DCT
1:18-cv-02384
Secure Cam LLC v. FingerTec USA LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Secure Cam, LLC (Wyoming)
- Defendant: Fingertec USA, LLC (New York)
- Plaintiff’s Counsel: Nicholas Ranallo, Attorney at Law; Brandt Law Firm
- Case Identification: Secure Cam, LLC v. Fingertec USA, LLC, 1:18-cv-02384, E.D.N.Y., 04/23/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of New York because Defendant resides in New York, maintains a principal place of business within the district, employs personnel in the district, and has committed the alleged acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s face recognition and license plate recognition systems infringe four patents related to automatically generating tags to categorize digital images at the time of capture.
- Technical Context: The technology concerns on-device image analysis, where a camera or similar device automatically assigns metadata or tags to an image during the capture process to facilitate later sorting and retrieval.
- Key Procedural History: The complaint does not allege any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 1998-07-23 | Earliest Priority Date for all Patents-in-Suit |
| 2013-01-08 | U.S. Patent No. 8,350,928 Issued |
| 2013-09-10 | U.S. Patent No. 8,531,555 Issued |
| 2014-09-16 | U.S. Patent No. 8,836,819 Issued |
| 2016-06-07 | U.S. Patent No. 9,363,408 Issued |
| 2018-04-23 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,531,555 - "Method and Apparatus for Automatically Categorizing Images in a Digital Camera"
- Patent Identification: U.S. Patent No. 8,531,555, "Method and Apparatus for Automatically Categorizing Images in a Digital Camera," issued September 10, 2013.
The Invention Explained
- Problem Addressed: The patent's specification describes the process of manually viewing, identifying, and tagging digital images into categories as "cumbersome and time-consuming," awkward, and inefficient, particularly as the number of images grows (’928 Patent, col. 1:44-60).
- The Patented Solution: The invention is a device, such as a digital camera, that automates this process. It includes a processing circuit that analyzes data associated with an image at the moment of capture to automatically generate a descriptive tag. This tag is then stored with the image data, allowing for efficient, automatic categorization and sorting (’555 Patent, Abstract; ’928 Patent, col. 2:11-27).
- Technical Importance: This approach sought to move image-organization intelligence directly into the capture device, reducing the need for post-capture manual sorting on a separate computer and making large collections of digital photos more manageable from their inception (’928 Patent, col. 1:36-43).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶20).
- Claim 1 requires:
- A device, comprising:
- a processing circuit configured to automatically generate at least one tag for an image captured using the device in response to analyzing data associated with the image at a time of image capture; and
- a memory circuit configured to store the at least one tag with the data to thereby categorize the image.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 8,350,928 - "Method and Apparatus for Automatically Categorizing Images in a Digital Camera"
- Patent Identification: U.S. Patent No. 8,350,928, "Method and Apparatus for Automatically Categorizing Images in a Digital Camera," issued January 8, 2013.
The Invention Explained
- Problem Addressed: As with the related ’555 Patent, this patent addresses the inefficiency of manually categorizing large numbers of digital images, which requires users to individually view and tag each one (’928 Patent, col. 1:44-56).
- The Patented Solution: The patented solution is a digital camera with an internal processor and an "analysis module" that work together to perform image analysis "at the time of image capture." This analysis results in the automatic generation of a "category tag" that is stored with the image, enabling automated sorting (’928 Patent, Abstract; ’928 Patent, col. 4:35-56).
- Technical Importance: This technology aimed to embed categorization logic within the camera's image processing pipeline, allowing for real-time metadata creation as an integral part of the image capture process itself (’928 Patent, col. 2:37-55).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶31).
- Claim 1 requires:
- A digital camera for automatically categorizing captured image data, comprising:
- a processor within the digital camera for capturing image data;
- an analysis module configured to perform image data analysis on the captured image data at the time of image capture and to automatically generate a category tag; and
- a memory for storing the generated category tag in association with the captured image data.
- The complaint does not explicitly reserve the right to assert dependent claims.
Multi-Patent Capsule: U.S. Patent No. 8,836,819 - "Method and Apparatus for Automatically Categorizing Images in a Digital Camera"
- Patent Identification: U.S. Patent No. 8,836,819, "Method and Apparatus for Automatically Categorizing Images in a Digital Camera," issued September 16, 2014.
- Technology Synopsis: This patent, from the same family, claims an apparatus with a processing device configured to detect a "predetermined characteristic" in an image file (e.g., a face). Based on this detection, it automatically generates and attaches a category tag to the image file at the time of capture, and a memory device stores the tagged file (’819 Patent, Claim 1).
- Asserted Claims: Independent claim 1 (Compl. ¶43).
- Accused Features: The complaint alleges that Defendant’s face and license plate recognition readers infringe by detecting a characteristic (a face), generating a tag, and storing it with the image file (Compl. ¶¶ 44, 47-49).
Multi-Patent Capsule: U.S. Patent No. 9,363,408 - "Method and Apparatus for Automatically Categorizing Images in a Digital Camera"
- Patent Identification: U.S. Patent No. 9,363,408, "Method and Apparatus for Automatically Categorizing Images in a Digital Camera," issued June 7, 2016.
- Technology Synopsis: This patent claims a method of image categorization. The method involves using a first processing device to analyze image data at capture time to generate a tag, storing that tag in an image file, and then using a first or second processing device to "automatically determin[e] ... a category for the image" based on that tag (’408 Patent, Claim 1).
- Asserted Claims: Independent claim 1 (Compl. ¶54).
- Accused Features: The complaint accuses Defendant’s products of performing this method by analyzing an image to generate a tag, storing it, and using the tag to determine an image category (Compl. ¶¶ 55, 58-61).
III. The Accused Instrumentality
Product Identification
The complaint identifies the Accused Products as "face recognition systems," "face recognition readers," and "license plate recognition cameras," including specifically "Face ID 4 and Face ID 3" (Compl. ¶¶ 21, 22, 32, 44, 55).
Functionality and Market Context
- The complaint alleges the Accused Products are used as terminals to document employee time and attendance via face recognition (Compl. ¶¶ 24, 35, 47, 58). This functionality is described in the complaint's summary of its attached exhibits (Compl. ¶24).
- Technically, the products are alleged to incorporate a "630 MGz microprocessor" and a "BioBridge Face VX 6.0 algorithm" to capture a user's face, compare it to a database of stored face templates, and "identify the person instantly" (Compl. ¶¶ 25, 37, 48, 59).
- The products are alleged to include "256MB Flash Memory and 64MB SDRAM" for storing up to 3000 face templates (Compl. ¶¶ 26, 38, 49, 60).
IV. Analysis of Infringement Allegations
The complaint references claim chart exhibits that were not included with the filing. The analysis below is based on the narrative infringement allegations provided in the body of the complaint.
U.S. Patent No. 8,531,555 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a processing circuit configured to automatically generate at least one tag for an image captured using the device in response to analyzing data associated with the image at a time of image capture | The Accused Products include a "630 MGz microprocessor and BioBridge Face VX 6.0 algorithm" which captures a face and "compares it to stored faces to identify the person instantly." | ¶25 | col. 4:35-37 |
| and a memory circuit configured to store the at least one tag with the data to thereby categorize the image | The Accused Products include "256MB Flash Memory and 64MB SDRAM to store up to 3000 face templates." | ¶26 | col. 4:57-65 |
U.S. Patent No. 8,350,928 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a processor within the digital camera for capturing image data | The Accused Products include a "630 MGz microprocessor and high quality infrared cameras for capturing the face of users." | ¶36 | col. 4:35-37 |
| an analysis module...configured to perform image data analysis...at the time of image capture...and to automatically generate...a category tag | The Accused Products include a "BioBridge Face VX 6.0 algorithm for analyzing the facial features of the user, comparing the captured image...to stored faces to identify the person instantly." | ¶37 | col. 6:15-20 |
| and a memory for storing the generated category tag in association with the captured image data | The Accused Products include "256M Flash Memory and 64MB SDRAM to store up to 3000 face templates." | ¶38 | col. 4:57-65 |
Identified Points of Contention
- Scope Questions: The patents-in-suit repeatedly describe the invention in the context of a portable "digital camera" for general photography. A central question may be whether the claimed "device" or "digital camera" can be construed to read on a stationary, special-purpose time-and-attendance terminal.
- Technical Questions: The complaint alleges the accused algorithm "identif[ies] the person instantly" by comparing a captured face to a database (Compl. ¶¶ 25, 37). This raises the question of whether identifying a specific individual is functionally equivalent to "generat[ing] a ... category tag" as contemplated by the patent, which provides examples such as "nature scenes" or "city images" (’928 Patent, col. 6:45-49).
V. Key Claim Terms for Construction
The Term: "at a time of image capture" (from ’555 Patent, Claim 1; ’928 Patent, Claim 1)
- Context and Importance: This temporal limitation is fundamental to the claimed invention, distinguishing it from post-processing categorization software. Infringement requires the analysis to be performed substantially concurrently with the capture event. Practitioners may focus on this term to determine if the accused system's "instant" identification (Compl. ¶25) meets the temporal requirements of the claims as described in the specification.
- Intrinsic Evidence for a Broader Interpretation: The specification discloses that analysis modules can be "plugged into" the image processing pipeline at various points, such as an "RGB insertion point" or a "YCC insertion point," which occur after initial raw data conversion, suggesting the "time of capture" is a process rather than a single instant (’928 Patent, col. 8:5-24).
- Intrinsic Evidence for a Narrower Interpretation: The summary of the invention states the analysis module "analyzes the raw image data at the time of image capture" (’928 Patent, col. 2:13-14). This could support an interpretation that the analysis must occur very early in the processing chain, potentially before the comparison to a database alleged in the complaint.
The Term: "category tag" (from ’928 Patent, Claim 1) and "tag" (from ’555 Patent, Claim 1)
- Context and Importance: The definition of this term is critical to whether the output of the accused face recognition system—an identified person—qualifies as a "tag" for "categorizing the image."
- Intrinsic Evidence for a Broader Interpretation: The term itself is not explicitly defined with limiting language. Plaintiff may argue that any data that enables sorting or categorization, such as an employee ID linked to a face, constitutes a "tag" that categorizes images by person. Dependent claims in the patent family (e.g., '555 Patent, Claim 3) list different types of tags, including "user tag" and "product tag," which could support a broader view of what a "tag" can be.
- Intrinsic Evidence for a Narrower Interpretation: The specification provides specific examples of categories, such as "person or groups of people," "nature scenes," "city images," and "indoor images" (’928 Patent, col. 6:40-49). A defendant may argue that these examples define "category" as a general type or genre, distinguishing it from a specific identifier like an employee ID.
VI. Other Allegations
Indirect Infringement
The complaint does not contain allegations to support induced or contributory infringement. All counts are for direct infringement under 35 U.S.C. § 271(a) (Compl. ¶¶ 19, 30, 42, 53).
Willful Infringement
The complaint does not contain allegations of willful infringement or facts supporting pre- or post-suit knowledge of the patents.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "digital camera," as disclosed in the context of a portable consumer device for general photography, be construed to cover a stationary, special-purpose security terminal used for employee time and attendance?
- A key evidentiary question will be one of functional equivalence: does the accused system's alleged function of "identify[ing] the person instantly" by matching a face to a specific template in a database constitute the claimed function of "automatically generat[ing] a ... category tag" for the purpose of "categorizing the image" as that concept is described in the patent's specification?