Mitek Systems Inc v. Rothschild Mobile Imaging Innovations LLC

1. Case Identification

• Case #: IPR2015-00624
• Patent #: 7,456,872
• Filed: January 26, 2015
• Petitioner(s): Mitek Systems, Inc.
• Patent Owner(s): Rothschild Mobile Imaging Innovations, LLC
• Challenged Claims: 1-39

2. Patent Overview

• Title: Device and Method for Embedding and Retrieving Information in Digital Images
• Brief Description: The ’872 patent describes a locational image verification device (LIVD) used to verify a user has completed a specific "assignment" at a particular location. The device captures an image and associates it with information such as location, time, date, and user identity, then encrypts and transmits the data for verification.

3. Grounds for Unpatentability

Ground 1: Obviousness over Davis and Steinberg - Claims 1-6, 9-12, 16, 18, 21-24, 27, 28, 30, 31, 34-36, 38, and 39 are obvious over Davis in view of Steinberg.

• Prior Art Relied Upon: Davis (Application # 2002/0001395) and Steinberg (Patent 6,433,818).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Davis disclosed the core of a "locational image verification device," teaching a digital camera that receives an "assignment" (e.g., operating parameters for a photo session) tied to specific GPS locations. Davis’s camera further included modules for determining location and time, processing data, and encrypting the image file and associated metadata. However, Davis did not explicitly disclose a "user verification module" that enables device operation. Petitioner asserted that Steinberg remedied this deficiency by disclosing a digital camera with a user verification function (e.g., password or biometric check) that, upon successful verification, enables camera operations.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Steinberg's user verification functionality with Davis's system to achieve the predictable result of enhanced security. This addition would directly support Davis's stated goal of preventing photographers from tampering with metadata associated with an image. Adding a user authentication step before allowing operation of a sensitive data-capturing device was presented as a common-sense improvement.
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved integrating a known security feature (user verification) into a digital camera system, a straightforward modification for improving data integrity.

Ground 2: Obviousness over Davis, Steinberg, and Steinberg ’902 - Claims 7, 13, 25, 26, and 29 are obvious over Davis and Steinberg in view of Steinberg ’902.

• Prior Art Relied Upon: Davis (Application # 2002/0001395), Steinberg (Patent 6,433,818), and Steinberg ’902 (Patent 6,750,902).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that certain dependent claims required features not found in the primary combination. Specifically, Steinberg ’902 disclosed a digital camera that could receive operational data, such as a map showing where to take a picture, and display it to the user. This taught the limitation of claim 7 ("displays geographic directions"). Steinberg ’902 also taught generating a unique sequence number for each image to make it uniquely identifiable, addressing a limitation of claim 13.
  • Motivation to Combine: A POSITA would be motivated to add the features of Steinberg ’902 to the Davis/Steinberg system to improve its functionality and user interface. Since the Davis camera already included a display and processed GPS location data for assignments, adding a map display for directions was a logical and minor enhancement. Similarly, adding a unique sequence number was a well-known method for organizing and tracking images.
  • Expectation of Success: The proposed modifications were simple, predictable enhancements to the base system, with a clear expectation of success.

Ground 3: Obviousness over Davis, Steinberg, and Terp - Claim 14 is obvious over Davis and Steinberg in view of Terp.

• Prior Art Relied Upon: Davis (Application # 2002/0001395), Steinberg (Patent 6,433,818), and Terp (WO 2001/31546).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner addressed claim 14, which added a "scanning module for scanning information to be associated with the digital image file." Petitioner asserted that Terp disclosed this element. Terp described a portable inventory device that included both an image scanner (for barcodes, VINs) and a digital camera. In Terp, a user first scanned an identifier and was then prompted to photograph the corresponding item, with the scanned data being associated with the captured image.
  • Motivation to Combine: A POSITA would be motivated to incorporate Terp's scanning module into the Davis/Steinberg device to provide a more efficient and accurate method for data input compared to manual entry, which is described as cumbersome and error-prone. This would streamline the process of associating verifiable data (like a product barcode) with a captured image for an assignment.
  • Expectation of Success: Combining a scanner and a camera in a single portable device was a known and practical approach, ensuring a high expectation of success in creating a more versatile data capture tool.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations using Fukunaga (Patent 7,502,133) for symbology reading, Knowles (Patent 7,173,651) for audible user prompts, and Dodge (Patent 7,266,544) for verifying task completion.

4. Key Claim Construction Positions

• "user verification module": Petitioner argued that this term from claim 1 should be construed broadly. The patent specification did not describe a single module that both verifies a user and provides an assignment. Therefore, Petitioner contended the term should not be limited to a single component performing both functions, but should be interpreted to cover a system where a module performs verification and enables operation, while other features may provide the assignment. This broad construction was argued as necessary for the prior art to meet the claim limitations.

5. Key Technical Contentions (Beyond Claim Construction)

• Effective Priority Date: Petitioner contended that the earliest possible priority date for all challenged claims (1-39) was February 4, 2005, the filing date of the application that issued as the ’872 patent. Petitioner argued that the key "assignment" limitation, central to independent claims 1 and 27, lacked written description support in any of the earlier-filed parent applications. This argument was critical to establishing that several key references, including Davis and Terp, qualified as prior art under pre-AIA 35 U.S.C. §102(b).

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-39 of the ’872 patent as unpatentable.