DCT
2:20-cv-00115
Mitek Systems Inc v. United Services Automobile Association
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mitek Systems, Inc. (Delaware)
- Defendant: United Services Automobile Association (USAA) (Texas)
- Plaintiff’s Counsel: Quinn Emanuel Urquhart & Sullivan, LLP
- Case Identification: 2:20-cv-00115, N.D. Cal., 11/01/2019
- Venue Allegations: Plaintiff Mitek Systems, Inc. ("Mitek") alleges that venue is proper in the Northern District of California because Defendant United Services Automobile Association ("USAA") conducts substantial business in the district and directed its patent enforcement campaign into the district, including through a San Francisco-based law firm.
- Core Dispute: Plaintiff Mitek seeks a declaratory judgment that its mobile imaging software does not infringe four patents owned by Defendant USAA related to mobile check deposit technology.
- Technical Context: The technology at issue is mobile remote deposit capture (RDC), which allows bank customers to deposit checks by photographing them with a mobile device, a central feature of modern mobile banking applications.
- Key Procedural History: The complaint alleges that this declaratory judgment action arises from an extensive patent enforcement campaign by USAA that began in 2017, involving over 1,000 demand letters sent to financial institutions, many of whom are Mitek’s customers. The complaint also notes that in June 2018, USAA filed an infringement suit against Wells Fargo Bank, a major Mitek customer, in the Eastern District of Texas, asserting the same patents-in-suit over technology supplied by Mitek.
Case Timeline
| Date | Event |
|---|---|
| 2008-01-01 | Mitek launches its Mobile Deposit® product (at least as early as) |
| 2009-08-21 | Earliest Priority Date ('571, '090 Patents) |
| 2009-08-28 | Earliest Priority Date ('779, '517 Patents) |
| 2009-06-20 | USAA releases its Deposit@Mobile® product (approx. spring/summer) |
| 2014-04-15 | U.S. Patent No. 8,699,779 Issues |
| 2015-03-10 | U.S. Patent No. 8,977,571 Issues |
| 2016-05-10 | U.S. Patent No. 9,336,517 Issues |
| 2017-11-14 | U.S. Patent No. 9,818,090 Issues |
| 2019-11-01 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
No probative visual evidence provided in complaint.
U.S. Patent No. 8,699,779 - "Systems and Methods for Alignment of Check During Mobile Deposit"
- Patent Identification: U.S. Patent No. 8,699,779, "Systems and Methods for Alignment of Check During Mobile Deposit," issued April 15, 2014 (Compl. ¶22).
The Invention Explained
- Problem Addressed: The patent's background section notes that while remote check deposit via mobile device is more convenient than physically visiting a bank, capturing a quality digital image that allows for accurate extraction of the check's information is "difficult" (ʼ779 Patent, col. 1:20-35).
- The Patented Solution: The invention provides an "alignment guide" within the field of view of a mobile device's camera to assist the user in framing the check. The system then determines when the image of the check is properly aligned within the guide and automatically captures the image, ensuring it is suitable for processing by a financial institution (ʼ779 Patent, Abstract; col. 2:39-56).
- Technical Importance: This method of guided, automated capture was designed to improve the reliability and user-friendliness of early mobile RDC systems, reducing the likelihood of failed deposits due to poor image quality.
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of claims 1 and 10, the independent claims of the patent (Compl. ¶38).
- Independent claim 1 recites a system comprising a mobile device with a processor configured to perform several key steps:
- project an alignment guide in the display
- monitor an image of the check
- determine whether the image of the check aligns with the alignment guide
- automatically capture the image of the check when the image...is determined to align
- transmit the captured image to a depository
U.S. Patent No. 9,336,517 - "Systems and Methods for Alignment of Check During Mobile Deposit"
- Patent Identification: U.S. Patent No. 9,336,517, "Systems and Methods for Alignment of Check During Mobile Deposit," issued May 10, 2016 (Compl. ¶23).
The Invention Explained
- Problem Addressed: Like its parent, the '517 Patent addresses the difficulty of capturing a high-quality, processable digital image of a check using a mobile device (ʼ517 Patent, col. 1:35-45).
- The Patented Solution: The invention also uses an alignment guide, but its claims focus on monitoring "at least one feature of the instrument" and determining when that specific feature aligns with the guide. Once alignment of the feature is determined, the system automatically captures the instrument's information (ʼ517 Patent, Abstract). This suggests a more targeted approach to alignment than simply fitting the entire check within a frame.
- Technical Importance: By focusing on specific "features" of an instrument, this approach could allow for more robust and flexible alignment detection than methods requiring the entire document to be framed, potentially improving accuracy for different types or sizes of documents.
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of claims 1 and 10, the independent claims of the patent (Compl. ¶44).
- Independent claim 1 recites a system comprising a mobile device with a processor configured to perform several key steps:
- generate an alignment guide
- monitor at least one feature of the instrument
- determine whether the at least one feature...aligns with the alignment guide
- automatically capture information of the instrument when the at least one feature aligns
- transmit the captured information to a server
U.S. Patent No. 8,977,571 - "Systems and Methods for Image Monitoring of Check During Mobile Deposit"
- Patent Identification: "Systems and Methods for Image Monitoring of Check During Mobile Deposit," issued March 10, 2015 (Compl. ¶24).
- Technology Synopsis: This patent describes a system that monitors a check image in a camera's field of view against a set of "monitoring criteria" before capture. These criteria can include metrics such as light contrast, brightness, positioning, skewing, and warping, and the system automatically captures the image only when these criteria are passed, thereby ensuring a quality image is obtained ('571 Patent, Abstract).
- Asserted Claims: The complaint asserts non-infringement of independent claims 1 and 9 (Compl. ¶50).
- Accused Features: Mitek's MiSnap™ and related remote deposit technology are alleged to not infringe (Compl. ¶48).
U.S. Patent No. 9,818,090 - "Systems and Methods for Image and Criterion Monitoring During Mobile Deposit"
- Patent Identification: "Systems and Methods for Image and Criterion Monitoring During Mobile Deposit," issued November 14, 2017 (Compl. ¶25).
- Technology Synopsis: This patent describes a system that monitors an image of a target document and, "when the monitoring criterion is determined to be satisfied, control[s] the image capture device to capture an image." This method provides for automated quality control by ensuring certain technical criteria are met before the image is taken ('090 Patent, claim 1).
- Asserted Claims: The complaint asserts non-infringement of independent claims 1 and 11 (Compl. ¶56).
- Accused Features: Mitek's MiSnap™ and related remote deposit technology are alleged to not infringe (Compl. ¶54).
III. The Accused Instrumentality
Product Identification
- The product at issue is Mitek’s MiSnap™, a patented software development kit (SDK) that is part of its Mobile Deposit® product offering (Compl. ¶¶3, 11, 28).
Functionality and Market Context
- MiSnap™ is an SDK licensed to financial institutions, including Wells Fargo Bank, for integration into their mobile banking applications (Compl. ¶¶11, 12). The complaint describes it as enabling an "intuitive user experience and instant capture of quality images" for purposes including remote check deposit and identity verification (Compl. ¶28). The complaint alleges that USAA's enforcement campaign has targeted Mitek's customers, suggesting Mitek's technology is a significant component of the mobile banking ecosystem (Compl. ¶¶9, 13).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The following tables summarize Mitek's specific non-infringement arguments for the lead patents.
- U.S. Patent No. 8,699,779 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| determine whether the image of the check aligns with the alignment guide | Mitek's MiSnap™ technology does not determine whether the image of the check aligns with an alignment guide as a condition for capture. | ¶38 | col. 18:41-43 |
| automatically capture the image of the check when the image of the check is determined to align with the alignment guide | Mitek's MiSnap™ technology does not automatically capture the image of the check based on a determination that the image aligns with an alignment guide. | ¶38 | col. 18:44-47 |
- U.S. Patent No. 9,336,517 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| determine whether the at least one feature of the instrument aligns with the alignment guide | Mitek's MiSnap™ technology does not determine whether at least one feature of an instrument aligns with an alignment guide. | ¶44 | col. 18:50-52 |
| automatically capture information of the instrument when the at least one feature aligns with the alignment guide | Mitek's MiSnap™ technology does not automatically capture information based on a determination that at least one feature aligns with an alignment guide. | ¶44 | col. 18:53-56 |
- Identified Points of Contention:
- Technical Operation: The central dispute is factual. Mitek alleges its technology "enables... instant capture of quality images" (Compl. ¶28) but explicitly denies that this is achieved by performing the patented steps of "determin[ing] whether the image... aligns" and then "automatically captur[ing]" based on that determination (Compl. ¶38, ¶44). The case will raise the question of what specific technical trigger—if not alignment with a guide—MiSnap™ uses to initiate image capture.
- Functional Mismatch: Mitek's pleadings suggest a fundamental mismatch between the patented method and its technology's actual operation. The key question for the court will be whether the process MiSnap™ uses for automated image capture is the same as, or equivalent to, the specific alignment-based process required by the claims of the patents-in-suit.
V. Key Claim Terms for Construction
The Term: "determine whether the image of the check aligns with the alignment guide" ('779 Patent, claim 1)
- Context and Importance: This phrase is the central active limitation that Mitek alleges its products do not perform. Its construction will be critical, as a broad definition (e.g., simply being contained within a bounding box) versus a narrow definition (e.g., requiring analysis of edge parallelism) could decide the non-infringement question.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the process as occurring "When the image of the check is within the alignment guide in the field of view" ('779 Patent, col. 2:40-42), which could suggest mere containment is sufficient.
- Evidence for a Narrower Interpretation: Dependent claims 7, 8, and 9 add limitations requiring alignment of one, two, or three edges of the check with the guide, respectively. This suggests that the term "aligns" in the independent claim may be intended to mean more than simple containment and implies a specific positional relationship.
The Term: "at least one feature of the instrument" ('517 Patent, claim 1)
- Context and Importance: Mitek denies that its technology determines alignment of "at least one feature" (Compl. ¶44). The definition of this term is crucial for establishing the scope of what must be monitored. Practitioners may focus on this term because its potential breadth could cover a wide range of image characteristics, from a corner or an edge to the MICR line or even less-defined image properties.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "feature" is not explicitly defined in the specification, which could support a broad interpretation covering any detectable characteristic of the check image.
- Evidence for a Narrower Interpretation: Dependent claim 2 recites "at least one edge of the at least one feature," which suggests that a "feature" is a distinct element with its own defined edges, rather than a more abstract image quality like focus or brightness.
VI. Other Allegations
- Indirect Infringement: Mitek seeks a declaration of non-infringement as to indirect infringement (inducement and contributory infringement) for all four patents-in-suit (Compl. ¶¶36, 42, 48, 54). The complaint notes that in the underlying dispute, USAA has accused Mitek of encouraging and contributing to the infringement of its customers by supplying the MiSnap™ technology and has alleged that the technology has no substantial non-infringing uses (Compl. ¶¶12, 30). Mitek denies having any intent to cause its customers to infringe (Compl. ¶¶38, 44, 50, 56).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of technical mechanism: What is the actual triggering condition for image capture in Mitek's MiSnap™ software? The case will likely depend on evidence, such as source code and expert testimony, establishing whether MiSnap™ performs the specific alignment-determination steps recited in the claims or if it relies on an alternative, non-infringing method, such as achieving a threshold for image focus, stability, or other quality metrics.
- A key legal question will be one of definitional scope: How will the court construe the phrase "determine whether the... check aligns with the alignment guide"? A narrow construction requiring a specific check for edge parallelism may favor Mitek's non-infringement position, while a broader construction covering mere containment within on-screen brackets could present a greater challenge to Mitek's arguments.