Kephart Consulting LLC v. Johnson Controls Intl Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Kephart Consulting, LLC (Arizona)
  • Defendant: Johnson Controls International, Inc. (Wisconsin)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 7:24-cv-00235, W.D. Tex., 09/23/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business in the district and has committed acts of infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s security systems, which compare facial images to a database to alert personnel, infringe a patent related to security technology for crowded venues.
• Technical Context: The technology at issue involves the use of automated facial recognition and database cross-referencing to proactively identify potential security threats at large public gatherings.
• Key Procedural History: The complaint notes that Plaintiff has entered into prior settlement licenses for its patents but alleges these agreements did not involve the production of a patented article and thus do not trigger marking requirements under 35 U.S.C. § 287. The asserted patent is a continuation of a series of applications, establishing an earlier priority date.

Case Timeline

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

U.S. Patent No. 10,796,137 - "Technique for Providing Security"

• Patent Identification: U.S. Patent No. 10,796,137, "Technique for Providing Security", issued October 6, 2020.

The Invention Explained

• Problem Addressed: The patent describes security measures at large venues like sporting stadiums as being primarily "reactive," meaning they respond to violent incidents only after they have started. The patent asserts that these conventional methods are insufficient to proactively identify and exclude individuals who are "likely to be violent and/or dangerous" before they cause harm (ʼ137 Patent, col. 1:60-2:19).
• The Patented Solution: The invention proposes a system to proactively screen individuals entering a venue. Cameras capture facial images of attendees at entry ports, and a computer compares these images against a "computerized database of facial images of persons who are known to have been violent during similar events in the past" (ʼ137 Patent, col. 2:56-61). If the system detects a likely match, it generates an alert for on-site law enforcement or security personnel, who can then intervene (ʼ137 Patent, col. 3:1-14). The system architecture can also integrate data from license plate readers and information scanned from event tickets (ʼ137 Patent, Abstract; FIG. 6).
• Technical Importance: The technology represents a shift from manual, reactive security to an automated, proactive screening process intended to identify potential threats based on historical data before an individual enters a secured area (ʼ137 Patent, col. 2:28-32).

Key Claims at a Glance

• The complaint asserts claims 1-23 (Compl. ¶8). Independent claim 1 is representative.
• Claim 1 Elements:
  • A system comprising at least one camera for capturing a photographic image of a person.
  • A computer circuit configured to receive the image and transmit it for comparison against a database of facial images of "persons of interest" to detect a match.
  • The computer circuit is also configured to receive an alert in response to a detected match.
  • The system then alerts law enforcement or security personnel about the match.
  • A final limitation requires that "the system is controlled by a first party and the database is controlled by a second party."
• The complaint reserves the right to assert dependent claims (Compl. ¶8).

III. The Accused Instrumentality

Product Identification

The complaint does not name specific accused products. It refers generally to "devices/products, methods, systems, and processor-readable media" that Defendant "maintains, operates, and administers" (Compl. ¶8).

Functionality and Market Context

The complaint alleges that the accused instrumentalities provide for "comparing captured facial images to a database of facial data for persons of interest and alerting security personnel" (Compl. ¶9). It is further alleged that Defendant’s products are sold and offered for sale in Texas and that they perform the infringing methods, but no specific technical details of their operation are provided (Compl. ¶2). The complaint asserts that these products embody the claimed inventions and that Defendant benefits commercially from them (Compl. ¶8).

IV. Analysis of Infringement Allegations

The complaint references a preliminary claim chart in Exhibit B to support its infringement allegations (Compl. ¶10); however, this exhibit was not included with the public filing. As such, the infringement theory is based on the narrative allegations in the complaint.

The complaint alleges that Johnson Controls directly infringes the ’137 patent by making, using, selling, and offering for sale its security products and systems (Compl. ¶¶ 2, 8). The core of the infringement theory is that these accused systems perform the functions central to the patent: capturing facial images, comparing them to a database of persons of interest, and generating alerts for security staff upon finding a match (Compl. ¶9). The allegations are framed at a high level of generality, essentially asserting that the accused products' functions align with the patented method. The complaint does not provide specific factual support detailing how the accused systems are architected or operate, including how they meet the key "first party/second party" control limitation from claim 1.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

• The Term: "wherein the system is controlled by a first party and the database is controlled by a second party"

• Context and Importance: This limitation from independent claim 1 appears to define a specific business or operational model where the entity operating the security system is distinct from the entity controlling the threat database. The construction of "controlled by" and the relationship between the "first party" and "second party" will likely be a central point of dispute, as it may be a key element distinguishing the invention from a monolithic system where one entity controls all components.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent does not explicitly define "controlled by," which could allow for a broad reading that encompasses any form of operational management, data access rights, or contractual arrangement.
  • Evidence for a Narrower Interpretation: The specification's discussion of a "fusion center" (116) that communicates with separate law enforcement (118) and Homeland Security (120) databases suggests a specific intended structure ('137 Patent, FIG. 6; col. 14:27-56). A defendant may argue that "second party" is limited to such governmental or quasi-governmental entities, and "controlled by" implies data ownership and curation, not just access.

• The Term: "person of interest"

• Context and Importance: This term defines the content of the database against which facial images are compared. Its scope is critical for determining whether an accused system's database meets the claim requirements. Practitioners may focus on this term because infringement will depend on what kind of individuals are included in the database used by the accused system.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The term itself is generic and could be argued to encompass any individual on any type of watchlist for any reason.
  • Evidence for a Narrower Interpretation: The specification consistently describes the problem and solution in terms of identifying individuals with a known "past histories of violent tendencies" ('137 Patent, col. 2:30-31), those "known to have been violent during similar events" (col. 2:59-61), or those with "outstanding arrest warrants" (col. 3:25-26). This context may support a narrower construction limited to individuals with documented histories of violence or criminal status.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement claim is based on allegations that Johnson Controls "actively encouraged or instructed others (e.g., its customers...)" on how to use its products in an infringing manner (Compl. ¶11). The contributory infringement claim adds that the components sold by Defendant "do not have any substantial non-infringing uses" (Compl. ¶12).
• Willful Infringement: Willfulness is pleaded conditionally. The complaint requests a finding of willfulness and enhanced damages "provided discovery reveals that Defendant knew (1) knew of the patent-in-suit prior to the filing date of the lawsuit; [and] (2) after acquiring that knowledge, it infringed" (Compl. ¶7.e). This pleading does not assert pre-suit knowledge but preserves the ability to pursue a willfulness claim if evidence of such knowledge emerges.

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

• A core issue will be one of architectural configuration: Can the plaintiff prove that the accused Johnson Controls systems operate under the "first party/second party" distributed control model required by claim 1? The outcome will likely depend on evidence concerning the operational relationship between Johnson Controls, its customers, and any third-party database providers.
• A second central question is evidentiary and definitional: Does the database used by the accused systems contain information on "persons of interest" as that term is construed by the court? The plaintiff will bear the burden of showing that the accused systems not only perform a comparison but do so against a database that falls within the scope of the claims.