Secure Cam LLC v. Facekey Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Secure Cam, LLC (Wyoming)
  • Defendant: FaceKey Corporation (Texas)
  • Plaintiff’s Counsel: Brandt Law Firm
• Case Identification: 5:18-cv-00372, W.D. Tex., 04/26/2018
• Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant maintains its principal place of business in the district and employs personnel there.
• Core Dispute: Plaintiff alleges that Defendant’s face recognition readers, used for access control and time/attendance, infringe four patents related to automatically analyzing and tagging digital images at the moment of capture.
• Technical Context: The technology at issue involves embedding analytical capabilities within an imaging device to automatically generate and attach descriptive tags to images as they are taken, thereby simplifying later categorization and retrieval.
• Key Procedural History: The asserted patents stem from a long family of continuation applications sharing a 1998 priority date. The patents themselves note terminal disclaimers, which may limit the patents' effective term and suggests a shared lineage of subject matter. The complaint does not mention any prior litigation or administrative proceedings involving these patents.

Case Timeline

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," issued September 10, 2013

The Invention Explained

• Problem Addressed: The patent’s background section identifies the manual sorting and categorizing of large numbers of digital images as a "cumbersome and time-consuming task" for users (’555 Patent, col. 1:44-48). Existing systems requiring manual pre-selection of categories before image capture are described as "awkward to use" (’555 Patent, col. 1:53-59).
• The Patented Solution: The invention is a device, such as a digital camera, that automates this process. It incorporates a processing circuit that analyzes data associated with an image at the "time of image capture" to automatically generate at least one descriptive tag, which is then stored with the image data in a memory circuit (’555 Patent, Abstract; col. 2:7-17). This integrated analysis and tagging system is intended to enable efficient, automatic categorization of captured images (’555 Patent, col. 2:15-17).
• Technical Importance: The technology aimed to improve the efficiency and user-friendliness of digital imaging devices by eliminating the tedious post-capture manual labor of organizing photos (’555 Patent, col. 2:1-6).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶21).
• The essential elements of claim 1 are:
  • 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 prayer for relief broadly requests judgment of infringement of "one or more claims" of the patent (Compl. p. 9).

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: Similar to its family members, the patent addresses the inefficiency of manually viewing and tagging digital images to sort them into categories (’928 Patent, col. 1:35-59).
• The Patented Solution: The invention proposes a "digital camera" containing an "analysis module" coupled to its processor (’928 Patent, Abstract). This module is configured to perform data analysis on a captured image "at the time of image capture" and, in response, automatically generate a "category tag" that is stored in memory with the image data, facilitating automatic sorting (’928 Patent, col. 2:11-20). The specification details how different analysis algorithms can be used to detect various image characteristics, such as flesh tones or green content, to assign appropriate tags (’928 Patent, col. 6:35-55).
• Technical Importance: By building analytical intelligence directly into the camera's processing chain, the invention allows for image categorization to occur seamlessly as part of the capture process itself (’928 Patent, col. 2:1-6).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶33).
• The essential elements of claim 1 are:
  • A digital camera for automatically categorizing captured image data, the digital camera comprising:
  • a processor within the digital camera for capturing image data;
  • an analysis module within the digital camera coupled to the processor and 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 for categorizing the captured image data.
• The prayer for relief is for infringement of "one or more claims" (Compl. p. 10).

U.S. Patent No. 8,836,819 - "Method and Apparatus for Automatically Categorizing Images in a Digital Camera," issued September 16, 2014

• Patent Identification: U.S. Patent No. 8,836,819, “Method and Apparatus for Automatically Categorizing Images in a Digital Camera,” issued September 16, 2014 (Compl. ¶13).
• Technology Synopsis: The patent describes an apparatus that addresses inefficient manual image sorting by using a processing device to detect a "predetermined characteristic" in an image file at the time of capture. Based on this characteristic, the device automatically generates and attaches a "category tag" to the image file before storing it in memory (’819 Patent, Claim 1).
• Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶45).
• Accused Features: The complaint alleges that the Accused Products' processor, camera, face recognition technology, and memory meet the limitations of the asserted claim (Compl. ¶48-51).

U.S. Patent No. 9,363,408 - "Method and Apparatus for Automatically Categorizing Images in a Digital Camera," issued June 7, 2016

• Patent Identification: U.S. Patent No. 9,363,408, “Method and Apparatus for Automatically Categorizing Images in a Digital Camera,” issued June 7, 2016 (Compl. ¶16).
• Technology Synopsis: This patent claims a method for automatic image categorization where a first processing device analyzes image data at capture time to generate a tag, which is then stored as part of the image file. Subsequently, either the first or a second processing device determines a category for the image based on the stored tag (’408 Patent, Claim 1).
• Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶57).
• Accused Features: The complaint alleges that the functions of the Accused Products, including their processors and face recognition capabilities, perform the steps of the claimed method (Compl. ¶60-65).

III. The Accused Instrumentality

Product Identification

• The complaint names the FKFP-AC-PRO and FKFP-AC-PRO2 Access Control systems as the Accused Products (Compl. ¶22, 34, 46, 58).

Functionality and Market Context

• The Accused Products are described as "face recognition readers" used to "document time and attendance of employees" (Compl. ¶24, 36). The complaint alleges, upon information and belief, that the products contain a processor and a camera for capturing a user's face (Compl. ¶25, 37). They allegedly use "face recognition technology" to instantly compare the captured facial image against a database of stored faces for identification and include "on-board memory for storing up to 3,000" faces (Compl. ¶26, 27, 38, 39). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'555 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central question may be whether the term "device", as used in a patent consistently describing a general-purpose "digital camera," can be construed to read on a stationary, special-purpose "face recognition reader" for time and attendance.
  • Technical Questions: The infringement theory raises the question of what constitutes a "tag." The complaint appears to equate the result of a biometric match (i.e., a person's identity) with the "tag" of the claim. The court may need to determine if this specific identification data is equivalent to the patent's more general "category tags."

'928 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The use of the explicit term "digital camera" in this claim, compared to "device" in the ’555 Patent, may create a more focused dispute over whether a fixed-location access control system falls within the claim's scope.
  • Technical Questions: As with the ’555 Patent, a key technical question is whether the specific identity of a recognized person constitutes a "category tag." The ’928 Patent's specification provides examples of categories such as "nature scenes" or "city images" based on image content (e.g., "substantial green content"), which may suggest a different technical meaning than specific biometric identification (’928 Patent, col. 6:45-50).

V. Key Claim Terms for Construction

• The Term: "digital camera" (from ’928 Patent, Claim 1) and "device" (from ’555 Patent, Claim 1)

  • Context and Importance: Practitioners may focus on this term because the core of the dispute hinges on whether the accused "face recognition reader"—a specialized, stationary biometric scanner—is equivalent to the "digital camera" described throughout the patents. The construction of this term could be dispositive for infringement.
  • Intrinsic Evidence for a Broader Interpretation: The specification states that "any imaging device, which captures image data, could incorporate the features described hereinbelow and that device would be within the spirit and scope of the present invention" (’928 Patent, col. 4:39-44). Plaintiff may argue this language supports a construction that is not limited to conventional handheld cameras.
  • Intrinsic Evidence for a Narrower Interpretation: The patents are titled "Method and Apparatus for Automatically Categorizing Images in a Digital Camera," and the background, summary, and embodiments consistently refer to a "digital camera" in the context of general-purpose photography (’928 Patent, col. 1:40-43, Abstract). Figure 4 depicts a conventional handheld camera. Defendant may argue this context limits the term to its ordinary meaning in the field.

• The Term: "category tag" (from ’928 Patent, Claim 1) and "tag" (from ’555 Patent, Claim 1)

  • Context and Importance: The complaint's infringement theory depends on the output of a facial recognition match (i.e., a person's identity) being construed as a "category tag." Practitioners may see this as a critical point of contention, as the patent's examples point toward a different type of data.
  • Intrinsic Evidence for a Broader Interpretation: The claim language itself does not explicitly limit the type of tag. The specification notes that the analysis module can detect "at least one image category" from "a wide variety of possible image categories" (’928 Patent, col. 6:39-40, 7:26-28), which a party could argue is open-ended enough to include an identity.
  • Intrinsic Evidence for a Narrower Interpretation: The specification provides specific examples of categories, such as "person or groups of people based on characteristics like substantial amounts of flesh tones," "nature scenes," and "city images" based on visual content like colors and edges (’928 Patent, col. 6:40-50). A party could argue these examples define the scope of a "category tag" as a descriptive classification, not a unique biometric identifier.

VI. Other Allegations

The complaint does not allege willful or indirect infringement. It contains four counts of direct infringement under 35 U.S.C. § 271(a) (Compl. ¶¶ 19, 31, 43, 55).

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

The resolution of this case may depend on the court’s answers to two fundamental questions that bridge claim construction and infringement analysis:

• A core issue will be one of definitional scope: can the term "digital camera", rooted in the patents' context of general-purpose, portable photography, be construed to cover a stationary, special-purpose "face recognition reader" used for biometric access control?
• A key evidentiary question will be one of functional scope: does the output of the accused product’s biometric identification process—a specific person's identity—constitute the "category tag" as contemplated by the patents, which provide examples of broad, descriptive classifications (e.g., "nature scene") rather than unique identifiers?