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`USPTO Assignments on the Web
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`United States Patent and Trademark Office
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`Home|Site Index|Search|Guides|Contacts|eBusiness|eBiz alerts|News|Help
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`Assignments on the Web > Patent Query
`
`Patent Assignment Abstract of Title
`NOTE:Results display only for issued patents and published applications. For pending
`or abandoned applications please consult USPTO staff.
`
`Issue Dt: 08/08/2000
`
`Application #: 08922926
`
`Total Assignments: 6
`Patent #: 6101534
`Inventor: LEIGH M. ROTHSCHILD
`Title: INTERACTIVE, REMOTE, COMPUTER INTERFACE SYSTEM
`Assignment: 1
`Reel/Frame: 012083/0623
`Recorded: 08/13/2001
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Exec Dt: 08/07/2001
`Assignor: ROTHSCHILD, LEIGH M.
`Assignee: LINN, JAY HOWARD (AS TRUSTEE OF IRREVOCABLE TRUST AGREEMENT "NUMBER 1" DATED OCTOBER 8, 1997)
`
`Filing Dt: 09/03/1997
`
`Pages: 2
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`1108 KANE CONCOURSE, SUITE 310
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`MIAMI, FLORIDA 33154
`
`Correspondent: AKERMAN, SENTERFITT & EIDSON
`
`ROBERT J. SACCO
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`222 LAKEVIEW AVENUE, 4TH FLOOR
`
`P.O. BOX 3188
`
`WEST PALM BEACH, FLORIDA 33402-3188
`Assignment: 2
`Reel/Frame: 012083/0609
`Recorded: 08/13/2001
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Assignor: LINN, JAY HOWARD (AS TRUSTEE OF IRREVOCABLE TRUST AGREEMENT
`"NUMBER I" DATED OCTOBER 8, 1997)
`Assignee: TRUST LICENSING, LLC
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`Pages: 2
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`Exec Dt: 08/09/2001
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`SUITE 310
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`1108 KANE CONCOURSE
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`MIAMI, FLORIDA 33154
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`Correspondent: AKERMAN SENTERFITT & EIDSON
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`ROBERT J. SACCO
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`222 LAKEVIEW AVENUE - 4TH FLOOR
`
`P.O. BOX 3188
`
`WEST PALM BEACH, FL 33402-3188
`Assignment: 3
`Reel/Frame: 017681/0519
`Recorded: 03/29/2006
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Assignor: TRUST LICENSING, LLC
`Assignee: ROTHSCHILD TRUST HOLDINGS, LLC
`
`Pages: 2
`
`Exec Dt: 03/24/2006
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`http://assignments.uspto.gov/assignments/q?db=pat&qt=pat&reel=&frame=&pat=6101534&pub=&asnr=&asnri=&asne=&asnei=&asns=[6/28/2014 6:14:26 PM]
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`Case 1:14-cv-22134-DMM Document 15-1 Entered on FLSD Docket 07/16/2014 Page 11 of
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`19333 COLLINS AVENUE, #2501
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`SUNNY ISLES BEACH, FLORIDA 33160
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`Correspondent: ANTHONY J. CASELLA, ESQ.
`
`CASELLA & HESPOS LLP
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`274 MADISON AVENUE
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`SUITE 1703
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`NEW YORK, NY 10016
`Assignment: 4
`Reel/Frame: 022584/0246
`Recorded: 04/23/2009
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Assignor: ROTHSCHILD TRUST HOLDINGS, LLC
`Assignee: LMR INVENTIONS, LLC
`
`Pages: 2
`
`Exec Dt: 04/17/2009
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`19333 COLLINS AVENUE, #2501
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`SUNNY ISLES BEACH, FLORIDA 33160
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`Correspondent: CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
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`950 PENINSULA CORPORATE CIRCLE
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`SUITE 3020
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`BOCA RATON, FL 33487
`Assignment: 5
`Reel/Frame: 026533/0342
`Recorded: 06/30/2011
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Assignor: LMR INVENTIONS, LLC
`Assignee: SRR PATENT HOLDINGS, LLC
`
`Pages: 4
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`Exec Dt: 06/30/2011
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`19333 COLLINS AVENUE #2501
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`SUNNY ISLES BEACH, FLORIDA 33160
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`Correspondent: DA VINCI INTELLECTUAL PROPERTY
`
`2851 N. BURLING ST UNIT 1S
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`CHICAGO, IL 60657
`Assignment: 6
`Reel/Frame: 030974/0338
`Recorded: 08/09/2013
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Assignor: SRR PATENT HOLDINGS, LLC
`Assignee: ROTHSCHILD DIGITAL MEDIA INNOVATIONS, LLC
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`Pages: 3
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`Exec Dt: 08/07/2013
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`19333 COLLINS AVENUE #2501
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`SUNNY ISLES BEACH, FLORIDA 33160
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`Correspondent: ATANU DAS
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`2851 N BURLING ST UNIT 1S
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`CHICAGO, IL 60657
`
`Search Results as of: 06/28/2014 09:12 PM
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`http://assignments.uspto.gov/assignments/q?db=pat&qt=pat&reel=&frame=&pat=6101534&pub=&asnr=&asnri=&asne=&asnei=&asns=[6/28/2014 6:14:26 PM]
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`Case 3:14-cv-00819-GPC-NLS Document 1 Filed 04/07/14 Page 1 of 8Case 1:14-cv-22134-DMM Document 15-1 Entered on FLSD Docket 07/16/2014 Page 13 of
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`The Markow Law Group
`Gregory S. Markow (Cal. Bar No. 216748)
`E-mail: gsm@markowlaw.com
`600 West Broadway, Suite 700
`San Diego, CA 92101
`Telephone: 619.500.3644
`Facsimile: 619.272.7090
`Attorneys for Plaintiff
`Rothschild GPS Sharing Innovations, LLC
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`'14CV0819
`GPC
`NLS
`Case No. _______________
`_____________________________________________
`ROTHSCHILD GPS SHARING
`INNOVATIONS, LLC,
`COMPLAINT FOR PATENT
`INFRINGEMENT
`Plaintiff,
`
`vs.
`NISSAN NORTH AMERICA, INC.,
` Defendant.
`
`DEMAND FOR JURY TRIAL
`
`Judge:
`
`COMPLAINT
`
`Plaintiff Rothschild GPS Sharing Innovations, LLC for its Complaint for patent
`
`infringement against Defendant Nissan North America, Inc. alleges as follows:
`
`NATURE OF THE LAWSUIT
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`1.
`
`This is a claim for patent infringement arising under the patent laws of the
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`United States, Title 35 of the United States Code.
`
`PARTIES
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`2.
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`Plaintiff Rothschild GPS Sharing Innovations, LLC (“Rothschild GPS Sharing
`
`Innovations”) is a Florida corporation with its principal place of business at 1108 Kane
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`Concourse, Suite #310, Bay Harbor Islands, FL 33154.
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`3.
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`Rothschild GPS Sharing Innovations is the owner of record and assignee of US
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`Patent No. 7,917,285 (“the ‘285 Patent”). Rothschild GPS Sharing Innovations has and has
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`had the exclusive right to enforce and collect damages for infringement of the ‘285 Patent
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`during all relevant time periods. One of the principal investors in Rothschild GPS Sharing
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`Innovations is Leigh Rothschild, who was the sole inventor of the ‘285 Patent.
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`4.
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`On information and belief, Defendant Nissan North America, Inc. (“Nissan”) is
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`organized and existing under the laws of the State of California, having its principal place of
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`business at One Nissan Way, Franklin, TN 37067 and having a place of business in
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`numerous locations in this District, including one at 9800 Campus Point Drive, San Diego,
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`CA 92121. Nissan’s registered agent in California is: Corporation Service Company d/b/a
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`CSC – Lawyers Incorporating Service at 2710 Gateway Oaks Dr., Suite 150N, Sacramento,
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`CA, 95833.
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`JURISDICTION AND VENUE
`
`5.
`
`This is a civil action for patent infringement arising under the Patent Laws of
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`the United States, 35 U.S.C. § 1, et seq., and more particularly 35 U.S.C. § 271.
`
`6.
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`This Court has jurisdiction over the subject matter of this action under 28
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`U.S.C. §§ 1331 and 1338(a).
`
`7.
`
`Personal jurisdiction over the defendant is proper under C.C.P. § 410.10 and
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`the United States Constitution because this action arises from the Defendant’s commission of
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`at least (a) transacting business and (b) committing the complained of tortious acts within
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`this jurisdiction and because Defendant is incorporated in California.
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`8.
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`Venue is proper in this District under 28 U.S.C. §§ 1391 (b), (c) and 1400(b).
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`THE PATENT-IN-SUIT
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`9.
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`On March 29, 2011, the ‘285 Patent, entitled “Device, System and Method for
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`Remotely Entering, Storing and Sharing Addresses for a Positional Information Device” was
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`duly and legally issued by the United States Patent and Trademark Office. A true and
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`correct copy of the ‘285 Patent is attached as Exhibit A.
`
`10.
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`The ‘285 Patent was previously assigned to Qaxaz LLC and has been asserted
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`in two previous patent infringement lawsuits, resulting in nine licensees of the ‘285 patent.
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`These previous actions include: Qaxaz LLC v. BMW of North America LLC. et al, Case No.
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`11 CV 00491, (D. Del.) and Qaxaz LLC v. Alpine Electronics of America, Inc. et al, Case
`
`No. 11 CV 00491, (D. Del.). The defendants in those actions included major automobile
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`manufacturers such as BMW, Ford, GM, Mercedes-Benz, and Toyota.
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`Nissan’s Knowledge Of The ‘285 Patent, How It Is Infringed,
`And Continued Infringement Despite That Knowledge
`
`11.
`
`Nissan has been aware of the ‘285 Patent no later than approximately October
`
`11, 2013, when a letter dated October 8, 2013 was delivered by Federal Express to Nissan.
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`The letter identified the ‘285 Patent and also included a claim chart setting forth Rothschild
`
`GPS Sharing Innovations’ contention of infringement of claim 1 of the ‘285 Patent, thereby
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`making Nissan aware of the activities that constitute infringement.
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`12.
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`In addition to the October 11, 2013 letter and claim chart, this Complaint
`
`serves as additional notice to Nissan of the ‘285 Patent and the manner in which it is
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`infringed.
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`13.
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`Rothschild GPS Sharing Innovations, through counsel, has corresponded with
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`Nissan several times since the October 11, 2013 letter (including phone calls and or emails in
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`October, November, December, January, and February), but Nissan has not agreed to license
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`the ‘285 Patent and has not explained why a license is not necessary.
`
`14. With knowledge of the ‘285 Patent and knowledge of the manner in which the
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`‘285 Patent is infringed, Nissan has continued to produce and distribute systems, including at
`
`least the NissanConnect™ and Infiniti Connection™ systems discussed below that infringe
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`the ‘285 Patent.
`
`15.
`
`Nissan manufactures, sells, and imports automobiles under both the Nissan and
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`Infiniti brands. On information and belief, Infiniti is a brand owned by and a division of
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`Nissan’s parent company Nissan Motor Company, Ltd.
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`16.
`
`In some of the automobiles it manufactures and sells, Nissan offers an option
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`called “NissanConnect™” or “Infiniti Connection™” that enables users to remotely connect
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`with their automobiles, including a feature that enables users to find locations/destinations
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`using a desktop computer and/or a mobile application and send the locations/destinations to
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`the navigation systems in their automobiles.
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`17.
`
`On information and belief, Nissan owns or controls the NissanConnect™ and
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`Infiniti Connection™ servers. These servers receive a request for an address of a location
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`not already stored in a positional information device, determine the address and transmit the
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`determined address to the positional information device (i.e., a Nissan or Infiniti car with a
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`navigation system).
`
`18.
`
`In light of its knowledge of the ‘285 Patent, knowledge of the manner in which
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`it is infringed, and refusal to license the ‘285 Patent, Nissan was objectively reckless in
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`continuing to engage in actions that directly and indirectly infringe the ‘285 Patent. Nissan
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`knew or should have known that there was an objectively high likelihood that its actions
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`constituted infringement of a valid patent.
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`COUNT I: DIRECT INFRINGEMENT OF THE ‘285 PATENT
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`19.
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`Rothschild GPS Sharing Innovations incorporates by reference the allegations
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`set forth in paragraphs 1 through 18 of this Complaint as though set forth fully herein.
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`20.
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`By making, using, selling, or offering for sale in this District and elsewhere in
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`the United States, without authorization or license from Rothschild GPS Sharing
`
`Innovations, products or systems covered by one or more claims of the ‘285 Patent,
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`Defendant Nissan has been and is currently infringing the ‘285 Patent directly in violation of
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`35 U.S.C. § 271(a).
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`21.
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`Nissan has and controls a server computer and makes, uses, sells, and offers for
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`sale a positional information device (e.g., the in car navigation unit), that together meet each
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`and every element of one or more of the claims in the ‘285 patent, resulting in direct
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`infringement of the ‘285 patent.
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`22.
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`23.
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`Nissan’s conduct is willful and deliberate.
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`As a direct and proximate result of Nissan’s acts, Rothschild GPS Sharing
`
`Innovations has been and continues to be injured, has sustained, and will continue to sustain,
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`substantial damages in an amount not yet determined.
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`COUNT II: INDUCING INFRINGEMENT OF THE ‘285 PATENT
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`24.
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`Rothschild GPS Sharing Innovations incorporates by reference the allegations
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`set forth in paragraphs 1 through 18 and 19 through 23 of this Complaint as though set forth
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`fully herein.
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`25.
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`Nissan, through previous correspondence from Rothschild GPS Sharing
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`Innovations, and based upon this Complaint, is actually aware of the ‘285 patent and the acts
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`that constitute infringing conduct.
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`26. With knowledge of the ‘285 patent and knowledge of the acts that constitute
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`infringement of the ‘285 patent, Nissan acted with the specific intent to induce the direct
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`infringement of the ‘285 patent.
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`27.
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`Specific acts undertaken by Nissan to induce infringement of the claims of the
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`‘285 patent include: (1) producing and selling positional information devices (e.g., in-vehicle
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`navigation units) that can receive addresses remotely; (2) producing and distributing a
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`mobile application that enables individuals to send addresses to their vehicles; (3)
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`maintaining and controlling a website that enables individuals to send addresses to their
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`vehicles; and (4) expressly encouraging or instructing individuals to search for an address
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`and send it to their vehicles.
`
`28.
`
`Nissan’s customers directly infringe the ‘285 Patent when they use the claimed
`
`system by putting the system into service (e.g., by remotely requesting an address and
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`sending it to their vehicles) thereby controlling the system as a whole and obtaining a benefit
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`from it (e.g., the address is sent to the customers’ vehicles).
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`29.
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`Nissan is liable to Rothschild GPS Sharing Innovations for inducing
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`infringement of the ‘285 Patent, in violation of 35 U.S.C. § 271(b).
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`30.
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`Nissan’s conduct is willful and deliberate.
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`31.
`
`As a direct and proximate result of Nissan’s acts, Rothschild GPS Sharing
`
`Innovations has been and continues to be injured, has sustained, and will continue to sustain,
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`substantial damages in an amount not yet determined.
`
`REQUEST FOR RELIEF
`
`WHEREFORE, Rothschild GPS Sharing Innovations requests that this Court enter
`
`judgment:
`
`A. Adjudging, finding and declaring that Nissan has directly infringed and indirectly
`
`infringed (via induced infringement) the asserted claims of the Patent-In-Suit under
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`35 U.S.C. § 271;
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`B. Adjudging, finding and declaring that infringement by Nissan is willful and
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`deliberate;
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`C. Ordering Nissan to pay Rothschild GPS Sharing Innovations an amount that, as
`
`adequately as possible, compensates Rothschild GPS Sharing Innovations for
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`infringement by Nissan, in no event less than a reasonable royalty fee;
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`D. Ordering Nissan to pay court costs, pre-judgment interest, post-judgment interest, and
`
`attorneys’ fees under 35 U.S.C. §§ 284 and 285;
`
`E. Finding that this is an “exceptional” case pursuant to 35 U.S.C. § 285, and awarding
`
`enhanced damages up to and including treble the amount of damages and the payment
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`of attorneys’ fees; and
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`F. Granting Rothschild GPS Sharing Innovations such other and further relief as is just
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`and proper, or as the Court deems appropriate.
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`JURY DEMAND
`
`Rothschild GPS Sharing Innovations demands a trial by jury on all issues that may be
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`so tried.
`
`Dated: April 7, 2014
`
`Respectfully submitted,
`
`/s/ Gregory Markow
`
`Gregory S. Markow (Cal. Bar No. 216748)
`E-mail: gsm@markowlaw.com
`600 West Broadway, Suite 700
`San Diego, CA 92101
`Telephone: 619.500.3644
`Facsimile: 619.272.7090
`
`David Berten (IL Bar No. 6200898)
`(pro hac vice to be filed)
`E-mail: dberten@giplg.com
`Alexander Debski (IL Bar No. 6305715)
`(pro hac vice to be filed)
`E-mail: adebski@giplg.com
`Global IP Law Group, LLC
`233 South Wacker Drive, 92nd Floor
`Chicago, IL 60606
`T: (312) 241-1500
`F: (312) 241-1522
`
`Attorneys for Plaintiff Rothschild GPS
`Sharing Innovations, LLC.
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`APPENDIX 4
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`APPENDIX 5
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`APPENDIX 6
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`Case 1:14-cv-00617-SLR Document 1 Filed 05/16/14 Page 1 of 12 PageID #: 1Case 1:14-cv-22134-DMM Document 15-1 Entered on FLSD Docket 07/16/2014 Page 30 of
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`C.A. No. _____
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`ROTHSCHILD MOBILE IMAGING
`INNOVATIONS, LLC
`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`MITEK SYSTEMS, INC.
`
`
`
`
`
`
`
`
`
`
`
`Defendant.
`
`
`
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`FOR PATENT INFRINGEMENT AND JURY DEMAND
`
`Plaintiff Rothschild Mobile Imaging Innovations, LLC (“RMII”), by and through its
`
`
`
`
`undersigned counsel, files this Original Complaint for patent infringement against Defendant
`
`Mitek Systems, Inc. (“Mitek”).
`
`THE PARTIES
`
`1.
`
`RMII is a limited liability company having a principal place of business at 1108
`
`Kane Concourse, Suite 310, Bay Harbor Islands, Florida 33154.
`
`2.
`
`Upon information and belief, Mitek is a Delaware corporation having its principal
`
`place of business at 8911 Balboa Avenue, Suite B, San Diego, California 92123.
`
`3.
`
`Upon information and belief, Mitek does business throughout the United States,
`
`including in the State and District of Delaware.
`
`JURISDICTION AND VENUE
`
`4.
`
`This action arises under the Patent Laws of the United States, 35 U.S.C. §§ 1 et
`
`seq. This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and
`
`1338(a).
`
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`FOR PATENT INFRINGEMENT AND JURY DEMAND
`
` Page 1
`
`

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`5.
`
`This Court has general personal jurisdiction over Mitek in part because Mitek has
`
`sufficient minimum contacts with the forum as a result of business conducted within the State
`
`and District of Delaware. Upon information and belief, Mitek is incorporated in and under the
`
`laws of the State of Delaware. This Court has specific personal jurisdiction over Mitek in part
`
`because of Mitek’s voluntary conduct in unauthorized making, using, selling, offering to sell
`
`within, or importing into, the State and District of Delaware, infringing products and services,
`
`directly, indirectly and/or by inducement. Upon information and belief, Mitek provides services
`
`and sells products in this District separately, with, and/or for other infringers that are also
`
`incorporated under the laws of the State of Delaware.
`
`6.
`
`Venue is proper in this Court under 28 U.S.C. §§ 1391(b), (c) and (d), and
`
`1400(b), because, upon information and belief, Mitek is incorporated under the laws of the State
`
`of Delaware and is subject to personal jurisdiction in the District of Delaware.
`
`THE PATENTS-IN-SUIT
`
`7.
`
`United States Patent No. 7,450,163, titled “Device and Method for Embedding
`
`and Retrieving Information in Digital Images” (“’163 patent”), was duly and legally issued by
`
`the United States Patent and Trademark Office on November 11, 2008, to Leigh M. Rothschild.
`
`8.
`
`RMII is the owner of all rights, title, and interest in and under the ’163 patent,
`
`with full right to bring suit to enforce the patent, including the right to recover for past
`
`infringement damages. The ’163 patent is valid and enforceable. A true and correct copy of the
`
`’163 patent is attached as Exhibit A.
`
`9.
`
`United States Patent No. 7,456,872, titled “Device and Method for Embedding
`
`and Retrieving Information in Digital Images” (“’872 patent”), was duly and legally issued by
`
`the United States Patent and Trademark Office on November 25, 2008, to Leigh M. Rothschild.
`
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`FOR PATENT INFRINGEMENT AND JURY DEMAND
`
` Page 2
`
`

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`10.
`
`RMII is the owner of all rights, title, and interest in and under the ’872 patent,
`
`with full right to bring suit to enforce the patent, including the right to recover for past
`
`infringement damages. The ’872 patent is valid and enforceable. A true and correct copy of the
`
`’872 patent is attached as Exhibit B.
`
`11.
`
`United States Patent No. 7,991,792, titled “System and Method for Embedding
`
`Symbology in Digital Images and Using the Symbology to Organize and Control the Digital
`
`Images” (“’792 patent”), was duly and legally issued by the United States Patent and Trademark
`
`Office on August 2, 2011, to Leigh M. Rothschild.
`
`12.
`
`RMII is the owner of all rights, title, and interest in and under the ’792 patent,
`
`with full right to bring suit to enforce the patent, including the right to recover for past
`
`infringement damages. The ’792 patent is valid and enforceable. A true and correct copy of the
`
`’792 patent is attached as Exhibit C.
`
`13.
`
`United States Patent No. 7,995,118, titled “Device and Method for Embedding
`
`and Retrieving Information in Digital Images” (“’118 patent”), was duly and legally issued by
`
`the United States Patent and Trademark Office on August 9, 2011, to Leigh M. Rothschild.
`
`14.
`
`RMII is the owner of all rights, title, and interest in and under the ’118 patent,
`
`with full right to bring suit to enforce the patent, including the right to recover for past
`
`infringement damages. The ’118 patent is valid and enforceable. A true and correct copy of the
`
`’118 patent is attached as Exhibit D.
`
`
`
`MITEK’S INFRINGING CONDUCT
`
`15.
`
`On information and belief, Mitek has been infringing and continues to infringe the
`
`patents-in-suit, directly, indirectly and/or by inducement, by unauthorized making, using, selling,
`
`offering for sale within, and/or importing into, the United States, certain mobile imaging
`
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`FOR PATENT INFRINGEMENT AND JURY DEMAND
`
` Page 3
`
`

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`products and services (“Infringing Mobile Imaging Instrumentalities”) that fall within the scope
`
`of one or more claims of the patents-in-suit, literally or equivalently pursuant to the doctrine of
`
`equivalents. On information and belief, the Infringing Mobile Imaging Instrumentalities include,
`
`but are not limited to, Mitek’s Mobile Deposit, Mobile Photo Bill Pay, Mobile Photo Account
`
`Opening, Mobile Photo Payments, Mobile Photo Balance Transfer, Mobile Photo Account
`
`Funding, Mobile Insurance Quote and Mobile Imaging Platform, and the use thereof.
`
`16.
`
`The incorporation of RMII’s patented technology into the Infringing Mobile
`
`Imaging Instrumentalities has enabled Mitek to offer improved products and services for mobile
`
`imaging and data transfer to third-party customers, including but are not limited to many of the
`
`largest banks in the United States and the world.
`
`17.
`
`On information and belief, Mitek purports to have “pioneered in 2008 . . . mobile
`
`imaging software . . . that allows users to remotely deposit checks, pay their bills, get insurance
`
`quotes, and transfer credit card balances by snapping a picture with their camera-equipped
`
`smartphones and tablets,” and has filed at least one lawsuit alleging infringement of its Mobile
`
`Deposit patents. RMII’s ’163, ’872, ’792 and ’118 patents pre-date Mitek’s Mobile Deposit
`
`patents by at least three years.
`
`18.
`
`On information and belief, Mitek transacts business with third parties, including
`
`but not limited to third party manufacturers, distributors, importers, financial institutions, banks,
`
`insurance companies, licensees, consumers, and/or customers, who make, buy, use, sell, offer for
`
`sale, resell, practice, and/or import Infringing Mobile Imaging Instrumentalities within and/or
`
`into the United States, including the State of Delaware.
`
`
`
`
`
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`FOR PATENT INFRINGEMENT AND JURY DEMAND
`
` Page 4
`
`

`

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`
`COUNT I — PATENT INFRINGEMENT OF U.S. PATENT 7,450,163
`
`19.
`
`20.
`
`Paragraphs 1 through 18 are incorporated by reference as if fully stated herein.
`
`On information and belief, Mitek has been infringing and continues to infringe the
`
`’163 patent under 35 U.S.C. § 271(a) by making, using, selling, offering for sale within, and/or
`
`importing into, the United States, Infringing Mobile Imaging Instrumentalities that fall within the
`
`scope of one or more claims of the ’163 patent, literally or under the doctrine of equivalents,
`
`without authority.
`
`21.
`
`On information and belief, Mitek had knowledge of the ’163 patent and the
`
`allegations of infringement at least since filing of this lawsuit, when Mitek was placed on actual
`
`notice of infringement.
`
`22.
`
`On information and belief, since at least the date Mitek had notice of
`
`infringement, Mitek has actively induced and continues to induce infringement of the ’163
`
`patent, under 35 U.S.C. § 271(b), by and through third parties, including but not limited to third
`
`party manufacturers, distributors, importers, financial institutions, banks, insurance companies,
`
`licensees, consumers, and/or customers, who make, buy, use, sell, offer for sale, resell, practice,
`
`and/or import Infringing Mobile Imaging Instrumentalities that fall within the scope of one or
`
`more claims of the ’163 patent, literally or under the doctrine of equivalents, without authority,
`
`within and/or into the United States, including the District of Delaware, and thereby infringe the
`
`’163 patent. Mitek’s acts of active inducement by and through third parties have been committed
`
`with knowledge, or at least with willful blindness that the induced acts constitute infringement of
`
`the ’163 patent. On information and belief, Mitek intends to cause, and has taken affirmative
`
`steps to induce infringement by and through third parties by, inter alia, advertising and
`
`marketing the infringing use of Infringing Mobile Imaging Instrumentalities, creating
`
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`FOR PATENT INFRINGEMENT AND JURY DEMAND
`
` Page 5
`
`

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`distribution channels for Infringing Mobile Imaging Instrumentalities within and into the United
`
`States, adapting Infringing Mobile Imaging Instrumentalities to conform with U.S. laws and
`
`regulations, providing instructions and technical support for the installation, use, operation, and
`
`maintenance of Infringing Mobile Imaging Instrumentalities in the United States.
`
`23.
`
`As a direct and proximate result of Mitek’s acts of patent infringement, including
`
`but not limited to direct, inducing, and indirect infringement of the ’163 patent, RMII has been
`
`and continues to be injured and has sustained and will continue to sustain substantial damages in
`
`an amount not presently known.
`
`COUNT II — PATENT INFRINGEMENT OF U.S. PATENT 7,456,872
`
`24.
`
`25.
`
`Paragraphs 1 through 18 are incorporated by reference as if fully stated herein.
`
`On information and belief, Mitek has been infringing and continues to infringe the
`
`’872 patent under 35 U.S.C. § 271(a) by making, using, selling, offering for sale within, and/or
`
`importing into, the United States, Infringing Mobile Imaging Instrumentalities that fall within the
`
`scope of one or more claims of the ’872 patent, literally or under the doctrine of equivalents,
`
`without authority.
`
`26.
`
`On information and belief, Mitek had knowledge of the ’872 patent and the
`
`allegations of infringement at least since filing of this lawsuit, when Mitek was placed on actual
`
`notice of infringement.
`
`27.
`
`On information and belief, since at least the date Mitek had notice of
`
`infringement, Mitek has actively induced and continues to induce infringement of the ’872
`
`patent, under 35 U.S.C. § 271(b), by and through third parties, including but not limited to third
`
`party manufacturers, distributors, importers, financial institutions, banks, insurance companies,
`
`licensees, consumers, and/or customers, who make, buy, use, sell, offer for sale, resell, practice,
`
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`FOR PATENT INFRINGEMENT AND JURY DEMAND
`
` Page 6
`
`

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`and/or import