JCI Sues Genetec For Patent Infringement

By Joey Walter, Published Jul 13, 2020, 09:55am EDT (Info+)

Surprisingly, security giant JCI has sued their partner, security software developer Genetec, for patent infringement.

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Inside this note, we:

  • Share the court complaint
  • Examine JCI's claims
  • Share response from Genetec and JCI
  • Compare to JCI's lawsuit against Wyze
  • Analyze risks involved for both sides

Complaint *****

** **** *, ****, ***, ***** its '***********' ********, ***** **** ** Delaware**** * **-**** *********:

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** ****, *********** *** ******** ** Tyco(*** ****** *** ***** ******** ** JCI).

Complaint ********

*** **** ** ***** ** ******* filed ** *********** ** **** (** Raymond ************) *** ** **** (******* *********, **** ** ********** ******** *********** at ***). *** ********* ********:

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*** ********* **** ****** ***********'* ******* of ****** ***** ************ / ****** control *******:

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Violations *******

*** ** **. ***** **** ******* is ********* * ** ***** *******:

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Object ******** *** *********

*** ***** ****** ***** ** *** 2001"****** *** ********* *** ****** ******** and *********", ****** ****** *,***,***.

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*******'* ********** ******** ***** ********* ************** **************** **** ******** ****** ********* *** moving *******.

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*********** ******'* **** ***** **:

Moving ******* ** *** ***** ** **** ** *** ****** ***** ****** *** ********. These ******* *** ******** ** **** *** ** ********. This is determined either by comparison of the detected object against predetermined *************** ** ******* of interest or by manual user selection. [emphasis added]

** *** *********, *** ***** * case ** *** ***** ******'* ****** map ** **** ******* ** *****, starting ****:

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********, "**********" ********* ** ******* ** patent #*,***,***'* ****** – ** "**********" determine **** ****** ** ********, ********* reducing ***** ******:

*** ****** ** ***** * ******* said ****** ********* ********* ** ******** from *** ***** ********** *******,********,********,************, *******. [******** *****]

*********** ***** ************ ** **********'* *** of ****** ********** ** *********** *******, or ******* ** ***'* *** ****** selection ******:

********** ** ********** ** ********* ****** settings ** ********* *** ********** *** more ********* *************.The ********** *** ********** **** ************* ******, **** ** ******* ***** *** ******** ** ******* ********* **** *** ********.

****** ****** ******** ** ****** *** parameters *** **** ********* *************. [******** added]

Elevator ****** *******

*** ***** ****** ***** ** *** 2013"****** ******* ****** *** ******** ******** control *** ****** ********", ****** ****** 9,463,954.

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*******'* *********** **************** **************** **** ******* ******** ******* ** its ********.

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*** ******'* **** ***** **:

A ****** *** ****** *** ** ****** ******* ****** *** ** ******** ****** that overrides landing matrices that define *** ****** ** *** ****** ** *** ******** ******. The system overrides the landing matrices of the access control system in response to conditions defined by security system operators, such as emergency situations, and sends the landing matrices to elevator controllers for controlling the access to the floors. [emphasis added]

** *** *********, *** ***** * case ** *** **** ******'* ****** map ** **** ******* ** *****, starting ****:

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JCI ** *******

*** ******** ** *******, ** ** common ****** ******* **********.

Genetec **** "********"

*******'* ******** ** ************ ************-**** *********** ** **** *********:

******* ******** ** *** ******** *** integrity ** *** ****** ******. ** actively ***** ******* ****** ****** **** on *** *** *** ** *********** with ***** ********** ********* (********* *** competitors) ** ****** ************ ******** ******.

******* *** *** * **** *** mutually ********** ************ **** ************’ *********, Johnson ********, ** ***** ****** ************ allegations **** ** ********* ** * surprise.

** ******* ******* ** **** ** good *****, *** *** ** ******* for *** ************ **** ******* ********, we *** ** ****** ****** *** matter **** ********* *** ********* *** dispute ** ******. ** **** **** moving ******* **** **** *****, **** knowledge ** **** *******, **** ** can *** **** ****** *** *************** with *********** ** ******* *** ******.

*** ******* **** *** ******** ** Genetec ** ******* **** ** ***** is ** ******* *** ******* ******* and ** ****** ******** **** ** the *********** *** **** *******.

******* ** ** *** ****** ***** the ******* ** ********** ***** *** security ************* ********* (~$*** ******* ****** revenue) *** *** ***** * ********** to ***** *** **** **** ******* is ***** **** ** ** ***** profits (*.*.******** ***** *******).

Another *** ****** *******

*** ** ********* *** ****-******* ******* ******** * *******, *******, ***** *** different **** *** ******* ******** ** the ******* *******.

*** **** *********** ****** ***** ** the **** ******* ** *** ****"******** ***** ************ ****** *** ****** with ****** *******", ****** ****** *,***,***.

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** **** ************ *** ***** **** ** ***, *** **** ******** ** *** up *** ******* ******** **** ***'* patents *** ******* *** **** *** should *** ****.

Strategy *** ***?

***** **** *** ** ***** **** is *** ******, ** ** ****** atypical. ****** ** ****** ************* *** others *** ****** ************. **** ** more ******* *** '******', *** "***-********** ********". *** ********* *** *** own ******* ***** *** ****** ******* businesses (*.*., *****, *********, ******** *****, etc.). *** ******* ********** ***** ** Avigilon's ****** ***********, ***** *** ****** controversial *** ***** ******** ** ***** any ***********.

****** **** **** ***********, *** ** both ************ *** ********** ** **** they *** *******, **** *** *** simply ***** * ***** *** * business ******* ** **** ****** ******** projects.

**** **** ** *********** ** *** is ** ** **** *** **** sue **** ********* ** ***** * lawsuits *** ** ***** ******** ** an ********** **** *** ** ******* to ************ ******* *** *******.

Key ******

******** ********** ** *** **** ******* Genetec:

*****, *** *********** ********* ****** ** fairly ******** ** **** ** *** patent's ******** ** *** **********, *********** will **** ** ******** * ***** that *******'* ******** ******** ******** ***********'* specific ******.

********, ******* *** * ******* ** taking ****** ** ****** (*.*., *****) despite *** **** ** ****** ***** in ***** **. ** ****,******** ** ******** *** *** **** this *** *** *** ** *****, increasing *** **** *****.

Votes / ****

Comments (38)

Software patents are the most difficult to defend. In most cases, it comes down to how well the patent was written.

Agree: 3
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Knowing a thing or two about OTIS's Compass protocol and system topology for destination dispatch, this makes no sense. Everyone that integrates to Compass has to do the same thing.

I don't see JCI suing OTIS, Mercury/HID (and all its partners), Braxos, et.al, who by their very use of the Compass protocol would be violating the "patent" in precisely the same way....... Why not? 🤔

Let's face it....software patents are almost all 🐮💩, especially in this industry. They are rubber-stamped by law-school dropouts in Crystal City who apparently don't know how to use Google to find prior art: Someone has a patent on "transmission of unformatted credential data over ethernet", and another on "sharing badge data across multiple facilities"....even though both had clear cases of prior art decades before.

This looks bad for JCI, because is suggests that if you can't win in the market, you try in the courtroom. It is doubly bad because Genetec is not going to just roll over, and can certainly bankroll a fight. Hand me the popcorn 🍿....this is going to be fun to watch.

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I wonder what JCI is expecting to get out of this. I can imagine that JCI doesn't really sell much Genetec, so there's not much loss there. However, Genetec can't possibly pay a sum of money that would be impactful to JCI, so I don't see that as a 'win' for JCI. If they lose, then their patent threats become weaker in the future.

I wonder if this is the start of a patent campaign for JCI? They had another lawsuit around their SmartVue product earlier in the year.

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I wonder if this is the start of a patent campaign for JCI?

That was my thought too, but I would have assumed they would start with smaller/easier opponents first.

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I would have assumed they would start with smaller/easier opponents first.

We only have public disclosure of who they sued. It's possible JCI has reached out to other companies as well. Related, if JCI / Sensormatic / etc. has contacted your company about patent licensing please let us know.

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JCI may view Genetec is small and easy - they're much smaller than JCI in every aspect (revenue, employees, legal counsel, etc...)

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If JCI views Genetec as "small and easy" or any variation of those words, then I'm pretty sure that JCI doesn't have the slightest damn clue who Genetec is or what they are about......which would be 100% par for the course for JCI as a whole.

Genetec may not be as big as JCI, but I feel pretty confident that they're full of a lot of piss and vinegar and are unlikely to lay down without a fight regardless of who that fight is against (see: prior action against Hikvision).

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Don't forget that Genetec is privately owned by the guy who started the company. He's an engineer, and he still writes code for fun. He's a black belt, and he once played guitar with Super Tramp. The dude took on HikVision and won - Hik is getting banned, and Genetec is growing. This is his baby, and his baby has made his legitimately wealthy. My gut says that he would be willing to throw 8 to 9 digits of his personal wealth at anyone who would try to hurt his baby.

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Pierre is a interesting guy. For sure i can see him fighting for a principle that he believe in. I've enjoyed the time I've spent with him.

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Yes - Johnson Controls has a healthy portfolio of Genetec customers, at least under Security Solutions. I have some Genetec customers, and all I can say is that the outcome better not change the support model and the supply chain relationship in any negative fashion.

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While the Kiwi portion may be a legitimate complaint, I'm not quite so sure that I understand how the second one is a legitimate complaint.

First, one thing to point out for correction in the article -- CompassPlus is the destination dispatch platform for Otis, and is not affiliated with Genetec in any way. However, Genetec DOES have a plug-in for the CompassPlus product.

If JCI is actually suggesting that just by writing a plug-in to another manufacturer's Destination Dispatch platform, they are violating this patent, then that is a bit scary to me -- not just for the implications of this patent, but for the implications to the concept of "integration" as a whole. Genetec has been a major leader when it comes to building out a library of plug-ins/integrations (or collaborating and allowing collaboration for such a library to be built), so the idea that they could be penalized for that is tough for me to swallow. Maybe by the letter of the law it's a violation, but I'd be curious to know the history of patent claims like this that don't deal with the full-on platform and instead just deal with a "connector". Could be a very interesting case in general depending on whether this kind of thing has been litigated before.

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While the Kiwi portion may be a legitimate complaint, I'm not quite so sure that I understand how the second one is a legitimate complaint.

I am confused, hows its legitimate.

From my perspective Sensormatic patent claims they are different from others because of "improving motion video object tracking performance with user input" in 2007.

It is an object of the present invention to provide a motion video tracking filter for use in data reduction.

It is an object of the present invention to provide a method for automated search and collection of motion video data of objects.

It is an object of the present invention to provide a method for improving motion video object tracking performance with user input.

I would love to see them proving those claims against prior art.

Or do you see something else?

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Sorry, I should have been more clear --

The Kiwi complaint may be legitimate, but I offer no opinion on whether it is or not. I didn't read closely enough to understand whether it may be or not, as that one appears to be an "in the weeds" type of patent claim that talks about the actual specifics of how processes are conducted within each of those applications.

The intention of my post was more to convey that my real issue/concern is around the second issue with CompassPlus, because that's not a Genetec platform -- they are effectively challenging an integration as being a patent infringement. While I'm sure that scenario has been litigated at some point in the past, that is not something I've ever considered as a possibility. If a manufacturer can be sued (and ultimately held liable) for simply writing an integration between their product and another product on the market, that's quite a concerning precedent for our industry.

Hopefully this is resolved amicably and without any fault being found. The last thing we should all want is for integrations to be targeted and companies to shy away from integrations for fear of lawsuits.

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JCI must meet the quarterly demands of shareholders.

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quarterly demands of shareholders.

While this may be driven by some form of financial plan, this type of action certainly won't help them in the short term (i.e. quarterly demands). Wyze has already tied them up in litigation for some time and Genetec certainly has the resources to do so as well.

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The closest comparison would be Avigilon's patent enforcement, which was highly controversial and never resulted in suing any competitors.

though there is this:

Axis / Avigilon Legal Battle Rises

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Great promotion for Genetec. I'm not surprised by JCI. Instead of trying to compete by making a better product, they resort to parasitical litigious behavior, typical for dinosaurs.

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The second claim from JCI about Destination Dispatch elevator control is an interesting one. I know a slew of other manufacturers that integrate with the OTIS CompassPlus and have the ability to limit access to certain floors and elevators based on their access level.

Will be interesting to see what comes of these claims.

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I added a poll about "who would you like to win?" Curious to see where opinion is.

Votes / Poll

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who would you like to win?

Milestone ;)

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This is a good example of a potential misalignment between the historical patent system and software or other newer technologies.

The invention of a mechanical tool can take massive amounts of time to get perfect. Copying a successfully developed tool has a significantly lower barrier to success. A patent can protect the hardware inventor from loss over coming up with a thing that people want to copy.

Software, on the other hand, can fall into the trap of the first main claim described above:

"Moving objects in the field of view of the motion video camera are detected. These objects are selected if they are of interest. This is determined either by comparison of the detected object against predetermined characteristics of objects of interest or by manual user selection. [emphasis added]"

I'm sure on closer inspection there's limitations in the scope of this patent, but a casual reading suggests that Sensormatic could claim to own rights to any implementation of detecting things in a camera's field of view. That paragraph takes a minute to write, not 1000's of construction permutations, but applies the same protection for Sensormatic as it would for Swan or Edison's final successful electric lamps.

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Good point. This was a similar issue with ObjectVideo/Avigilon patent for tripwire and metadata. It was so obvious and broad that it did more damage than good, related Axis Wins, Avigilon Tripwire Patent Annulled

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Interesting that in 2001 you could get that patent and that no one would consider the 20-30 years of work in the machine vision field where object recognition algorithms of all shapes and sizes had been deployed. I can think of numerous types we used at Computer Recognition Systems dating back to as early as 1979 (for example how we located a license plate for further processing). I didn't bother to read the patent, as that is a long established reflex.

The military (in multiple nations) have been at this even longer, for example this would be how missile targeting works. Did I miss something here?

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I can think of numerous types we used at Computer Recognition Systems dating back to as early as 1979

My understanding from reviewing patent cases over the years is that patents tend to get issued without a careful review of the previous literature with the understanding that they can later be challenged and invalidated, e.g., Are ObjectVideo's Patents Going to Be Invalidated?, Axis Wins, Avigilon Tripwire Patent Annulled

Obviously the downside is that you get lots of patents that are not properly vetted and cause a lot of problems down the line when companies try to enforce them (OV / Avigilon, e.g.).

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Without question John, major part of the problem. What I was pointing out was that I know we had prior art in this area and that lots of others did too. By 1990 almost all of the general algorithm categories were in play, what's changed is the decrease in cost from a variety of factors and improvements in speed and resolution. We even deployed a neural net based facial recognition system in the mid-1980's (based on work at Imperial College, which to this day still scores at the top of the NIST tests). Sure there continues to be innovation here and now this is all moving to the machine and deep learning approaches that we explored 35 years ago. History and corporate behavior will repeat, plus ca change, plus c'est la meme chose.

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I think a lot of an award comes down to the case officers at USPTO and their literacy in the specifics of the field. If no one in a small field notices a patent application go in and makes counter claims of prior art (especially back then before the big movement of socially sourcing art these days) it's quite possible that the claim looked legitimate and sound.

My concern here, I think, is with that, but also with what may often be a lack of protection-worthy unrecoverable sunk costs in the imagination of the process or algorithm behind a software patent.

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This is the fine work that the USPTO approves. I don't know if the patent application included any references to prior art, but to anyone that was a child, it wouldn't be needed. Also, I think you can make 6 of an item, before being deemed manufactured (specifics are irrelevant here), but this is an action performed by one individual, with no possible monetary gain.US6368227B1 - Method of swinging on a swing - Google Patents

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For the first patent: Doesn't Tesla, Google and others do the same thing on some of their self-driving technologies? This patent doesn't seem specific to video surveillance, why not go after other industries as well.

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Totally baffling move by JCI. They have many major customers that they have sold Genetec software into; millions of dollars worth each year....

My theory is that JCI wants "Tyco National Accounts" to sell JCI / Tyco Security Products solutions. So JCI brass are using this to drive a wedge between Genetec and National Accounts sales team.

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I hadn't thought about your second point before. Just to clarify, are you saying that because JCI wants Tyco folks to sell more Exacq they are intentionally poisoning the relationship with Genetec? In a way forcing Genetec to stop doing business with their sales force?

I would think that there could be better ways to accomplish that, and not have the legal expense. Simply strike them as an allowed vendor. Or say that there will be no more payments after a specific date.

It seems a bit of a reach to me, but it is an interesting theory.

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JCI wants Tyco folks to sell more Exacq they are intentionally poisoning the relationship with Genetec? In a way forcing Genetec to stop doing business with their sales force?

Yes, that's my theory. The claim is a stretch and Genetec is not a good target. Genetec has good leadership and a strong in-house legal team. It drives JCI leadership nuts that Tyco national accounts sells so much Genetec software and hardware.

I don't know exact numbers but if Tyco National Accounts sold $10M or $20M less Genetec and $10M or $20M more JCI in-house stuff I guess the lawsuit would pay. Still flawed thinking but it's the best motivation that I can come up with.

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JCI is always going to have to rely on outside partners, and our competition sells plenty of our security products. I say with a high degree of confidence that filing suit with Genetec is not about creating a wedge (but then again, I would not know for sure). It would alienate customers that are committed to the Genetec platform, and that would be extremely bad for business. I personally am not on board with the idea that 'selling blue' should be the lead, rather match the performance to the expectation.

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The blue products......sigh.

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So JCI brass are using this to drive a wedge between Genetec and National Accounts sales team.

I have no idea what JCI is doing here but my guess is the opposite: JCI is so big that they have no idea that another part of JCI is a strong partner to Genetec.

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I sell for JCI. And most of my bigger jobs I exclusively use Genetec. Why? Better software, more innovative, better tech support, better future, and I like their people (Genetec) more then our local manufacturer rep. I sell with product quality in mind, but also relationship, and I just really don't like the local manufacturer rep. So it's a no brainer for me.

A major part of why I came to JCI is that I could sell whatever I want. If that begins to change, that will begin the process of me re-evaluating my future with JCI. I highly doubt JCI will start pressuring the salespeople on what they can/cannot sell unless the product is federally banned like hikua.

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100% agreed re Genetec. And Sales management at Tyco just wants you to get the sale.

But the bean counters at head office see that the margin of the product manufacturing side plus the re-sale margin on the integration side adds up to more $$$ for JCI. When you sell Genetec JCI only gets the re-sale mark-up. Its flawed thinking but it exists at the top.

We both know that for many national accounts you win partly because you led with Genetec.

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Agreed. Every part of any company has a job to do, and in these pandemic times when revenue has been hit hard, the troll part of the company has to show their worth too.

Genetec should counter by upcharging licenses that are da-lusstra made cameras.

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If they decide to go to town on this, the entire exercise will eventually devolve into a prolonged, tiresome, expensive and sloppy pissing match about "improvement patents" and "modifications" etc. I was gonna be a lawyer. But I had my mother's dignity to consider. So I got into Video Surveillance instead.

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