Rothschild Digital Confirmation LLC v. Repsly, Inc. DC

Throughout the last few years, prolific inventor and patent plaintiff Leigh M. Rothschild has consistently remained one of the top filers of NPE litigation. 2019 was no different. Last year saw over 160 defendants added to campaigns launched by plaintiffs associated with Rothschild, the campaigns spanning a wide range of technologies and now involving suits filed (and typically litigated in file-and-settle fashion) in myriad districts. A quick glance at the plaintiff’s early 2020 filings suggest that this year will see more of the same.

Rothschild Digital Confirmation, LLC has filed three more cases in its campaign asserting patents generally related to mobile image capture, transmission, and storage. The new defendants are FieldAware (2:17-cv-00635), GoSpotCheck (1:17-cv-02182), and Repsly (1:17-cv-11706), added in Texas, Colorado, and Massachusetts, respectively. Leigh M. Rothschild began this campaign in 2014 in Delaware, accusing banks (Bank of America, Citigroup, JP Morgan Chase, Wells Fargo) and mobile banking application providers, principally Mitek, of infringing four patents. After multiple rulings in inter partes review (IPR) proceedings unfavorable to Rothschild, the prolific plaintiff moved the campaign to the Eastern District of Texas; but now, in the wake of the US Supreme Court’s TC Heartland decision on proper venue in patent cases, the campaign has spread out.

Inventor Leigh M. Rothschild has continued his streak of conceding to venue challenges in Texas, less than a year after largely consolidating his litigation in that state. On July 18 and 24, dockets were opened in the Central District of California and Delaware, respectively, for the cases against ShopStyle (1:17-cv-00978) and Clique Media (2:17-cv-05463) brought by the Rothschild-controlled Product Association Technologies, LLC after the defendants filed motions to dismiss due to improper venue in the Eastern District of Texas cases against them (2:17-cv-00270, 2:17-cv-00265). Product Association also dismissed cases against IAC Search & Media (2:17-cv-00269) and Verizon (Altaba (f/k/a Yahoo), Polyvore, Yahoo Holding) (2:17-cv-00272, 2:17-cv-00268) with prejudice on July 20 after the defendants filed motions to dismiss for improper venue or, in the alternative, to dismiss due to the alleged invalidity of the asserted patent (6,154,738) under Alice. Each of those virtually identical motions was filed on June 26 and alleged that the ‘738 patent is impermissibly directed to the abstract idea of “locating and sending product information in response to a request”.

Oracle (2:17-cv-00013) is the latest defendant to be added to Leigh M. Rothschild’s mobile imaging campaign, joining seven defendants added in late 2016. After multiple earlier setbacks, the campaign’s new complaints focus on claims from a single patent (7,456,872), generally related to mobile image capture, transmission, and storage, not canceled by adverse judgment in a previous inter partes review (brought by Mitek, IPR2015-00624). The Texas plaintiff, Rothschild Digital Confirmation, LLC, targets Oracle’s Field Service, which automates the dispatching of field technicians to service calls, in the new filing.

Leigh M. Rothschild has closed out 2016 with new cases filed in five of his existing campaigns, litigated by controlled subsidiaries Rothschild Patent Imaging LLC; Rothschild Connected Devices Innovations, LLC; Rothschild Broadcast Distribution Systems, LLC; Symbology Innovations, LLC; and Rothschild Digital Confirmation, LLC. With these December suits, Rothschild cements his place, at number two, among the most litigious NPEs for 2016.

Frequent plaintiff Leigh M. Rothschild has transferred one patent (7,456,872) asserted by one of his Florida entities, Rothschild Mobile Imaging Innovation LLC (RMII), to one of his new Texas entities, Rothschild Digital Confirmation, LLC for further assertion in that state. The new owner of the ‘872 patent has filed separate lawsuits against Oracle, FieldOne Systems, Fleetmatic, Intuit, Reachlocal (Kickserv), ServiceMax, Telogis, Verizon (Cellco), and WorkWave. The ‘872 patent generally relates to mobile image capture, transmission, and storage, and the accused products are the defendants’ field service management applications that include image capture. This new phase of the campaign follows a first that saw significant setbacks before the Patent Trial and Appeal Board (PTAB).