intends this outcome (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," establishing a basis for post-suit willfulness (Compl. ¶43). No facts are alleged to support pre-suit knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "provides an assignment to the user," which the patent specification ties to specific, directed work tasks, be construed to cover a general-purpose login that authenticates a user to operate a field data collection application?
- A key evidentiary question will be one of temporal and functional alignment: does the accused software's general data security infrastructure perform the specific function of encrypting both the "digital image file and associated information" at the precise moment "upon image capture," as required by Claim 1, or is there a fundamental mismatch in the timing or scope of the accused encryption process?