Kephart Consulting LLC v. FaceFirst Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Kephart Consulting LLC. (Arizona)
  • Defendant: Facefirst Inc. (Delaware)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 7:24-cv-00234, W.D. Tex., 02/20/2025
• Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant maintains a regular and established place of business in Austin and has committed the alleged acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s facial recognition security products and services infringe two patents related to methods for proactively identifying persons of interest at large venues.
• Technical Context: The technology involves using cameras to capture facial images of individuals entering a venue, comparing those images against a database of persons of interest, and alerting security personnel upon detecting a match.
• Key Procedural History: The filing is a First Amended Complaint, submitted following the Defendant's Motion to Dismiss the original complaint. The Plaintiff, a non-practicing entity, also details a history of settlement licenses with other entities, arguing these do not trigger patent marking requirements under 35 U.S.C. § 287(a) because the licensees did not admit infringement or agree to produce a patented article.

Case Timeline

Date	Event
2012-04-19	Earliest Priority Date for '161 and '849 Patents
2017-09-26	U.S. Patent No. 9,773,161 Issued
2019-04-02	U.S. Patent No. 10,248,849 Issued
2025-02-20	First Amended Complaint Filed

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

U.S. Patent No. 9,773,161, "Large Venue Security Method" (Issued Sep. 26, 2017)

The Invention Explained

• Problem Addressed: The patent asserts that security measures at large venues like stadiums are typically reactive, addressing violence only after it has begun, and do not proactively screen attendees to prevent known troublemakers from entering (’161 Patent, col. 2:11-15).
• The Patented Solution: The invention proposes a method where photographic facial images are captured for each person approaching a venue's entry port. A computer then compares these images to a compiled database of individuals known to have been violent at past events. If a likely match is detected, the system generates an alert for law enforcement, who can then intervene (’161 Patent, col. 2:58-col. 3:13).
• Technical Importance: This technology represents a claimed shift from a reactive to a proactive security paradigm, using automated facial recognition to screen large crowds in real-time before entry (’161 Patent, col. 2:11-15).

Key Claims at a Glance

• The complaint asserts infringement of claims 1-13 (Compl. ¶9).
• Independent Claim 1 requires:
  • Providing at least one entry port for persons to enter a venue.
  • Forming a photographic image of each person approaching the entry port.
  • Comparing the photographic image to a database of facial images of persons known to be violent to detect a likely match.
  • Alerting at least one law enforcement officer of a detected match.
  • Wherein the comparison step includes transmitting the image to a third party and receiving an alert in response.
  • Wherein the database is a third-party database controlled by the third party.

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 identifies the same problem as its parent '161 Patent: security at large venues is not proactive and fails to leverage technology to exclude potentially dangerous individuals before they enter (’849 Patent, col. 2:11-15).
• The Patented Solution: The invention describes a method for securing an area by capturing a photographic image of each person seeking entry, comparing that image to a database of "persons of interest," and alerting law enforcement or security personnel if a match is found. The system architecture is described in terms of a "first party" controlling the secure area and a "second party" controlling the database (’849 Patent, col. 18:8-12; Abstract).
• Technical Importance: Like the '161 Patent, this technology aims to provide a proactive security screening capability for crowded venues by automating the identification of persons of interest (’849 Patent, col. 2:11-15).

Key Claims at a Glance

• The complaint asserts infringement of claims 1-23 (Compl. ¶17).
• Independent Claim 1 of the '849 Patent requires:
  • Providing at least one entry port for persons to enter a secure area.
  • Capturing a photographic image of each person approaching the entry port.
  • Comparing the image to a database of facial images of persons of interest to detect a likely match.
  • Alerting law enforcement or security personnel of a detected match.
  • Wherein the comparison step includes transmitting the image to the database and receiving an alert in response.
  • Wherein the secure area is controlled by a first party and the database is controlled by a second party.

III. The Accused Instrumentality

Product Identification

The complaint does not identify any specific products by name. It broadly accuses Defendant’s "systems, products, and services in the field of comparing captured facial images to a database of facial data for persons of interest" (Compl. ¶9, ¶17).

Functionality and Market Context

The complaint alleges that Defendant "maintains, operates, and administers" the accused instrumentalities, which perform the process of comparing captured facial images to a database to find matches and alert personnel (Compl. ¶9, ¶17). It further alleges that Defendant's actions caused the claimed inventions to be put into service, enabling Defendant to procure monetary benefit (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 but does not include them in the provided filing (Compl. ¶11, ¶19). The infringement theory is therefore based on the narrative allegations in the complaint.

Plaintiff alleges that Defendant directly infringes the asserted patents by making, using, selling, and/or operating systems that practice the claimed methods (Compl. ¶9, ¶17). The core of the allegation is that Defendant's facial recognition systems perform the patented steps of capturing a facial image at a venue, comparing it against a database of persons of interest, and generating an alert upon a match (Compl. ¶¶8, 16). The complaint states that "but for Defendant's actions, the claimed-inventions embodiments involving Defendant's products and services would never have been put into service" (Compl. ¶9, ¶17), suggesting a theory that Defendant's systems are used by its customers to perform the patented methods.

Identified Points of Contention

• Scope Questions: A central dispute may arise over the architectural limitations in the claims. For the '161 Patent, a question is whether Defendant's system architecture involves transmitting images to a "third party database controlled by the third party." For the '849 Patent, the question is whether the operational relationship between Defendant and its customers fits the claim structure of a "secure area... controlled by a first party and the database... controlled by a second party."
• Technical Questions: The complaint's lack of specificity raises evidentiary questions. What proof will be offered to demonstrate that Defendant’s unnamed products perform each element of the asserted claims, particularly the specific transmission and alerting steps, as opposed to operating as a fully integrated, single-party system?

V. Key Claim Terms for Construction

Term 1: "third party database controlled by the third party" ('161 Patent, Claim 1)

Context and Importance

The definition of this term is fundamental to the infringement analysis for the '161 Patent. The outcome may depend on whether Defendant's system architecture, as implemented, constitutes a "third party" relationship or a more integrated one. Practitioners may focus on this term because it appears to define a specific, distributed system architecture that may not read on all facial recognition security platforms.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The specification’s description of a "fusion center" (116) that communicates with various external law enforcement and security databases could support a broader view of what constitutes a "third party" (’161 Patent, Fig. 6; col. 13:26-30).
• Evidence for a Narrower Interpretation: The explicit claim language "controlled by the third party" suggests a requirement for a degree of legal and operational independence between the entity managing the venue and the entity managing the database, which could narrow the claim's scope.

Term 2: "secure area is controlled by a first party and the database is controlled by a second party" ('849 Patent, Claim 1)

Context and Importance

This term is the '849 Patent's analogue to the "third party" limitation and will be equally critical. Its construction will determine whether a typical vendor-customer relationship (e.g., Facefirst Inc as vendor/second party, its customer as venue operator/first party) satisfies the claim. The prosecution history distinguishing this patent from the '161 Patent will likely be informative.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The specification is consistent with a model where a venue operator (first party) contracts with an outside entity to provide security services and database management (second party), as depicted with the remote "fusion center" (’849 Patent, Fig. 6; col. 13:26-30).
• Evidence for a Narrower Interpretation: A defendant could argue that "controlled by" requires more than just providing a service, and that the customer (first party) ultimately "controls" the database by dictating its content and use, potentially negating the two-party structure required by the claim.

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement. Inducement is based on allegations that FaceFirst "actively encouraged or instructed" its customers on how to use its products in an infringing manner (Compl. ¶¶12, 20). Contributory infringement is based on the allegation that the components sold by FaceFirst "do not have any substantial non-infringing uses" (Compl. ¶¶13, 21).

Willful Infringement

Willfulness is pleaded conditionally. The complaint requests a finding of willfulness only "provided discovery reveals that Defendant knew" of the patents prior to the suit and continued to infringe (Compl. ¶VII.e). This preserves the claim pending discovery of evidence of pre-suit knowledge.

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

The resolution of this case may depend on the answers to two primary questions:

1. A core issue will be one of architectural scope: Can Plaintiff establish that the operational relationship between Defendant and its customers satisfies the specific multi-party control structures required by the asserted independent claims—namely, the '161 Patent’s "third party" database and the '849 Patent’s "first party/second party" dichotomy?

2. A key threshold question will be one of pleading sufficiency and evidence: Given the complaint’s lack of detail on specific accused products, a central challenge for the Plaintiff will be to produce evidence linking the actual functionality of Defendant's systems to each element of the asserted claims, surviving potential challenges under the Iqbal/Twombly pleading standards.