Tenaha Licensing LLC v. OnSolve LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Tenaha Licensing LLC (Texas)
  • Defendant: OnSolve, LLC (Delaware)
  • Plaintiff’s Counsel: Stamoulis & Associates, LLC; Rabicoff Law LLC
• Case Identification: 1:19-cv-02335, D. Del., 12/22/2019
• Venue Allegations: Venue is alleged to be proper because Defendant is incorporated in Delaware and has committed acts of infringement in the District.
• Core Dispute: Plaintiff alleges that Defendant’s emergency notification products infringe a patent related to systems for relaying wide-area alerts to personal, wearable devices.
• Technical Context: The technology concerns emergency alert systems that bridge large-scale public warnings (e.g., weather alerts) with localized, personal notification devices.
• Key Procedural History: The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patent-in-suit.

Case Timeline

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

U.S. Patent No. 8,238,869 - "Lifesaver personal alert and notification device," Issued August 7, 2012

The Invention Explained

• Problem Addressed: The patent identifies a gap in existing alert systems. Wide-area systems (e.g., sirens, emergency radio broadcasts) fail to reach individuals not actively using a specific receiver, while local-area systems (e.g., restaurant pagers) are not designed for public safety emergencies (Compl., Ex. 1, ’869 Patent, col. 1:13-56).
• The Patented Solution: The invention describes a two-tiered system. A "trigger device" detects a signal from a "wide area notification device" (like a tsunami siren or weather radio). This trigger automatically activates a "low-range transceiver" located within the wide-area zone. This low-range transceiver then locally broadcasts an emergency alert to a plurality of personal, "wearable transceivers," effectively rebroadcasting the large-scale alert to individuals in a specific, localized area like a hotel complex or airport (’869 Patent, col. 2:1-12; Fig. 1A). The system is also designed to allow an operator to manually send non-emergency, user-specific messages through the same low-range transceiver (’869 Patent, col. 3:1-5).
• Technical Importance: This approach seeks to provide automated, localized, and personal emergency alerts without requiring manual intervention or reliance on individuals being near a specific type of public warning device (’869 Patent, col. 2:1-7).

Key Claims at a Glance

• The complaint asserts at least independent claim 15 (Compl. ¶11).
• Essential Elements of Claim 15 (Method):
  • Using a low-range transceiver to automatically relay a first emergency notification signal from a wide area notification device within a wide area notification area.
  • Providing an audible and/or visible alert notification in response to the first emergency notification signal.
  • Manually, and independently from the first signal, providing a second non-emergency notification signal to at least one user via the low-range transceiver.
  • The non-emergency signal is user-specific and event-specific and is transmitted by an operator to a wireless transmitter worn by a user, where the user is a person other than the operator.
• The complaint does not explicitly reserve the right to assert other claims, but its reference to "at least exemplary claims 15" suggests it may assert additional claims later (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

• The complaint identifies "at least OnSolve's The Cue" as an infringing product, referring to it as one of the "Exemplary OnSolve Products" (Compl. ¶11).

Functionality and Market Context

• The complaint does not provide any specific factual details regarding the technical operation or features of "The Cue" product. It alleges in a conclusory manner that the product practices the technology claimed by the ’869 Patent (Compl. ¶17). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges that Defendant directly infringes, induces infringement, and contributes to the infringement of at least claim 15 of the ’869 Patent (Compl. ¶11, 15, 16). The infringement allegations are supported by reference to "claim charts of Exhibit 2," which is incorporated by reference but was not filed with the complaint (Compl. ¶17-18). The complaint does not provide sufficient detail for analysis of infringement via a claim chart.

The narrative infringement theory is that Defendant’s "Exemplary OnSolve Products" practice the claimed method by being made, used, sold, or imported in the United States (Compl. ¶11). The complaint also alleges direct infringement through internal testing and use by Defendant's employees (Compl. ¶12). The allegations cover both literal infringement and infringement under the doctrine of equivalents (Compl. ¶11).

V. Key Claim Terms for Construction

• The Term: "wide area notification device" (Claim 15)

  • Context and Importance: The scope of this term defines the initial trigger for the claimed method. Its construction will be critical to determining whether the signal source for the accused system qualifies under the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states the term refers to "all notification devices that are activated by a command central or activation mechanism from a remote location" (’869 Patent, col. 4:53-56).
    • Evidence for a Narrower Interpretation: The patent repeatedly lists specific examples such as a "siren tower, a tone alert radio, a telephone, a pager, a computer, and a TV set" (’869 Patent, Claim 16; col. 7:65-col. 8:1), which a court could use to limit the term to similar, conventional public alert systems.

• The Term: "low-range transceiver" (Claim 15)

  • Context and Importance: This term is central to the claimed invention's architecture of local rebroadcasting. The definition of "low-range" will be a key point of contention, determining whether the accused system’s hardware falls within the claim scope.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent defines the term functionally, stating its service zone is "smaller than the wide area notification zone" (’869 Patent, col. 4:36-40). This could be read to cover a wide variety of modern, short-range communication technologies.
    • Evidence for a Narrower Interpretation: The specification provides specific examples, noting that preferred transceivers "will operate using the family radio spectrum of frequencies (462 and 467 MHz)" and will have a service area of "less than 20 km" (’869 Patent, col. 4:40-46; col. 8:7-10). A party could argue these examples limit the scope of the term.

• The Term: "automatically relay" (Claim 15)

  • Context and Importance: This term defines the core automated function of the claimed method. Practitioners may focus on this term to dispute whether an accused system operates "automatically" or requires some form of user or system-level intervention that falls outside the scope of the claim.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent contrasts the automatic emergency signal with the "manual" non-emergency signal, suggesting "automatically" means simply without the type of operator input required for the non-emergency function (’869 Patent, Claim 15).
    • Evidence for a Narrower Interpretation: The specification describes the process as the low-range transceiver "automatically (i.e., without input or other immediate activity of a person) translate[s] the signal received from the trigger devices" (’869 Patent, col. 5:45-48). This could be argued to require a complete lack of any human or intermediate software-based decision making.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement by asserting that Defendant sells its products to customers and provides "product literature and website materials inducing end users and others to use its products in the customary and intended manner that infringes" (Compl. ¶14, 15). Contributory infringement is alleged based on selling products for use in a manner that infringes (Compl. ¶16).
• Willful Infringement: The complaint does not allege pre-suit knowledge of the patent. Willfulness allegations appear to be based on post-suit conduct, as the complaint asserts that its filing "constitutes notice and actual knowledge" and that Defendant's infringement continues despite this notice (Compl. ¶13, 14).

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

1. A primary issue will be one of factual evidence: Given that the complaint lacks specific technical details about the accused product and relies on an unfiled exhibit, a central question will be whether discovery reveals evidence that the "OnSolve The Cue" system actually performs all steps of the asserted method claim, particularly the dual-mode functionality of both automatic emergency relay and manual non-emergency messaging.

2. The case will also present a question of claim scope: Can the term "wide area notification device," which is exemplified in the patent with 2005-era technologies like siren towers and TAR radios, be construed to cover the modern, potentially internet-based data sources that may trigger the accused system?

3. A key legal and factual question will be one of functional distinction: Does the accused system perform two distinct and independent functions as required by Claim 15—an "automatically relay[ed]" emergency signal and a "manually... provid[ed]" non-emergency signal—or are these functions integrated in a way that falls outside the claim's specific structure?