Tegris Inc v. Brycer Management Inc

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: 1:23-cv-07744, N.D. Ill., 09/07/2023
• Venue Allegations: Venue is based on Defendant Brycer, LLC having its principal place of business and residing within the Northern District of Illinois.
• Core Dispute: Plaintiff alleges that Defendants’ software-as-a-service product, "The Compliance Engine," infringes a patent related to a web-based system for managing and tracking compliance inspections for safety assets.
• Technical Context: The technology operates in the regulatory compliance software market, specifically addressing the need for property owners, inspection companies, and authorities having jurisdiction (e.g., fire marshals) to collaboratively manage legally mandated safety inspections.
• Key Procedural History: The complaint alleges a long history between the parties, including discussions at industry presentations where Tegris disclosed its pending patent application, a 2012 letter from Tegris's counsel to Brycer's counsel regarding potential infringement, and 2015 acquisition discussions under a non-disclosure agreement. The complaint also notes that during prosecution, the patent-in-suit overcame a 35 U.S.C. § 101 subject matter eligibility rejection, with the USPTO examiner 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 begins operations (approximate, based on "started in 2011")
2012-04-01	Tegris's counsel sends letter to Brycer's counsel regarding potential IP issues (approximate, based on "April 2012")
2015-01-01	Tegris and Brycer enter NDA to discuss potential acquisition (approximate, based on "In 2015")
2021-09-21	U.S. Patent No. 11,126,966 issues
2023-09-07	Complaint filed

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

U.S. Patent No. 11,126,966 - "Systems and Methods for a Web Based Inspection Compliance Registry and Communication Tool" (Issued Sep. 21, 2021)

The Invention Explained

• Problem Addressed: The patent describes a fragmented and inefficient system for tracking fire hydrant inspections, where data is often kept in local, non-communicating silos (e.g., paper files, standalone software) among different stakeholders like fire departments, water purveyors, and private owners. This lack of a centralized, accessible registry creates uncertainty, increases costs, and can lead to fire crews wasting valuable time at malfunctioning hydrants (’966 Patent, col. 2:1-50).
• The Patented Solution: The invention is a web-based platform that acts as a central compliance registry and communication tool. It provides a structured, computer-implemented method for managing the entire inspection lifecycle by connecting three distinct user classes: asset owners, approval authorities, and inspectors (’966 Patent, Abstract; col. 4:10-24). The system automates notifications, facilitates the selection of inspectors, receives inspection data (including from mobile devices), routes reports for approval, and manages the workflow through to completion, creating a unified, augmentable database accessible to all parties (’966 Patent, Fig. 5; col. 8:15-68).
• Technical Importance: The technology provides a specific technical framework for solving the data fragmentation problem in regulated asset management by creating a multi-tenant, workflow-driven online platform (’966 Patent, col. 2:51-67).

Key Claims at a Glance

• The complaint asserts independent claim 8 and dependent claims 9-14 (Compl. ¶40).
• The essential elements of independent claim 8, a computer-implemented method, include:
  • Granting remote access to a web-based registry system running "fire hydrant management software" to at least three user classes: (1) an asset owner, (2) an approval authority, and (3) an inspector.
  • Analyzing records from a database to identify "notification events."
  • Notifying an asset owner of a notification event, with the notice including a description and cost of the inspection.
  • Sending a standard format notice to the approval authority regarding the status of its assigned assets.
  • Upon an owner's selection of an inspector from a qualified list, providing access to a password-controlled website with a web-based template for the inspection.
  • 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

• Defendants' "The Compliance Engine" software-as-a-service offering (Compl. ¶19, ¶41).

Functionality and Market Context

• The complaint alleges "The Compliance Engine" is a system used for managing fire safety inspection reports that moves information between stakeholders (Compl. ¶13). It is described as a method that tracks assets and prompts collaboration between authorities having jurisdiction (AHJs), property owners, and inspection contractors (Compl. ¶34).
• Key alleged functionalities include automatically sending notifications to property owners about required inspections, compelling those inspections, enabling the hiring of contractors, and inputting reports into the system to create a permanent compliance record (Compl. ¶34). The complaint also highlights a feature allowing AHJs to add a fee to each report, creating a revenue stream, which it alleges Brycer copied from Tegris (Compl. ¶31).
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’966 Patent Infringement Allegations

Claim Element (from Independent Claim 8)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A computer-implemented method for using a fire hydrant management software and a web-based registry to track requisite inspection of an owned asset comprising: granting remote access to a web-based registry system... to at least three classes of user... (1) an owner of an asset (2) an approval authority (3) an inspector	The accused system allegedly provides a platform for collaboration between stakeholders, identified as "authorities, asset owners, and professional inspectors."	¶12, ¶34	col. 15:16-29
analyzing the records of assets from the database to identify notification events;	The system is alleged to track assets and automatically send timely notifications to property owners when inspections are needed.	¶34	col. 15:31-32
based on the analysis, notifying an owner of an asset of a notification event, wherein the notice includes a standard format description of the type of inspection, and a cost associated with the type of inspection...	The accused system allegedly sends notifications to inform and remind property owners "what was needed," compelling them to get inspections done.	¶34	col. 15:33-42
based upon the analysis, sending a standard format notice to the approval authority of the status of the assets assigned to the approval authority...	The complaint describes a system that prompts collaboration from "each stakeholder when needed," implying communication with the approval authority.	¶34	col. 15:43-48
upon logging on to a password controlled website... providing to an inspector the owner selects, the selection based upon a list of qualified inspectors... a web-based template configured to describe the asset an each of the steps of the inspection;	The system is alleged to facilitate the hiring of inspection contractors to perform inspection services.	¶34	col. 15:49-59
receiving from the inspector, inspection information in specific response to the web-based template;	The complaint states that inspection contractors' reports "were inputted into the system."	¶34	col. 16:1-3
storing in a database in association with the asset, the inspection information... updating the database in association with the asset based upon the inspection information;	The accused system allegedly gives "everyone a permanent record of compliance" by storing the reports.	¶34	col. 16:4-8
transmitting to the approval authority, a standard format compliance report including noting compliance, wherein the compliance report includes, noting deficiencies in the asset and storing the noted deficiencies in association with the asset.	The complaint alleges a system that moves "fire safety inspection reports between the stakeholders" and provides a "permanent record of compliance."	¶13, ¶34	col. 16:9-13

• Identified Points of Contention:
  • Scope Questions: Claim 8 is repeatedly framed around "fire hydrant management software." A central question may be whether this language limits the claim's scope to software that exclusively or primarily manages fire hydrants. The complaint alleges the accused product handles general "fire safety inspection reports" (Compl. ¶13), which suggests the possibility of a scope mismatch if the claim term is construed narrowly.
  • Technical Questions: Claim 8 requires highly specific functions, such as notifying an owner with an associated "cost" and providing an inspector with a "web-based template." It raises the question of what evidence the complaint or discovery will produce to show that "The Compliance Engine" performs these exact, specific steps as claimed, versus functionally similar but technically distinct operations.

V. Key Claim Terms for Construction

• The Term: "fire hydrant management software"

  • Context and Importance: This term appears in the preamble and body of claim 8. Its construction is critical to the scope of the claim. A narrow construction could place the more general "The Compliance Engine" outside the claim's reach, while a broader construction may support the infringement allegation.
  • Intrinsic Evidence for a Broader Interpretation: The patent specification introduces the fire hydrant as a "non limiting example" and states "any owned asset may be substituted for the fire hydrant" (ʼ966 Patent, col. 2:34-38). The specification also provides a long list of other asset types to which the invention could apply, including fire sprinkler systems, elevators, and bridges (ʼ966 Patent, col. 2:22-34).
  • Intrinsic Evidence for a Narrower Interpretation: The term is used consistently and specifically throughout the patent, including in the title, abstract, and the text of claim 8 itself. The prosecution history, as cited in the complaint, also references the examiner concluding that the claims "use the fire hydrant management software in a specific manner" (Compl. ¶43), which could be argued to reinforce its limiting nature.

• The Term: "approval authority"

  • Context and Importance: This is one of the three mandatory "classes of user" required by claim 8. Infringement requires mapping a user type in the accused system to this role. Practitioners may focus on this term because the specific interactions required between the "approval authority" and the system are a cornerstone of the claimed method.
  • Intrinsic Evidence for a Broader Interpretation: The patent describes the authority functionally as "the organization in charge of ensuring compliance of the owned asset," using a fire marshal as an example (ʼ966 Patent, col. 8:31-34). This functional definition could support a finding that any entity performing an oversight and approval role, such as an "AHJ" in the accused system, meets the limitation (Compl. ¶31).
  • Intrinsic Evidence for a Narrower Interpretation: The claim requires specific actions by the approval authority, such as receiving status notices and reviewing/approving inspections (ʼ966 Patent, col. 15:43-48). A defendant may argue that unless a user in its system performs these specific, discrete steps, it does not qualify as an "approval authority" as defined by the claim as a whole.

VI. Other Allegations

• Indirect Infringement: The complaint does not include a formal count for indirect infringement. However, the allegations state that Brycer provides its system to customers (AHJs, owners, inspectors) who then use it to perform the allegedly infringing steps, which may lay a factual predicate for a future induced infringement claim (Compl. ¶31, ¶34).
• Willful Infringement: The complaint alleges willful infringement based on both pre- and post-suit knowledge. It alleges pre-suit knowledge based on: (1) industry presentations where Tegris informed Brycer of its pending patent application (Compl. ¶22); (2) a specific April 2012 letter from Tegris's counsel to Brycer's counsel concerning potential infringement (Compl. ¶24); and (3) 2015 acquisition discussions under an NDA where the pending patent was an asset discussed (Compl. ¶27). Post-suit willfulness is alleged based on continued infringement after receiving notice of the issued patent (Compl. ¶55).

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

1. A central issue will be one of claim construction and scope: can the term "fire hydrant management software", which is recited throughout the asserted claim, be interpreted broadly enough to read on the accused "The Compliance Engine," a system alleged to manage a wider array of fire safety assets? The outcome of this construction will likely be dispositive for infringement.

2. A second key issue will be patent eligibility under § 101. The complaint preemptively raises the patent’s prosecution history, where an examiner found the invention to be a patent-eligible practical application rather than an abstract idea. The case will likely test whether the court agrees with this assessment or if the defendant can successfully argue that the claims, despite their detail, are directed to the abstract concept of coordinating a compliance process.

3. A third critical question will relate to willfulness. Given the complaint’s detailed factual allegations of long-standing pre-suit knowledge, including a letter between counsel and discussions under an NDA, a key evidentiary battle may focus on whether Brycer’s conduct rises to the level of egregious behavior required to support a finding of willful infringement and potential enhanced damages.