Kephart Consulting LLC v. RealNetworks LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Kephart Consulting, LLC. (Arizona)
  • Defendant: RealNetworks, LLC, d/b/a SAFR (Washington)
  • Plaintiff’s Counsel: David J. Hoffman
• Case Identification: 1:25-cv-00418, S.D.N.Y., 01/15/2025
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business in the Southern District of New York and has committed acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s facial recognition security products and services infringe two patents related to proactively identifying persons of interest at large venues.
• Technical Context: The technology involves capturing facial images of individuals entering a secure area, comparing those images against a database of persons of interest, and alerting security personnel if a match is detected.
• Key Procedural History: The complaint states that Plaintiff is a non-practicing entity and that it and its predecessors have entered into settlement licenses with other entities. Plaintiff asserts that these prior licenses do not trigger marking requirements under 35 U.S.C. §287 because they were not for the production of a patented article.

Case Timeline

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

U.S. Patent No. 10,248,849 - Technique for Providing Security to an Area (Issued Apr. 2, 2019)

The Invention Explained

• Problem Addressed: The patent describes security measures at large venues like stadiums as being primarily "reactive," meaning they are designed to respond to violent incidents only after they have started. Such measures are described as insufficient to proactively identify and exclude individuals with known violent tendencies before they enter the venue (ʼ849 Patent, col. 1:53-67).
• The Patented Solution: The invention proposes a method and system for proactive security. A camera captures a facial image of each person seeking entry to a venue. A computer compares this image against a pre-compiled database of "persons of interest." If a likely match is detected, the system generates an alert for on-site law enforcement or security personnel, who can then intervene (ʼ849 Patent, col. 2:46-65; Fig. 3).
• Technical Importance: The technology represents a shift from relying on visible security presence and reactive tactics to a data-driven approach intended to prevent security incidents before they occur (ʼ849 Patent, col. 2:14-17).

Key Claims at a Glance

• The complaint asserts independent claim 1 (a method claim).
• The essential elements of independent claim 1 include:
  • providing at least one entry port for persons to enter into a secure area;
  • capturing a photographic image of each person who approaches the at least one entry port seeking entry into the secure area;
  • comparing the photographic image of each person seeking entry into the secure area to facial images compiled in a database of facial images of persons of interest to detect a likely match;
  • alerting at least one of one or more law enforcement officers or one or more security personnel of a detection of a likely match; and
  • wherein the secure area is controlled by a first party and the database is controlled by a second party.
• The complaint reserves the right to assert claims 2-23 (Compl. ¶16).

U.S. Patent No. 10,796,137 - Technique for Providing Security (Issued Oct. 6, 2020)

The Invention Explained

• Problem Addressed: The patent addresses the same problem as its related '849 patent: conventional security at crowded venues is not "pro-active" and cannot effectively screen attendees for violent histories or other risks prior to entry (ʼ137 Patent, col. 1:55-col. 2:6).
• The Patented Solution: The invention claims a security system comprising a camera and a computer circuit. The circuit is configured to receive a captured facial image, transmit it to be compared against a database, receive an alert if a match is found, and then notify security personnel. A key aspect is the distributed nature of the system, where the on-site system and the database are controlled by different parties (ʼ137 Patent, col. 2:56-col. 3:14; Fig. 6).
• Technical Importance: The invention describes a distributed security architecture where an on-site system (controlled by a "first party") leverages an external, potentially remote, database of persons of interest (controlled by a "second party") to enhance security intelligence (ʼ137 Patent, col. 18:7-14).

Key Claims at a Glance

• The complaint asserts independent claim 1 (a system claim).
• The essential elements of independent claim 1 include:
  • at least one camera configured to capture a photographic image of a person;
  • a computer circuit configured to:
    • receive the captured photographic image;
    • transmit the image for comparison against a database of persons of interest;
    • receive an alert in response to a likely match; and
    • control to alert law enforcement or security personnel of the match detection.
  • wherein the system is controlled by a first party and the database is controlled by a second party.
• The complaint reserves the right to assert claims 2-23 (Compl. ¶8).

III. The Accused Instrumentality

Product Identification

The complaint accuses Defendant’s "devices/products, methods, systems, and processor-readable media," offered under the d/b/a "SAFR," of infringement (Compl. ¶1, ¶8, ¶16).

Functionality and Market Context

The complaint alleges that the accused instrumentalities provide functionality for "comparing captured facial images to a database of facial data for persons of interest and alerting security personnel" (Compl. ¶7, ¶15). The complaint asserts these products offer an "improved and efficient approach for scanning the facial image of everyone entering a large venue" to provide "proactive prevention of violence" (Compl. ¶9, ¶17). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references preliminary claim charts in Exhibits B and D, which were not attached to the publicly filed document (Compl. ¶10, ¶18). Therefore, a detailed element-by-element analysis is not possible based on the provided documents. The complaint's narrative theory alleges that RealNetworks' SAFR products and services, when used by its customers, perform the methods and constitute the systems claimed in the patents-in-suit. The core of the infringement allegation is that the SAFR platform captures facial images and compares them against a database to alert security, thereby practicing the patented inventions (Compl. ¶7-9, ¶15-17).

Identified Points of Contention

• Scope Questions: Both asserted independent claims require that the system/secure area is "controlled by a first party" and the database is "controlled by a second party." A central question for the court will be whether the Defendant's commercial offering satisfies this limitation. The analysis may turn on whether the Defendant's customer (e.g., a venue operator) qualifies as the "first party" and the Defendant or another entity qualifies as the "second party" controlling the database, or if the entire accused system is considered to be under the control of a single entity.
• Technical Questions: The complaint contains high-level functional allegations. A key evidentiary issue will be whether the specific operational steps and system architecture of the accused SAFR platform map onto the specific limitations recited in the asserted claims, including the data transmission and alerting pathways described in the patents.

V. Key Claim Terms for Construction

• The Term: "controlled by a first party and the database is controlled by a second party" (’849 Patent, cl. 1; ’137 Patent, cl. 1).
• Context and Importance: This limitation appears in the independent claims of both asserted patents and is central to defining the invention's distributed architecture. The outcome of the infringement analysis may depend heavily on whether the accused SAFR system, as sold and operated, can be found to meet this two-party control structure. Practitioners may focus on this term because it appears to be a primary basis for distinguishing the invention from a fully integrated, single-entity security system.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Parties may argue that "controlled by" does not require separate ownership. The specification describes scenarios where on-site security at a venue leverages data from external "fusion centers" or government agencies like "Homeland Security" (’849 Patent, col. 14:26-58). This could support an interpretation where the venue operator is the "first party" and the external data source is the "second party," even if both use software provided by the Defendant.
  • Evidence for a Narrower Interpretation: Parties may argue the claim language requires a distinct operational and administrative separation between the entity controlling the on-site system and the entity controlling the database. The claims consistently distinguish the "system" or "secure area" from the "database," which may suggest they are intended to be separate operational components, not merely different data sets within a unified system (’137 Patent, cl. 1, col. 18:7-14).

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendant "actively encouraged or instructed others (e.g., its customers...)" on how to use its products and services in an infringing manner (Compl. ¶11, ¶19). It also alleges contributory infringement, asserting that the accused components "do not have any substantial non-infringing uses" (Compl. ¶12, ¶20).
• Willful Infringement: The complaint includes a contingent allegation of willfulness, requesting such a finding "provided discovery reveals that Defendant knew" of the patents-in-suit prior to the lawsuit and subsequently infringed (Compl. Prayer for Relief ¶e).

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

• A core issue will be one of definitional scope: can the claim limitation "controlled by a first party and the database is controlled by a second party" be construed to read on a security system provided by a single vendor (Defendant) to a customer (the venue)? The case may turn on whether this requires two truly independent operational entities or can be satisfied by the vendor-customer relationship.
• A second central issue will be one of evidentiary proof: given the general infringement allegations, the case will depend on whether Plaintiff can develop evidence in discovery to demonstrate that the accused SAFR platform’s specific technical architecture and method of operation meet every element of the asserted claims as construed by the court.