Rothschild Digital Confirmation LLC v. Coresystems AG

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Rothschild Digital Confirmation, LLC (Texas)
  • Defendant: Coresystems AG (Switzerland)
  • Plaintiff’s Counsel: Ferraiuoli LLC
• Case Identification: 2:16-cv-01478, E.D. Tex., 12/29/2016
• Venue Allegations: Plaintiff alleges venue is proper because Defendant is subject to personal jurisdiction in the district and has regularly conducted business there.
• Core Dispute: Plaintiff alleges that Defendant’s mobile application for field service management infringes a patent related to securely capturing digital images and embedding associated metadata, such as location, time, and user identity.
• Technical Context: The technology provides a method for creating authenticated digital records, where an image is cryptographically bound to verifiable data about its origin, a function valuable in industries requiring proof of activity, such as insurance, logistics, and compliance.
• Key Procedural History: Subsequent to the filing of this complaint, the asserted patent was the subject of an Inter Partes Review (IPR2015-00624). In a certificate issued February 8, 2018, the USPTO cancelled claims 27, 28, 38, and 39. The cancellation of independent method claim 27 may bear on the viability of infringement allegations related to the performance of the patented method.

Case Timeline

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 a need for a secure and efficient way to associate verifiable information—such as time, specific location, and user identity—with a captured digital image to authenticate the user's activities or data points (’872 Patent, col. 1:60-67). It notes the difficulty of manually cataloging images and the lack of existing systems to securely capture this metadata.
• The Patented Solution: The invention is a "Locational Image Verification Device" (LIVD) that captures a digital image and automatically embeds associated data. As described, the device first verifies the user's identity, captures an image related to a specific "assignment," determines the location (e.g., via GPS) and time of the capture, and then associates this data with the image file before encrypting the package for secure storage or transmission (’872 Patent, Abstract; Fig. 8).
• Technical Importance: This technology sought to provide a trusted, automated system for creating digital evidence, transforming a simple photograph into a verifiable record of a specific event occurring at a specific time, place, and performed by a specific individual (’872 Patent, col. 2:31-38).

Key Claims at a Glance

• The complaint primarily asserts infringement of independent device claim 1 (’Compl. ¶19, ¶23).
• The essential elements of Claim 1 are:
  • A user verification module for verifying a user's identity, which then enables device operation and "provides an assignment to the user."
  • A capture module for capturing an image related to the assignment, where the user verification module verifies the user’s identity "at a time of the 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 capture.
• The complaint also alleges infringement of "at least one claim," suggesting the potential assertion of other claims (’Compl. ¶11).

III. The Accused Instrumentality

Product Identification

The "Coresystems mobile application" (Accused Product) (’Compl. ¶12).

Functionality and Market Context

The complaint alleges the Accused Product is software for mobile devices used by field technicians and other personnel (’Compl. ¶12). Its relevant functionalities are alleged to include: verifying a user's identity via login; displaying a list of "Service Calls" (assignments) after verification; capturing images related to the assignment, such as a customer's digital signature; determining and associating the location, time, and date with the image; and encrypting data before sending it to a back-office system (’Compl. ¶13-18). The complaint states the product is offered for sale in Texas via Defendant's website (’Compl. ¶5, ¶24). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’872 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A question exists whether the claim phrase "provides an assignment to the user," as a function of the "user verification module," can be read to cover an application that displays a pre-existing list of "Service Calls" after a user logs in (Compl. ¶14). The defense may argue that displaying assignments is distinct from the verification module itself providing them.
  • Technical Questions: The complaint alleges user identity is verified "at a time of the image capture" (Compl. ¶15). It will be a factual question whether a one-time login at the beginning of a user session satisfies this limitation for every subsequent image capture, or if the claim requires a more temporally proximate verification event for each image.

V. Key Claim Terms for Construction

• The Term: "user verification module...provides an assignment to the user"

  • Context and Importance: The interpretation of "provides" is central. If construed narrowly to mean the module itself must generate or be the direct source of the assignment, infringement may be more difficult to prove than if it is construed broadly to mean "makes available" or "displays."
  • Intrinsic Evidence for a Broader Interpretation: The specification describes a system where assignment information is downloaded to the device and then accessed by the user, which could support the idea that "providing" means displaying stored information (’872 Patent, col. 13:58-67).
  • Intrinsic Evidence for a Narrower Interpretation: The plain language of the claim links the "providing" function directly to the "user verification module." The patent's own flowchart (Fig. 8) depicts "VERIFY IDENTITY" (702) and "RECEIVING ASSIGNMENT INFORMATION" (704) as sequential, distinct steps, which could suggest the verification module is functionally separate from the delivery of assignments.

• The Term: "verifies the identity of the user...at a time of the image capture"

  • Context and Importance: This term's construction will define the required temporal link between authentication and image capture. Practitioners may focus on this term because the security premise of the patent rests on ensuring the authenticated user is the one capturing the image.
  • Intrinsic Evidence for a Broader Interpretation: An interpretation of "at a time of" could encompass the entire duration of a logged-in session, where the user's identity is considered continuously verified from login to logout.
  • Intrinsic Evidence for a Narrower Interpretation: The patent emphasizes creating a secure, verifiable record (’872 Patent, col. 2:34-38). The specification also describes an optional re-verification of the user's identity specifically "at the time of image capture," suggesting that the inventors contemplated a tighter, event-specific link beyond an initial login (’872 Patent, col. 14:30-38).

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement, stating that Defendant sells and advertises the Accused Product with the intent that its customers use it on mobile devices in an infringing manner. Knowledge of the patent is alleged to have existed at the time of inducement (’Compl. ¶24).
• Willful Infringement: The complaint alleges Defendant had knowledge of its infringement "at least as of the service of the present complaint" (’Compl. ¶22). This allegation supports a claim for post-suit infringement only. The prayer for relief requests "enhanced damages, including RDC's attorneys' fees...pursuant to 35 U.S.C. §285," which appears to conflate the statute for attorney fees (§285) with the statute for enhanced damages (§284) (’Compl., p. 8, ¶5).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of claim construction: does the "user verification module" merely act as a gatekeeper that allows access to assignments, or must it, as the claim language suggests, functionally "provide" the assignment itself?
• A key evidentiary question will be one of temporal proximity: does a single login at the start of a work session constitute "verify[ing] the identity of the user at a time of the image capture" for all subsequent images, or does the patent’s security-focused disclosure require a more immediate, per-capture authentication?
• A dispositive procedural question will be the impact of the IPR: how does the post-filing cancellation of independent method claim 27 affect the plaintiff's theories of liability, particularly those for indirect infringement that are predicated on the actions of the defendant's customers?