Tegris Inc v. Bryce LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Tegris, Inc. (Washington)
  • Defendant: Brycer, LLC (Delaware) and Brycer Management, Inc. (Illinois)
  • Plaintiff’s Counsel: FisherBroyles, LLP
• Case Identification: 1:22-cv-05741, N.D. Ill., 10/19/2022
• Venue Allegations: Venue is asserted based on Defendant Brycer residing in and having its primary place of business within the Northern District of Illinois.
• Core Dispute: Plaintiff alleges that Defendant’s software platform for managing fire safety inspections, "The Compliance Engine," infringes a patent related to a web-based system for tracking and coordinating asset inspection compliance.
• Technical Context: The technology addresses the market for software systems that automate and centralize the tracking of mandatory fire safety inspections, coordinating communication between property owners, inspection companies, and municipal authorities.
• Key Procedural History: The complaint alleges a long history between the parties, including discussions in 2010 between Plaintiff and an industry association that subsequently partnered with Defendant. Plaintiff also alleges it provided Defendant with notice of its pending patent application at industry events and through legal counsel in 2012, as well as during acquisition discussions under a non-disclosure agreement in 2015. The complaint notes that during prosecution, the patent examiner overcame a subject-matter eligibility rejection under 35 U.S.C. § 101, concluding the claims integrated a method of "organizing human activity" into a "practical application."

Case Timeline

Date	Event
2007-09-04	Earliest Priority Date for ’966 Patent
2011-01-01	Brycer LLC allegedly started its business (approximate)
2012-04-01	Tegris counsel allegedly notified Brycer of pending IP rights (approximate)
2015-01-01	Tegris and Brycer allegedly discussed acquisition under NDA (approximate)
2021-09-21	’966 Patent Issued
2022-10-19	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

• Patent Identification: U.S. Patent No. 11,126,966, SYSTEMS AND METHODS FOR A WEB BASED INSPECTION COMPLIANCE REGISTRY AND COMMUNICATION TOOL, issued September 21, 2021.
• The Invention Explained:
  • Problem Addressed: The patent’s background section describes the fragmented and inefficient state of tracking fire safety asset inspections, particularly for fire hydrants. It notes that data is often stored locally, communication between stakeholders (e.g., fire departments, maintenance crews, property owners) is poor, and records are frequently kept on paper, creating safety risks and operational deficiencies (’966 Patent, col. 1:40 - 2:12).
  • The Patented Solution: The invention proposes a centralized, web-based registry and communication tool that connects distinct classes of users—asset owners, inspectors, and approval authorities—on a single platform. The system is designed to automate the entire compliance lifecycle, from notifying an owner that an inspection is due, to providing a list of qualified inspectors, to receiving and processing the inspection report for approval by an authority, and finally to updating a central database accessible by the users (’966 Patent, Abstract; col. 4:8-21). The goal is to create a unified, global registry to improve data sharing and transparency (’966 Patent, col. 2:13-15).
  • Technical Importance: This approach represents a shift from siloed, manual compliance tracking to an integrated, automated software-as-a-service model for the fire safety industry, intended to improve collaboration, data accuracy, and enforcement of inspection requirements (’966 Patent, col. 10:35-43).
• Key Claims at a Glance:
  • The complaint asserts independent claim 8 and dependent claims 9-14 (Compl. ¶39).
  • Independent Claim 8 recites a computer-implemented method with the following essential elements:
    • Granting remote access to a web-based registry system to at least three classes of user: (1) an asset owner, (2) an approval authority, and (3) an inspector.
    • The system involves retrieving real-time asset records from a database that is accessible and augmentable by the user classes.
    • Analyzing the asset records to identify "notification events."
    • Notifying the asset owner of the event with a standard format notice that includes inspection type and cost.
    • Sending a standard format notice to the approval authority regarding the status of assets assigned to it.
    • Providing a selected inspector with a web-based template for describing the asset and inspection steps.
    • Receiving inspection information from the inspector in response to the template.
    • Storing the inspection information in the database.
    • Transmitting a standard format compliance report, including any noted deficiencies, to the approval authority.

III. The Accused Instrumentality

• Product Identification: The accused instrumentality is Defendant’s "The Compliance Engine" service offering (Compl. ¶40, Prayer for Relief ¶A).
• Functionality and Market Context: The complaint describes The Compliance Engine as a software platform that manages fire and life safety inspection compliance (Compl. ¶29). It is alleged to connect "authorities having jurisdiction ('AHJs')," inspection contractors, and property owners to track assets, prompt collaboration, process reports, and facilitate fee collection (Compl. ¶31, ¶34). The complaint alleges the service is commercially significant, being used in over 650 jurisdictions and generating an estimated annual revenue of at least $35 million (Compl. ¶25, ¶30). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references an attached preliminary infringement claim chart (Exhibit 2) but does not include the exhibit itself (Compl. ¶40). The infringement theory can be summarized from the complaint's narrative allegations.

The complaint alleges that Brycer's "The Compliance Engine" service performs the method of the asserted claims. The central theory is that Brycer's software provides a web-based registry that connects the same three user classes recited in the patent—asset owners, inspectors, and approval authorities (which Tegris equates to "AHJs")—to track and manage inspection compliance (Compl. ¶34, ¶38). The complaint alleges Brycer's system performs the key steps of the claimed method, including tracking assets in a database, sending notifications when inspections are due, providing inspection report templates, transmitting completed reports to an approving authority, and facilitating the compliance workflow (Compl. ¶38, ¶39). The complaint further alleges that Brycer copied specific features, such as a mechanism for AHJs to add their own fee to each report (Compl. ¶31).

• Identified Points of Contention:
  • Scope Questions: Claim 8 is directed to a method using "fire hydrant management software." A primary point of contention may be whether Brycer's "The Compliance Engine," which the complaint suggests can manage various types of assets (Compl. ¶35), falls within the scope of this language. The defense may argue the claim is limited to software exclusively or primarily for fire hydrants, while the plaintiff may point to specification language suggesting the fire hydrant is a non-limiting example (’966 Patent, col. 1:35-39).
  • Technical Questions: A key factual question will be whether the workflow and user roles within "The Compliance Engine" map directly onto the specific steps and user classes recited in claim 8. For example, does the system transmit two distinct notices—one to the owner and a separate "standard format notice" to the "approval authority" regarding asset status—as required by the claim? Any mismatch in the sequence, content, or nature of the automated communications could form the basis of a non-infringement argument.

V. Key Claim Terms for Construction

• The Term: "fire hydrant management software"

• Context and Importance: This term, found in the preamble of independent claim 8, is critical for defining the overall scope of the invention. Its construction will determine whether the patent applies only to systems narrowly focused on fire hydrants or to broader fire safety compliance platforms that include hydrants among other assets.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification includes a disclaimer: "For purposes of a non limiting example a fire hydrant will be used as an owned asset throughout the specification, however it should be readily appreciated that any owned asset may be substituted for the fire hydrant" (’966 Patent, col. 1:35-39).
  • Evidence for a Narrower Interpretation: The claim language itself explicitly uses the term "fire hydrant." Further, the patent's abstract, title, and numerous figures and embodiments are all directed specifically to hydrants (e.g., Figures 7-12, titled "HydrantScout"). A party could argue that this consistent focus, which was before the examiner who allowed the claims as a "practical application," limits the scope to the specific context provided (Compl. ¶42).

• The Term: "approval authority"

• Context and Importance: This term defines one of the three mandatory user classes whose interactions form the core of the claimed method. The infringement analysis will depend on whether the "AHJs" who use the accused Brycer system (Compl. ¶31) function as the claimed "approval authority."

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent does not provide a formal definition, which may support applying the term’s plain and ordinary meaning to any entity, such as a fire marshal or AHJ, that approves compliance inspections.
  • Evidence for a Narrower Interpretation: The claims require the "approval authority" to perform specific actions, such as receiving a "standard format notice" on asset status and later transmitting a "standard format compliance report" after the inspection (’966 Patent, col. 15:37-45; col. 16:6-13). A party could argue that the term is limited to an entity that performs this precise, structured workflow, rather than one that engages in a more general review process.

VI. Other Allegations

• Indirect Infringement: The complaint does not plead a separate count for indirect infringement.
• Willful Infringement: The complaint alleges that Defendant’s infringement has been and continues to be willful, entitling Plaintiff to treble damages (Compl. ¶55). The allegations supporting willfulness are based on alleged pre-suit knowledge, including: notice from Plaintiff's counsel to Defendant's counsel in April 2012 regarding Tegris's intent to enforce its future patent rights (Compl. ¶24); discussions in 2015 between the parties regarding Tegris's assets, including the pending patent application, under an NDA (Compl. ¶27); and notice of the issued patent itself (Compl. ¶54).

VII. Analyst’s Conclusion: Key Questions for the Case

• Patent Eligibility: Given that the patent was allowed by the USPTO as a "practical application" of "organizing human activity," a central legal battle will likely be a renewed challenge to its validity under 35 U.S.C. § 101. A key question for the court will be whether the specific, multi-step workflow coordinating three distinct user classes provides the requisite "inventive concept" to render the claims patent-eligible, or if it is merely an abstract idea of managing compliance using conventional computer functions.

• Claim Scope: The case may turn on a question of definitional scope: can the term "fire hydrant management software", which appears explicitly in the asserted claim, be construed broadly enough to read on "The Compliance Engine," a system that manages compliance for a range of fire safety assets? The outcome of this construction will determine whether the accused product is within the technological scope of the patent.

• Factual Infringement: A key evidentiary question will be one of functional mapping: does the accused "The Compliance Engine" perform each and every step of the claimed method in the recited order? The dispute may focus on subtle but critical differences in the automated workflow, such as the precise content and recipients of system-generated notices, compared to the specific requirements laid out in claim 8.