Mirror Imaging LLC v. Benchmark Bank

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Mirror Imaging LLC (Michigan)
  • Defendant: Benchmark Bank (Texas)
  • Plaintiff’s Counsel: Rabicoff Law LLC
• Case Identification: 2:17-cv-00654, E.D. Tex., 09/20/2017
• Venue Allegations: Venue is alleged to be proper based on the defendant having a regular and established place of business (branch bank locations) within the district and having committed the alleged acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s Online Banking system infringes four patents related to methods for retrieving electronically stored financial documents from tiered storage systems.
• Technical Context: The technology concerns methods for managing and retrieving electronic financial records by segregating them into different storage systems based on age or other parameters to improve efficiency and reduce costs.
• Key Procedural History: The four patents-in-suit are part of a single, multi-generational family of patents stemming from a provisional application filed in 1999, with each subsequent patent being a continuation of the one prior. The complaint does not mention any prior litigation, licensing history, or post-grant proceedings involving these patents.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,963,866 - "Method of Obtaining an Electronically Stored Financial Document"

• Patent Identification: U.S. Patent No. 6,963,866, "Method of Obtaining an Electronically Stored Financial Document," issued November 8, 2005.

The Invention Explained

• Problem Addressed: The patent’s background section identifies the process of retrieving electronically stored financial documents, especially older ones, as "resource intensive, time consuming, and expensive" for financial institutions (Compl. ¶10; '866 Patent, col. 1:54-63). Conventional methods were described as deficient because they often lacked a direct, independent interface to off-site storage systems, thus failing to alleviate the "back office production" burden on the institution ('866 Patent, col. 2:5-16).
• The Patented Solution: The invention proposes a method using a tiered, or bifurcated, storage architecture. Financial documents are stored in one of two systems—an "on-site" system for more recent documents and a remote "off-site" system for older, archival documents—based on a comparison of a "specific document parameter" (e.g., a record date) against a "predetermined parameter" ('866 Patent, Abstract). A computer terminal connected to both systems through a processing unit receives a user request, performs the comparison, and automatically accesses the appropriate storage system to retrieve the document, which can reduce the institution's direct involvement in retrieving archival data ('866 Patent, col. 2:21-34).
• Technical Importance: This approach was designed to reduce operational costs and inefficiencies for financial institutions by enabling the outsourcing of archival data retrieval while maintaining seamless access for end-users (Compl. ¶11; '866 Patent, col. 2:26-34).

Key Claims at a Glance

• The complaint asserts independent claim 1 ('866 Patent, col. 11:27-12:65; Compl. ¶22).
• The essential elements of independent claim 1 include:
  • Storing financial documents in a first storage system when a document parameter is greater than a predetermined parameter.
  • Storing financial documents in a second storage system when the document parameter is less than or equal to the predetermined parameter.
  • Utilizing a computer terminal connected to both storage systems through a processing unit.
  • Receiving and inputting a request for a document into the terminal.
  • Comparing the requested document's parameter to the predetermined parameter.
  • Automatically accessing the first or second storage system based on the outcome of the comparison.
  • Retrieving the requested financial document from the accessed storage system.

U.S. Patent No. 7,552,118 - "Method of Obtaining an Electronically Stored Financial Document"

• Patent Identification: U.S. Patent No. 7,552,118, "Method of Obtaining an Electronically Stored Financial Document," issued June 23, 2009.

The Invention Explained

• Problem Addressed: As a continuation of the application that led to the '866 Patent, the '118 Patent addresses the same technical problem: the inefficiency, cost, and high "back office" burden associated with retrieving electronically stored financial documents from systems that do not have a unified interface for both recent (on-site) and archival (off-site) data ('118 Patent, col. 1:51-62, col. 2:5-16).
• The Patented Solution: The '118 Patent describes a substantially similar solution to its parent patent, involving a method to direct document requests to one of two different storage systems based on a comparison between a document parameter and a pre-selected threshold ('118 Patent, Abstract). The method relies on a computer terminal and processing unit to automate the access and retrieval, which allows the responsibility for the off-site system to be outsourced to a third party ('118 Patent, col. 2:21-34).
• Technical Importance: By continuing the prosecution of the original invention, the '118 Patent sought to refine and secure protection for the core technological concept of a bifurcated, selectively-accessed financial document storage architecture (Compl. ¶14).

Key Claims at a Glance

• The complaint asserts independent claim 1 ('118 Patent, col. 11:17-12:12; Compl. ¶31).
• The essential elements of independent claim 1 are functionally identical to claim 1 of the '866 Patent, including steps for storing documents in two different systems based on a parameter comparison, utilizing a connected computer terminal, submitting a request, comparing the parameter, automatically accessing the correct system, and retrieving the document. A minor linguistic difference is the use of "submitting a request... into the computer terminal" instead of "inputting the request."

U.S. Patent No. 7,836,067 - "Method of Obtaining Electronically Stored Financial Documents"

• Patent Identification: U.S. Patent No. 7,836,067, "Method of Obtaining Electronically Stored Financial Documents," issued November 16, 2010 (Compl. ¶15).
• Technology Synopsis: This continuation patent further refines the method for retrieving documents from two distinct storage systems. It specifically claims a method where documents are stored as electronic images (Compl. ¶41; '067 Patent, col. 16:5-9). The asserted claim inverts the storage logic compared to the parent patents, with more recent documents (parameter is less than predetermined) being stored in a first system and older documents (parameter is greater than or equal to) in a second system ('067 Patent, col. 16:15-28).
• Asserted Claims: Independent claim 53 (Compl. ¶40).
• Accused Features: The accused features are the same tiered storage and retrieval functions of the Benchmark Online Banking system, where online statements and check images are stored in and retrieved from separate systems based on their date (Compl. ¶41-42).

U.S. Patent No. 9,141,612 - "Method of Obtaining an Electronically Stored Financial Document"

• Patent Identification: U.S. Patent No. 9,141,612, "Method of Obtaining an Electronically Stored Financial Document," issued September 22, 2015 (Compl. ¶18).
• Technology Synopsis: This patent, the latest in the continuation chain, describes a method for accessing electronic images of financial documents from a two-tiered storage system. The asserted claim specifies that the "predetermined parameter" includes a "pre-selected numerical record date" and the "specific document parameter" is a "particular numerical sequence... [that] includes a record date of the financial document" (Compl. ¶52, ¶54; '612 Patent, col. 17:60-18:2).
• Asserted Claims: Independent claim 1 (Compl. ¶50).
• Accused Features: Benchmark's Online Banking system is accused of infringement for its method of storing images of statements and checks in different systems based on date, and for comparing a requested date range to a predetermined date (e.g., 6 months) to retrieve the images (Compl. ¶51-54).

III. The Accused Instrumentality

Product Identification

• The complaint identifies "Benchmark's Online Banking system" as the accused instrumentality (Compl. ¶22).

Functionality and Market Context

• The accused system provides online banking services, including the storage and retrieval of "online statements and deposited check images" (Compl. ¶22).
• The complaint alleges the system employs a tiered storage architecture where documents are managed based on their age. Specifically, online statements are stored for "up to 6 months in a storage system that is retrievable," after which they are "transferred to another storage system for archival and retrieval purposes for up to 5 years" (Compl. ¶23).
• The system allegedly allows a user at a "computer terminal" to request documents by "entering the desired date range" (Compl. ¶24). A processing unit is then alleged to "automatically" access and retrieve statements from one of two different storage systems depending on whether the document's date is less than or greater than a 6-month threshold (Compl. ¶26).
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'866 Patent Infringement Allegations

• Identified Points of Contention:
  • Technical Questions: A potential contradiction within the complaint raises a key factual question. Paragraph 25 states that for requests of documents 6 months or older, the "requester receives notification that customer service must be contacted," which suggests a manual process. However, paragraph 26 alleges that the system "automatically" accesses and retrieves documents from this older storage. What evidence the complaint provides that the accused system "automatically" performs retrieval for older documents, as required by the claim, will be a central point of dispute.
  • Scope Questions: The patent describes "on-site" and "off-site" storage systems, with the latter being suited for outsourcing ('866 Patent, col. 2:29-31). A question for the court will be whether Benchmark’s alleged "retrievable" and "archival" storage systems (Compl. ¶23) meet the claim limitation of being "remotely-located," the specific architecture of which is not detailed in the complaint.

'118 Patent Infringement Allegations

• Identified Points of Contention:
  • Technical Questions: The same factual question identified for the '866 Patent exists here. The allegation that a customer service contact is required for older documents (Compl. ¶34) is in tension with the allegation and claim requirement of automatic access and retrieval (Compl. ¶35).
  • Scope Questions: Does the description of two storage systems for "retrievable" versus "archival" purposes (Compl. ¶32) satisfy the patent's teaching of two "remotely-located" systems, a term whose precise scope is a matter for construction.

V. Key Claim Terms for Construction

• The Term: "first storage system remotely-located from a second storage system" ('866 Patent, Claim 1; '118 Patent, Claim 1)

• Context and Importance: This term is foundational to the patent's architecture. The infringement analysis depends on whether the defendant's two alleged storage systems ("retrievable" vs. "archival") meet this "remotely-located" requirement. Practitioners may focus on this term because the patent's specification consistently frames the invention in an "on-site" vs. "off-site" context, with the latter being suitable for outsourcing, which implies more than mere logical separation.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification states that documents "can be stored in different geographical locations" ('866 Patent, col. 3:19-20), which is permissive, not mandatory. This could support an argument that "remotely-located" can mean logically or architecturally separate, not necessarily geographically distant.
  • Evidence for a Narrower Interpretation: The patent's abstract, summary, and figures consistently distinguish between "on-site" and "off-site" systems ('866 Patent, Abstract; col. 2:43-46; FIG. 1). The stated purpose of enabling outsourcing to "third party entities" ('866 Patent, col. 2:29-31) strongly supports a narrower construction requiring geographic or at least operational separation between the two systems.

• The Term: "automatically accessing" ('866 Patent, Claim 1; '118 Patent, Claim 1)

• Context and Importance: This term is critical because the complaint itself introduces ambiguity about whether the accused system's process is fully automated. Practitioners may focus on this term because the allegation that "customer service must be contacted" for older documents (Compl. ¶25, ¶34) directly challenges whether the "accessing" and "retrieving" steps are "automatic" as required by the claims.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party could argue "automatically" means the process is initiated without further input from the end-user after the initial request, even if it triggers a workflow that includes manual steps by back-office personnel.
  • Evidence for a Narrower Interpretation: The claim language "automatically accessing the first storage system through the processing unit" ('866 Patent, col. 12:57-59) suggests the processing unit itself performs the action. The invention's stated goal is to reduce or eliminate "back office production" ('866 Patent, col. 2:26-29), which would be undermined by a process that requires manual intervention from customer service.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement for all four patents, asserting that Benchmark provides "access to, support for, training and instructions for, its Online Banking system to its customers to enable them to infringe" and has the specific intent that its customers do so (Compl. ¶27, ¶36, ¶46, ¶56). It further alleges that Benchmark’s actions have "solely caused all of the steps to be performed" even in cases of joint infringement (Compl. ¶27).
• Willful Infringement: The complaint does not plead specific facts to support willful infringement, such as pre-suit knowledge of the patents. It does, however, include a request for trebled damages in the prayer for relief to remedy "Benchmark's willful infringement of the Patents-in-Suit" (Compl. p. 15, ¶D).

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

• A central issue will be one of evidentiary proof: The complaint presents conflicting descriptions of how the accused system retrieves older documents. The case will likely turn on factual evidence establishing whether the system "automatically" accesses and retrieves documents older than six months, as required by the claims, or if it requires manual human intervention via "customer service," which could place its operation outside the scope of the asserted claims.
• A second key issue will be one of definitional scope: The dispute will depend heavily on claim construction. A core question for the court will be whether the patent term "remotely-located," which is described in the context of "on-site" versus "off-site" systems suitable for outsourcing, can be interpreted to read on the defendant's alleged "retrievable" and "archival" storage systems, whose actual architecture is not specified.