DCT
6:19-cv-00202
Lupercal LLC v. Plains Capital Bank D
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lupercal LLC (Texas)
- Defendant: Plains Capital Bank (Texas)
- Plaintiff’s Counsel: The Mort Law Firm, PLLC
- Case Identification: 6:19-cv-00202, W.D. Tex., 09/16/2019
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of infringement and maintains regular and established places of business within the Western District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s mobile banking application, which includes a remote check deposit feature, infringes a patent related to a system for submitting media from a user device with preprocessing capabilities.
- Technical Context: The technology at issue is mobile remote deposit capture (RDC), a widely adopted feature in the financial services industry that allows bank customers to deposit checks using their smartphone cameras.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with a notice letter, including a claim chart, on February 25, 2019, establishing a date of alleged pre-suit knowledge of the patent-in-suit. The face of the patent indicates it is subject to a terminal disclaimer. Subsequent to the filing of this complaint, an ex parte reexamination of the patent-in-suit concluded, resulting in the cancellation of all asserted claims.
Case Timeline
| Date | Event |
|---|---|
| 1999-07-21 | ’094 Patent Priority Date |
| 2016-07-05 | ’094 Patent Issue Date |
| 2019-02-25 | Date of Alleged Notice to Defendant |
| 2019-09-16 | Complaint Filing Date |
| 2023-04-26 | ’094 Patent Reexamination Certificate Issued (Cancelling Asserted Claim 42) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,386,094 - "SYSTEM AND METHOD FOR MEDIA SUBMISSION"
- Patent Identification: U.S. Patent No. 9,386,094, titled "SYSTEM AND METHOD FOR MEDIA SUBMISSION", issued July 5, 2016.
The Invention Explained
- Problem Addressed: The patent’s background section describes the process of uploading digital content (e.g., images) to the internet in the late 1990s as a "cumbersome and daunting process" for non-technical users, often requiring separate, complex software like FTP programs. (’094 Patent, col. 1:26-40).
- The Patented Solution: The invention is a web-based media submission tool, such as a browser plug-in or applet, that simplifies this process. It allows a user to select a media file from within a webpage, provides a visual confirmation of the selection, preprocesses the file according to specified parameters (e.g., resizing, reformatting), and transmits it to a server, all within an intuitive, integrated user interface. (’094 Patent, Abstract; col. 2:24-40).
- Technical Importance: The described technology aimed to streamline the submission of user-generated content, a foundational requirement for the growth of interactive web applications like e-commerce listings, online classifieds, and social media. (’094 Patent, col. 1:46-54).
Key Claims at a Glance
- The complaint asserts independent Claim 42. (Compl. ¶13).
- The essential elements of Claim 42 are:
- A computer-implemented method performed by an image submission tool on a user device.
- Causing the tool to generate a visual representation of image(s) to enable a user to determine if they should be replaced.
- Causing the tool to enable a user to enter text information for association with the image(s).
- Causing the tool to pre-process the image(s) to produce pre-processed image(s), with the pre-processing being controlled by parameters received from a device separate from the user device.
- Causing the tool to enable a user to submit the pre-processed image(s).
- Causing the tool to transmit the pre-processed image(s).
- The complaint states infringement of "one or more claims, including Claim 42," reserving the right to assert others. (Compl. ¶13).
III. The Accused Instrumentality
Product Identification
- The Plains Capital Mobile Banking App, available for iOS and Android devices. (Compl. ¶10).
Functionality and Market Context
- The accused functionality is the app's mobile check deposit feature, which allows customers to deposit checks electronically. (Compl. ¶11).
- The user initiates a deposit, takes photos of the front and back of a check, and enters the check amount. (Compl. ¶16). The app displays the captured images, allowing the user to review them for quality and retake them if necessary. (Compl. ¶17). An "Attention" dialog may appear if the app cannot read account data, prompting the user to retake the photo. (Compl. p. 14). After confirming the images and amount, the user submits the transaction, and the app transmits the image data for processing. (Compl. ¶19, p. 13).
- The complaint includes a screenshot of the app's interface prompting the user to "Place your check on a flat surface with a dark background and good lighting." (Compl. p. 9).
- Another screenshot shows the user interface after image capture, with fields for "Deposit To" and "Amount," alongside thumbnails of the front and back check images. (Compl. p. 10).
IV. Analysis of Infringement Allegations
'094 Patent Infringement Allegations
| Claim Element (from Independent Claim 42) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| causing the image submission tool to generate a visual representation of one or more images, the visual representation enabling a user to determine whether the one or more images should be replaced with one or more replacement images; | The app displays the photos of the check front and back, which may be blurry or otherwise undesirable, enabling the user to retake them. An error message may also prompt a retake. | ¶17, p. 14 | col. 2:29-32 |
| causing the image submission tool to enable a user to enter text information for association with the one or more images or the one or more replacement images; | The app enables the user to enter the amount of the check after capturing the images. | ¶16, ¶18 | col. 2:42-45 |
| causing the image submission tool to pre-process the one or more images... the pre-processing by the image submission tool controlled by one or more pre-processing parameters received from a device separate from the user device... | The app pre-processes the front and back images, and this preprocessing is allegedly controlled by parameters received from a server. | ¶19 | col. 5:29-37 |
| causing the image submission tool to enable a user to submit the one or more pre-processed images; | The app presents an "Approve Deposit" dialog, which allows the user to submit the transaction after reviewing the images and entered amount. | ¶19, p. 13 | col. 6:13-20 |
| causing the image submission tool to transmit the one or more pre-processed images. | Upon approval by the user, the app transmits the pre-processed images to be deposited into the user's account. | ¶19 | col. 3:19-21 |
- Identified Points of Contention:
- Technical Questions: The complaint alleges that the app's pre-processing is "controlled by one or more preprocessing parameters received from a device (e.g., a server...)" (Compl. ¶19). A central factual dispute may be whether such parameters are dynamically received from a server for each transaction, or if the pre-processing rules are simply part of the app's static code downloaded from an app store. The complaint does not provide specific evidence of a dynamic, per-transaction exchange of parameters. The screenshot showing an error message, "Cannot read acct. data on bottom of check. Please retake," suggests on-device processing and validation. (Compl. p. 14).
- Scope Questions: The case may turn on how broadly the court construes "parameters received from a device separate from the user device." Does this phrase require real-time communication during the submission process, as suggested by the patent's description of a browser-based tool interacting with a server, or could it be read to cover configuration settings downloaded once when the app is installed or updated?
V. Key Claim Terms for Construction
- The Term: "pre-processing parameters received from a device separate from the user device"
- Context and Importance: This term is the likely crux of the infringement analysis. The Plaintiff must prove that the accused app's pre-processing (e.g., image compression, formatting) is controlled by parameters that are "received" from a separate device (a server). The viability of the infringement claim depends heavily on the definition of "received."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that the specification's description of "configurable parameters" is general and not limited to a specific timing or method of receipt, thereby covering parameters downloaded with the app from the bank's server infrastructure. (’094 Patent, col. 5:32-37).
- Evidence for a Narrower Interpretation: Defendant may argue that the patent’s context, describing a web-based tool like a Java Applet or ActiveX control that is part of a live web page, implies a dynamic, session-specific communication where parameters are passed from the server for a given submission. (’094 Patent, col. 6:38-46). This could support a construction requiring that the parameters be received during the actual check deposit workflow, not just as part of the initial app installation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement, stating that Defendant "encourages its customers to use the Plains Capital Mobile Banking App to practice the claimed methods" by developing, distributing, and promoting the app. (Compl. ¶¶11-13).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge. The complaint asserts that Defendant was put on notice of the ’094 Patent "at least as early as February 25, 2019 when it received a notice letter from [Plaintiff], which included a claim chart." (Compl. ¶14).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of technical operation: does the accused app’s image pre-processing rely on parameters that are dynamically "received from a device separate from the user device" during each deposit session, or are the processing rules self-contained within the application code? The complaint alleges the former but does not provide direct supporting evidence.
- A core issue of claim scope will be the construction of the phrase "parameters received from a device separate from the user device." The outcome will depend on whether this requires a real-time, transactional exchange of data, as might be inferred from the patent's web-based embodiments, or if it can encompass configuration settings downloaded with the application from a server.
- The most significant overarching issue is procedural viability: given that the sole independent claim asserted in the complaint, Claim 42, was cancelled during an ex parte reexamination after the suit was filed, a fundamental question is whether the plaintiff's case has any remaining basis as currently pleaded.