3RD EYE SURVEILLANCE, LLC v. USA

Filing 544

REPORTED OPINION AND ORDER, reflecting redactions from 541 the opinion and order previously entered under seal on October 1, 2021. Signed by Senior Judge Charles F. Lettow. (klg)

In the United States Court of Federal Claims
No. 15-501C

(October 1, 2021)
(Reissued: October 8, 2021)
3RD EYE SURVEILLANCE, LLC and
DISCOVERY PATENTS, LLC,
Plaintiffs,
v.
UNITED STATES,
Defendant,
and
ELBIT SYSTEMS OF AMERICA,
LLC, GENERAL DYNAMICS ONE
SOURCE LLC, and NORTHROP
GRUMMAN SYSTEMS
CORPORATION,
Defendant-Intervenors.

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Patent case; “all elements” test for
infringement of a patent claim

Steven A. Kennedy, Kennedy Law, P.C., Dallas, Texas, for the plaintiffs.
James P. Hughes, Trial Attorney, Intellectual Property Section, Civil Division, United
States Department of Justice, Washington, D.C., for defendant. With him on the briefs were
Sara Harrington, Deputy Assistant Attorney General, Civil Division, and Gary L. Hausken,
Director, Commercial Litigation Branch, Civil Division, United States Department of Justice,
Washington, D.C.
Kurt G. Calia, Covington & Burling LLP, Palo Alto, California, for defendant-intervenor
Elbit Systems of America, LLC.
Scott A. Felder, Wiley Rein, LLP, Washington, D.C., for defendant-intervenor General
Dynamics One Source LLC.
Gregory H. Lantier, Wilmer Cutler Pickering Hale and Dorr LLP, Washington, D.C., for
defendant-intervenor Northrop Grumman Systems Corporation.

OPINION & ORDER 1
LETTOW, Senior Judge.
Pending before the court in this patent case is plaintiffs’ motion for partial summary
judgment as to Bellwether Systems Nos. Four and Five, see Pls.’ Mot., ECF No. 495, both of
which are allegedly infringing systems operated by a private entity for the government. 2 At
issue is Claim 6 of U.S. Patent No. 6,798,344 (the “’344 Patent”), titled “Security Alarm System
and Method with Realtime Streaming Video.” Plaintiffs are 3rd Eye Surveillance, LLC and
Discovery Patents, LLC. A nongovernmental third-party entity, Science Applications
International Corporation (“SAIC”), provides services to the government regarding Bellwether
Systems Nos. Four and Five. See Defs.’ Stip., ECF. No. 526. 3 Those systems consist of the
Biometric Entry/Exit System (“BEES”) the government uses at William P. Hobby Airport and
Orlando International Airport, both of which are alleged to infringe Claim 6 of the ’344 Patent.
Pls.’ Mot. at 1. 4 The government opposes the motion, arguing that plaintiffs have failed to prove
all the elements of Claim 6. See Def.’s Resp., ECF No. 509. The parties have completed
briefing. See Pls.’ Reply, ECF No. 513. The court held a hearing on September 23, 2021, and
the motion is ready for disposition.
For the reasons stated, the court denies plaintiffs’ motion on the ground that they have not
established that the BEES at the two airports infringe all elements of Claim 6 of the ’344 patent.
This action is without prejudice to any contention that the BEES infringe other patent claims at
issue in this action. 5
1

Because of the protective order entered in this case, this opinion was initially filed under
seal. The parties were requested to review the decision and provide proposed redactions of any
confidential or proprietary information. The resulting redactions are shown by brackets
enclosing elipses, e.g., “[***].”
2

This action potentially relates to numerous federal installations and systems; the breadth
and scope of which has complicated this litigation. To address this complexity, the court
“rein[ed] in the scope of the case by limiting plaintiffs’ discovery requests to 11 potential[ly]
infringing systems that will serve as bellwethers for further proceedings.” Order of July 28,
2020, ECF No. 381. On August 14, 2020, plaintiffs designated eleven bellwether systems. See
Pls.’ Notice, ECF No. 385. System Nos. Four and Five are among the eleven.
3

SAIC did not intervene in the case and is not before the court.

4

For both System Nos. Four and Five, Unisys Corporation deployed the services prior to
being acquired by SAIC in approximately March 2020. Defendant represents that “Unisys
Corporation previously provided services to the government in connection with Bellwether
Systems Nos. Four and Five. In March of 2020, SAIC assumed the operation [of] all activities
related to Bellwether Systems Nos. Four and Five.” Defs.’ Stip. n.2 (citations omitted).
5

Plaintiffs are also the respective licensee and assignee of U.S. Patent No. 6,778,085
(“’085 Patent”) and U.S. Patent No. 7,323,980 (“’980 Patent”), Pls.’ Fourth Am. Compl. ¶¶ 1415, the other patents at issue in this case. Those patents are continuation-in-part applications of
2

BACKGROUND 6
A. The ’344 Patent
The application for the ’344 Patent was filed on October 17, 2002, and the patent issued
September 28, 2004. U.S. Patent No. 6,798,344. Plaintiff, Discovery Patents, LLC, is the
assignee and plaintiff, 3rd Eye Surveillance, LLC, is the exclusive licensee of the ’344 patent.
Pls.’ Fourth Am. Compl. ¶¶ 14-15, ECF No. 323. The patent sets out 16 claims and describes
the inventions as “enhanc[ing] security alarm systems and services by providing secure, realtime
video for the appropriate emergency response agency.” ’344 Patent col. 1, lines 45-47; see also
id. at cols. 8-10.
The invention involves a three-part structure: a video camera at a secured location, a
central station, and emergency response agencies. See ’344 Patent col. 3, line 46 to col. 4, line
15. The imaging device at the secured location sends real-time video to the central station in the
event an alarm is triggered. ’344 Patent col 3., lines 56-60. The central station then receives,
processes, and displays the imagery sent from the secured location. ’344 Patent col. 3., lines 6064. From the central station, the imagery is simultaneously transmitted to one or more
emergency response agencies. ’344 Patent col. 3, line 65 to col. 4, line 2. The transmission from
the secured location to the central station and from the central station to the emergency response
agencies is done via a high-speed communications link, such as the Internet. See ’344 Patent,
col. 2, lines 19-22; col. 3, lines 53-55.
B. The Biometric Entry and Exit System
The Biometric Entry and Exit System has been installed for both entry and exit at the
William P. Hobby Airport and the Orlando International Airport. Pls.’ Mot., Ex. 22 at 743-44.
The system “assists in verifying the identity of travelers,” Def.’s Resp. at 2, by using a “Traveler
Verification System,” which is a “cloud-based matching service,” Pls.’ Mot., Ex. 6 at 256. “At a
high level, [the Traveler Verification System] is a three step process: 1) [b]uild the gallery, 2)
[p]erform[] an identify operation, based on a match request, and 3) [r]eturn the match response.”
Id., Ex. 13 at 501. [***]. Id., Ex. 6 at 256. Second, a photo is taken of the traveler at the airport
and submitted to the separate Traveler Verification System, which performs a matching process.
Id. “[T]he captured photo is compared against the appropriate gallery photos in less than 2
seconds.” Id., Ex. 13 at 501. The matching process “occurs in the [cloud service provider]
environment,” which requires that the “system . . . be connected to the Internet for matching to
occur.” Id., Ex. 13 at 503-504. Finally, a response is sent back to the capturing device and to
the application that resulted in the ’344 Patent, see U.S. Patent No. 6,778,085 (issued Aug. 17,
2004); U.S. Patent No. 7,323,980 (issued Jan. 29, 2008). “Plaintiffs maintain that Bellwether
Systems 4-5 also infringe the claims of the [’]980 and [’]085 Patents,” but they seek partial
summary judgment only as to the ’344 Patent at this time. Pls.’ Mot at 6.
6

The following recitations do not constitute findings of fact by the court. Instead, the
recited factual elements are taken from the relevant complaint and the parties’ briefs and attached
appendices.
3

responding agencies, such as the Transportation Security Administration (“TSA”), United States
Customs and Border Protection’s (“CBP”) workstations, and to CBP officers via the “Biometric
Exit Mobile Application.” Id., Ex. 13 at 501. [***]. Id., Ex. 13 at 501.
If a traveler [***]. Pls.’ Mot., Ex. 7 at 275. [***]. Id. at 11-12; see also id., Ex. 7 at
275. Other information about the traveler is also generated such as air travel history and border
crossing times. See id., Ex. 7 at 278. [***]. Id. at 12. [***]. Id. at 13.
C. Procedural History
Plaintiffs first filed suit against the government in May 2015, alleging patent
infringement under 28 U.S.C. § 1498(a). See Pls.’ Compl., ECF No. 1. The court issued its
opinion on claim construction on September 25, 2018. See 3rd Eye Surveillance, LLC v. United
States, 140 Fed. Cl. 39 (2018), ECF No. 243. Plaintiffs have filed three amended complaints, see
ECF Nos. 22, 221, 308. As discovery proceeded, the parties’ documentary exchanges included
descriptions of the Biometric Entry and Exit System. See, e.g., Pls.’ Mot., Exs. 1-23. Based on
that documentary record, plaintiffs contend that the Biometric Entry and Exit System used in
Bellwether Systems Nos. Four and Five satisfy all elements of Claim 6 of the ’344 Patent by
“displaying realtime video of the secured location at the emergency response agency based on
the realtime video signal transmitted from the secured location.” ’344 Patent, col. 9, lines 4-6;
see Pls.’ Mot. at 25. In opposition, the government argues that plaintiffs have failed to meet their
burden of showing that the Biometric Entry and Exit System involves the transmission of realtime video to an off-location emergency response agency and asserts that genuine issues of
material fact remain. See generally Def’s. Resp.
STANDARDS FOR DECISION
A. 28 U.S.C. § 1498(a)
Pursuant to 28 U.S.C. § 1498, the United States has waived sovereign immunity and
granted this court exclusive jurisdiction to adjudicate patent infringement claims against the
federal government “[w]henever an invention described in and covered by a patent of the United
States is used or manufactured by or for the United States without license of the owner thereof or
lawful right to use or manufacture the same.” 28 U.S.C. § 1498(a); see FastShip, LLC v. United
States, 892 F.3d 1298, 1303 (Fed. Cir. 2018), aff’g 122 Fed. Cl. 71, 78 (2015) (recognizing that
Section 1498 grants this court jurisdiction over patent infringement claims against the United
States); see also Hitkansut LLC v. United States, 130 Fed. Cl. 353, 367 (2017), aff’d, 721 Fed.
Appx. 992 (Fed. Cir. 2018). Moreover, the statute additionally provides that “the use or

4

manufacture of an invention described in and covered by a patent of the United States by a
contractor, a subcontractor, or any person, firm, or corporation for the [g]overnment and with the
authorization or consent of the [g]overnment, shall be construed as use or manufacture for the
United States.” 28 U.S.C. § 1498(a) (emphasis added). Such an unauthorized “use or
manufacture of an invention” under Section 1498(a) is analogous to a taking of property under
the Fifth Amendment of the United States Constitution. See Motorola, Inc. v. United States, 729
F.2d 765, 768 (Fed. Cir. 1984). The government’s “taking” of a nonexclusive and compulsory
license to any United States patent occurs “as of the instant the invention is first used or
manufactured by [or for] the [g]overnment.” Decca Ltd. v. United States, 640 F.2d 1156, 1166
(Ct. Cl. 1980).
The government has waived sovereign immunity only for the compulsory taking of a
non-exclusive patent license, and the government’s liability under 28 U.S.C. § 1498 diverges
from private liability under 35 U.S.C. § 271:
Government liability under Section 1498 arises from the “use[ ] or
manufacture[ ] by or for the United States.” There is no mention
of liability for a “sale” to the United States of a device covered by
a patent. In contrast, with respect to private liability for patent
infringement, the “sale” of a patented device is specifically defined
in 35 U.S.C. § 271 as an act of infringement . . . .
de Graffenried v. United States, 25 Cl. Ct. 209, 215 (1992) (alterations in original); compare 28
U.S.C. § 1498, with 35 U.S.C. § 271. 7
B. Patent Infringement
The court determines whether the government has engaged in direct infringement of a
patent using a two-step process that parallels the analysis for infringement litigation between
private parties. Lemelson v. United States, 752 F.2d 1538, 1548 (Fed. Cir. 1985); Casler v.
United States, 15 Cl. Ct. 717, 731 (1988), aff’d, 883 F.2d 1026 (Fed. Cir. 1989). First, the court
construes the claims of the patent; then, it compares those claims to the characteristics of the
accused product or process. See JVW Enters. v. Interact Accessories, Inc., 424 F.3d 1324, 1329
(Fed. Cir. 2005). The court previously completed claims construction in this case, see 3rd Eye,
140 Fed. Cl. 39, and has reached the second step. “When comparing the patent claims to the
accused device or process, the plaintiff has the burden of proving by a preponderance of the
evidence that every limitation set forth in a patent claim is present in the accused device or
7

Section 271 of Title 35 of the United States Code provides in relevant part:
(a) . . . whoever without authority makes, uses, offers to sell, or
sells any patented invention, within the United States or imports
into the United States any patented invention during the term of the
patent therefor, infringes the patent.

35 U.S.C. § 271(a) (emphasis added).
5

process either literally or by a substantial equivalent.” FastShip, 122 Fed. Cl. at 78 (citing
Boeing Co. v. United States, 69 Fed. Cl. 397, 426 (2006) (“‘[E]ach element of a claim is material
and essential, and . . . for a court to find infringement, the plaintiff must show the presence of
every element [for literal infringement] or its substantial equivalent [for infringement under the
doctrine of equivalents] in the accused device.’”) (alteration in original) (quoting Lemelson, 752
F.2d at 1551)). The plaintiff’s failure to meet even one element within a claim, literally or by its
substantial equivalent, negates a finding of infringement. See Laitram Corp. v. Rexnord, Inc.,
939 F.2d 1533, 1535 (Fed. Cir. 1991). This standard is commonly referred to as the “all
elements” rule. See TDM Am., LLC v. United States, 92 Fed. Cl. 761, 768 (2010), aff’d, 471 Fed.
Appx. 903 (Fed. Cir. 2012); see also Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S.
17, 29 (1997).
C. Summary Judgment
A grant of summary judgment is appropriate when the pleadings, affidavits, and
evidentiary materials filed in a case demonstrate that “there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a matter of law.” Rule 56(a) of the Rules
of the Court of Federal Claims (“RCFC”). A fact is material if it “might affect the outcome of
the suit under the governing law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A
dispute is genuine if it might “return a verdict for the nonmoving party.” Id. If “the record taken
as a whole [cannot] lead a rational trier of fact to find for the non-moving party, there is no
‘genuine issue for trial,’” and summary judgment is appropriate. Matsushita Elec. Indus. Co. v.
Zenith Radio Corp., 475 U.S. 574, 587 (1986) (quoting First Nat. Bank of Ariz. v. Cities Serv.
Co., 391 U.S. 253, 288 (1968)).
The burden of demonstrating the absence of any genuine dispute is on the moving party.
Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Accordingly, “the inferences to be drawn
from the underlying facts . . . must be viewed in the light most favorable to the party opposing
the motion.” Matsushita, 475 U.S. at 587-88 (alteration in original) (quoting United States v.
Diebold, Inc., 369 U.S. 654, 655 (1962)). The nonmoving party may defeat summary judgment
by presenting material facts of its own, more than “[m]ere denials or conclusory statements,” that
indicate “an evidentiary conflict created on the record.” Barmag Barmer Maschinenfabrik AG v.
Murata Mach., Ltd., 731 F.2d 831, 836 (Fed. Cir. 1984). To establish “that a fact cannot be or is
genuinely disputed,” a party must “cit[e] to particular parts of materials in the record, including
depositions, documents, electronically stored information, affidavits or declarations, stipulations
(including those made for purposes of the motion only), admissions, interrogatory answers, or
other materials.” RCFC 56(c)(1)(A).
ANALYSIS
Plaintiffs’ motion for partial summary judgment as to Claim 6 of the ’344 Patent rests on
documentary evidence of the operation of the BEES employed at Bellwether Systems Nos. Four
and Five. See Pls.’ Mot. In opposition, the government argues that plaintiffs have not proven
that the Biometric Entry and Exit System satisfies the “video,” “realtime,” or “display[]”
limitations of Claim 6. Def.’s Resp. at 7-14, 19. The government additionally cites plaintiffs’
lack of evidence beyond basic documents in support of their contentions that the elements of
6

Claim 6 have been met. Id. at 20. The government therefore argues that the motion for partial
summary judgment as to Systems Nos. Four and Five should be denied due to failure to meet the
“all elements” rule. Id. at 6.
A. Factual Disputes
The validity of plaintiffs’ infringement claim, and the success of their motion for partial
summary judgment as to Systems Nos. Four and Five, turns on whether the Biometric Entry and
Exit System generates and transmits a “realtime video signal” from a “secured location” to a
“central station” which in turn transmits and displays the video at “an emergency response
agency.” ’344 Patent, col. 8, line 61 to col. 9, line 6. Plaintiffs argue that the Biometric Entry
and Exit System satisfies all the limitations of the claim. According to plaintiffs, the Biometric
Entry and Exit System consists of an imaging device at the secured locations of the William P.
Hobby and Orlando International Airports, the central system of the Traveler Verification
System, and the CBP imaging device and CBP workstations and mobile devices at the airport.
See Pls.’ Mot. at 14. Plaintiffs claim that realtime video is collected by the airport imaging
device when it takes “live photographic images” of travelers, Pls.’ Mot., Ex. 1 at 18, and
transmits those images to the Traveler Verification System. Id. at 16. The Traveler Verification
System then runs an algorithm to compare the captured images against a preselected gallery of
photos and transmits the result of the comparison back to the original imaging device, CBP
computer stations, and CBP mobile devices. Id. at 17. In support of these contentions, plaintiffs
principally rely on documents provided by the government during discovery that detail the
technical specifications of the Biometric Entry and Exit System. See id. at 14-17.
The government argues that the system does not satisfy the limitations of Claim 6 of the
’344 Patent because it does not involve video—realtime or otherwise—and it is not displayed at
an emergency response agency. See generally Def.’s Resp. Particularly, the government states
that “[n]one of the evidence [p]laintiffs cite even suggests the [a]ccused [s]ystem performs a
process involving ‘video’ of any kind,” id. at 7-8, and that “[p]laintiffs failed to cite any evidence
showing that such purported video is ‘realtime.’” Id. at 13. Therefore, the principal questions
disputed by the parties are (1) whether the live photographic images sent by the system constitute
video, (2) whether the up to nearly 2 second delay caused by the matching algorithm causes the
transmission to not be in realtime, and (3) whether the video is displayed at an emergency
response agency.
B. The “Video” Limitation
The government argues that plaintiffs have failed to establish that the any sort of video is
taken and sent via the Biometric Entry and Exit System. Plaintiffs must prove that the accused
system meets all the elements of the claim in order to make out a case for infringement. See
Cormack v. United States, 122 Fed. Cl. 691, 700 (2015) (“The [p]laintiff’s failure to meet even
one element within a claim, literally or by its substantial equivalent, negates a finding of
infringement.”). To meet the video limitation, plaintiffs rely on the expert testimony of Dr.
Clifford Reader who testified that “video . . . simply comprises a succession of digital images
over time. . . . [A]t its core, video is a set of digital images.” Hr’g Tr. 54:21 to 55:5 (July 2,

7

2018). 8 To prove their contention that video is captured and transmitted by the system,
plaintiffs point to the accused system’s technical documents, which discuss the collection and
transmission of “live biometric images” in the plural. Pls.’ Mot. at 16. Hr’g Tr. 24:7-20
(September 23, 2021). 9 They contend that the multiple live images sent via the system fit within
Dr. Reader’s testimony as to what constitutes video. Hr’g Tr. at 23:4-16. The government
opposes this interpretation and maintains that no video is involved with the accused system.
Def.’s Resp. at 8-9.
When viewing the evidence in the light most favorable to the nonmoving party, the “live
biometric images” discussed in the technical documents do not satisfy the video limitation of
Claim 6 of the ’344 Patent. While plaintiffs rely on expert testimony that video is “a succession
of digital images over time,” Pls.’ Reply at 6, they fail to consider the second half of Dr.
Reader’s testimony that “video is a set of digital images.” Hr’g Tr. 55:4-5 (July 2, 2018)
(emphasis added). While the technical documents explain that multiple images of a traveler may
be taken and sent via the system, there is nothing in those documents that shows a set of digital
images are sent that would constitute a video when viewed in succession. Plaintiffs further argue
that the training manuals, which show how the system actually operates as opposed to just how it
should operate, refer to “live photographic images” in the plural, Pls.’ Mot., Ex. 12 at 458, and
this again, in the plaintiffs’ view, satisfies the video limitation of the claim. See Hr’g Tr. 40:821. The fact that multiple images may be sent via the system does not itself turn those pictures
into video without those pictures being part of a connected set. Rather, the images of the display
given in the technical documents show two photos—the captured photo and the stock photo for
comparison—and no video. See Pls.’ Mot., Ex. 7 at 275, 298, 334. When viewing the facts in
the light most favorable to the nonmoving party, plaintiffs have failed to prove that any video is
generated, transmitted, or displayed in order to fall within the contemplation of Claim 6 of the
’344 Patent. As such, plaintiffs have not met their burden of showing that all elements of the
claim are met, and the court must deny the motion for partial summary judgment. Nonetheless,
the government’s other contentions deserve analysis because they will affect future proceedings
regarding each of the three patents at issue. 10
C. The “Realtime” Limitation

8

The government suggested that plaintiffs failed to follow court instructions by not
providing further expert testimony. Def.’s Resp. at 11. The court’s statement that expertise
beyond that of an ordinary person in the art “would be helpful” was not a requirement of further
expert testimony. See 3rd Eye Surveillance, 140 Fed. Cl. at 59.
9

The date will be omitted from future citations to the transcript of the hearing held on
September 23, 2021.
10

The court notes that the other two patents at issue, the ’085 and ’980 patents, are not
limited to video images because they consistently refer to “imaging device” and “realtime
imagery” in the claims, rather than “realtime video,” as does the ’344 Patent. Compare ’085
Patent, Claim 1, line 66; Claim 7, line 22; and ’980 Patent, Claim 1, line 38, Claim 11, line 23,
with ’344 Patent, Claim 1, line 19; Claim 6, line 62.
8

As to the second question of whether the transmission would constitute “realtime,” the
government argues that the “less than 2 seconds” required to compare the captured photo with
the gallery photos is an “intentional delay” that renders the transmission not in realtime. Def.’s
Resp. at 16 (quoting Pls.’ Mot., Ex. 13 at 501). The court construed “realtime video” and its
variants to mean “video or other pictoral or representational images derived from cameras or
sensors made available for viewing as the actual events occur, subject to the laws of physics and
the capability of the technology employed respecting transmission.” 3rd Eye Surveillance, 140
Fed. Cl. at 61. 11 Plaintiffs argue that the delay is part of the invention itself and is contemplated
by the embodiment of the patent. Pls.’ Reply at 8. Although Claim 6 does not, other claims
within the ’344 Patent, as well as the ’980 and ’085 patents, specify “processing” of realtime
video or realtime images within the claims. See, e.g., ’344 Patent, col. 8, lines 49-56; ’085
Patent, Claim 1, line 65; Claim 7, line 27; Claim 38, line 52, Claim 56, line 33, ’980 Patent,
Claim 1, line 43; Claim 11, line 27; Claim 31, line 53. The term “processing” has not been
construed by the court. Moreover, the first embodiment of the ’344 Patent states “[t]he security
alarm system also includes a central station with means for processing and displaying realtime
video.” Id., col. 2, lines 5-8 (emphasis added).
When viewing the facts in the light most favorable to the non-movant, the delay imposed
by the processing algorithm is simply part of the “capability of the technology employed” which
the court determined to be part of the meaning of “realtime,” 3rd Eye Surveillance, 140 Fed. Cl.
at 61. The matching algorithm used to compare the captured photo and the gallery photos is part
of the patented technology, and any resulting delay—especially one as minimal as “less than 2
seconds”—was contemplated by the patent itself where the embodiment provides for
“processing.” The realtime nature of the transmission is further supported by the technical
documents which show that the captured photo is displayed as “live,” see e.g., Pls.’ Mot., Ex. 8
at 334, the plain meaning of which encapsulates instantaneous or realtime. While the
government is correct that this is in fact an intentional delay, the delay is contemplated by the
patent and by the court in its claim construction. The transmission from the Traveler
Verification System to CBP workstations and mobile devices is in realtime despite the “less than
two second” delay imposed by the processing algorithm.
D. The “Display” Limitation
The government lastly argues that the Biometric Entry and Exit System does not
“display[] realtime video . . . at the emergency response agency.” ’344 Patent, col. 9, lines 4-5.
Specifically, the government argues that plaintiffs failed to prove that realtime video is displayed
by the system and also challenges that the secured location and the emergency response agency
cannot be at the same location. Def.’s Resp. at 19. Plaintiffs reply that the technical documents
11

The government argues that plaintiffs have made inconsistent arguments both at the
claim construction hearing and in proceedings before the Patent Trial and Appeal Board
(“PTAB”). Def.’s Resp. 17-18. The court is not persuaded by these arguments as it is expected
that parties will change their arguments after a final decision for claim construction has been
rendered, and the PTAB decision was vacated pursuant to the Supreme Court’s decision in
Return Mail, Inc. v. United States Postal Service, ___ U.S. ___, 139 S. Ct. 1853 (2019). See IPR
2016-01041 Order, ECF No. 304.
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support that the transmission is displayed and that claim construction addressed that “a central
monitoring station may be associated with . . . a government agency” that provides a response.
3rd Eye Surveillance, 140 Fed. Cl. at 60 (internal quotations omitted).
The technical documents provide that “[t]he Traveler Information panel displays the live
photo matched to the manifest or document photo” and the provided photos of the system are
consistent with this step. Pls.’ Mot., Ex. 7 at 274. Further, the documents show that [***]. Id.,
Ex. 9 at 393. The fact that [***]. First, the court previously stated that the “monitoring station
may be associated with . . . a government agency.” 3rd Eye Surveillance, 140 Fed. Cl. at 60
(internal quotation marks omitted). CBP is both a government agency and an emergency
response agency in that it fulfills a law enforcement role. Further, the technical documents
indicate that airline cameras may take and send the captured photos and receive the results, Pls.’
Mot., Ex. 13 at 501, 503. Ultimately, the patent requires only that a transmission occur from the
secured location to a central computer to an emergency response agency. The [***]. Pls.’ Mot.,
Ex. 13 at 501. This process satisfies the “display” limitation of Claim 6.
CONCLUSION
For the reason that the accused infringing devices employ realtime imagery rather than
realtime video, plaintiffs’ motion for partial summary judgment based on Claim 6 of the ’344
patent is DENIED.
It is so ORDERED.

s/ Charles F. Lettow
Charles F. Lettow
Senior Judge

10