DCT
2:23-cv-00417
Carr v. Homeland Patrol Division Security LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Don Carr (Washington)
- Defendant: Homeland Patrol Division Security, LLC; Joshua Stivers; Stephen Pansini; Bold IP, PLLC; John Houvener (Washington)
- Plaintiff’s Counsel: Lowe Graham Jones PLLC
- Case Identification: 2:23-cv-00417, W.D. Wash., 03/20/2023
- Venue Allegations: Venue is based on defendants residing, conducting business, and committing the alleged acts within the Western District of Washington, where a substantial part of the events giving rise to the claims occurred.
- Core Dispute: Plaintiff seeks a declaratory judgment of non-infringement of a patent related to biometric security systems, and further seeks correction of patent inventorship and alleges breach of fiduciary duty against his former business partners and patent counsel.
- Technical Context: The technology involves a mobile, computer-implemented system for security personnel to perform facial recognition on suspects in the field, access a database of prior incidents, and document new interactions.
- Key Procedural History: The complaint alleges a complex history wherein Plaintiff Don Carr conceived of an invention and hired patent counsel, but his then-business partners and counsel allegedly conspired to remove him as an inventor from his own patent application, secure the patent in their names, and subsequently assert it against him. This underlying dispute over inventorship and alleged professional misconduct is a central element of the case, alongside the patent infringement claims.
Case Timeline
| Date | Event |
|---|---|
| 2018-12-28 | Priority Date for ’367 Patent (Provisional App. 62/785,974 filed) |
| 2019-08-19 | Plaintiff’s counsel (Bold IP) sends disengagement letter to Plaintiff Carr |
| 2019-10-31 | Bold IP files request to add Defendants Stivers and Pansini as inventors |
| 2019-12-24 | Utility patent application leading to the ’367 Patent filed, naming only Stivers and Pansini as inventors |
| 2022-05-31 | U.S. Patent No. 11,348,367 issues |
| 2022-10-11 | Defendant HPDS sends cease and desist letter to Plaintiff Carr |
| 2023-01-03 | Plaintiff’s counsel responds to cease and desist letter, denying infringement |
| 2023-03-20 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 11,348,367, "System and method of biometric identification and storing and retrieving suspect information," issued May 31, 2022.
The Invention Explained
- Problem Addressed: The patent’s background section identifies the difficulty and delay for law enforcement and private security personnel in identifying suspects and repeat offenders in the field, a process that traditionally relied on relaying information back to a central station for database checks (’367 Patent, col. 1:24-49).
- The Patented Solution: The invention is a real-time, mobile system where a user can capture a suspect's image on a computing device (e.g., a smartphone). The system performs facial recognition, compares the image to a database to find a match and retrieve prior incident history, and provides a trespass statement for the user to read to the suspect. The interaction, including the reading of the statement, can be recorded and stored to create a comprehensive incident report (’367 Patent, Abstract; col. 2:5-13).
- Technical Importance: This approach aims to equip field personnel with immediate access to suspect identification and history, streamlining a process that was previously time-consuming and fragmented (’367 Patent, col. 1:40-49).
Key Claims at a Glance
- The complaint primarily contests infringement of independent claims 1 and 10, and dependent claim 13 (Compl. ¶ 60). The right to assert non-infringement of other claims is reserved.
- Independent Claim 1 (System): The essential elements of this system claim include:
- A network-coupled system of databases, processors, and at least one user computing device.
- The computing device is configured to execute instructions to perform a series of steps: generating facial data from a captured image, receiving it at a server, performing facial recognition, and comparing it to a database.
- The system stores and transmits trespass statements to the user's device for display.
- A final limitation requires "automatically recording video when the one or more trespass statements is displayed."
III. The Accused Instrumentality
Product Identification
- The "FaceScope" system, a software program developed by Plaintiff Don Carr and used by his company, Wolf Creek Security (Compl. ¶¶ 12, 20, 77).
Functionality and Market Context
- The complaint alleges the accused FaceScope system operates by first capturing a still photo of a subject, not by recording video (Compl. ¶ 62).
- It is further alleged that any recording initiated by the user is audio-only, and this recording is a manual process requiring the user to press a microphone icon to start (Compl. ¶ 64). A series of screenshots are provided to illustrate this user workflow, showing an initial photo capture screen followed by a separate screen with a microphone icon for manual audio recording (Compl. p. 15, "FaceScope™ Demo"). This sequence of five screenshots illustrates the user interface flow from initial photo capture to the trespass statement screen with a manual audio recording option (Compl. ¶ 64, p. 15).
- The complaint also asserts that the accused system does not perform the region-specific trespass statement selection required by other claims, such as 11 and 12 (Compl. ¶ 66).
- The system is used in the course of business by Wolf Creek Security, a company providing security services in Washington (Compl. ¶¶ 9-10).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement, arguing that the accused FaceScope system lacks key elements of the asserted claims.
’367 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged (Non-)Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| ...transmitting the one or more trespass statements to the user's computing device for display; | The FaceScope system displays a trespass statement after a user selects an incident type. | ¶64 | col. 16:46-48 |
| and automatically recording video when the one or more trespass statements is displayed. | The FaceScope system does not record video. It captures a still photo. Any recording is audio-only and is manually triggered by the user pressing a microphone icon; it is not automatic. | ¶¶62, 64 | col. 16:49-51 |
Identified Points of Contention
- Technical Questions: A central factual dispute will be how the accused FaceScope system actually functions. The complaint provides screenshots as evidence that the system captures still photos and uses manual, audio-only recording (Compl. p. 15). The defendants may contest this characterization or argue that the system has other, unmentioned capabilities that meet the claim limitations.
- Scope Questions: The primary legal dispute appears to be one of claim scope. The court will need to determine if the claim term "video" can be construed to read on the accused system’s "still photo" capture, and if "automatically recording" can read on the system’s alleged "manual" user-initiated recording process.
- Pleading Discrepancy: The complaint alleges that "independent claims 1 and 10... both require... [to] automatically record video" (Compl. ¶ 60). However, a review of the patent indicates that while Claim 1 contains this limitation, Claim 10 does not (’367 Patent, col. 18:8-12). This discrepancy between the complaint's allegation and the patent's text may itself become a point of contention.
V. Key Claim Terms for Construction
The Term
- "automatically recording video"
Context and Importance
- This term appears to be the linchpin of the plaintiff’s non-infringement argument for Claim 1. If the accused system is found not to "automatically record video," it cannot, as a matter of law, infringe that claim. Practitioners may focus on this term because the complaint's factual allegations are aimed squarely at distinguishing the accused product's functionality from this specific limitation.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition for "automatically." A defendant could argue that "automatically" in this context refers to an integrated part of the software's workflow initiated upon displaying the trespass statement, even if it requires a final user tap to confirm.
- Evidence for a Narrower Interpretation: The patent specification explicitly distinguishes between "a still camera or video camera" (’367 Patent, col. 9:8) and between still image file formats and "multimedia files such as mpg, avi, mov, etc." (’367 Patent, col. 8:25-30). This language suggests that the patentee understood "video" and "still photo" to be distinct concepts, which may support a narrow construction that excludes the accused system's still photo capture. The complaint also argues that manual and automatic operations are opposites (Compl. ¶ 63).
VI. Other Allegations
Indirect Infringement
- The complaint seeks a declaratory judgment of non-infringement for all forms of liability, including direct, induced, and contributory infringement (Compl. p. 22, ¶1).
Willful Infringement
- While this is a declaratory judgment action, the complaint makes allegations that mirror those in a willfulness or exceptional case context. It alleges that the defendants' assertion of infringement was "objectively baseless and in bad faith" because they performed "no analysis of the ’367 patent with respect to the accused conduct" (Compl. ¶¶ 58, 79). The complaint also alleges the defendants were aware of the plaintiff’s contributions as an inventor but "intentionally removed him" from the patent, an act described as "willful" (Compl. ¶ 73). These allegations form the basis for a request for attorneys' fees under 35 U.S.C. § 285.
VII. Analyst’s Conclusion: Key Questions for the Case
- Inventorship and Standing: The threshold issue is the explosive claim for correction of inventorship. The court must first address whether Plaintiff Don Carr was a true inventor who was improperly omitted from the patent. If he is added as a co-inventor, he would become a co-owner, and a co-owner cannot infringe the patent. Such a finding could render the entire infringement dispute moot.
- Claim Construction and Factual Proof: Should the case proceed on infringement, a central issue will be one of definitional scope: can the claim term "automatically recording video" be construed to cover the accused system’s alleged function of manually-triggered, audio-only recording of a trespass statement reading that follows an initial still photo capture? This will turn on the court’s interpretation of the patent’s own language and the factual evidence of how the accused system operates.
- Exceptional Case and Attorney Conduct: A third major question is whether the defendants' alleged conduct—first in procuring the patent by allegedly removing the rightful inventor, and second in asserting it against that same inventor—constitutes an "exceptional case" warranting an award of attorneys' fees. This inquiry will scrutinize the actions of both the patent owner and their legal counsel.