DCT
2:17-cv-06397
Tenaha Licensing LLC v. Slomin's Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tenaha Licensing LLC (Texas)
- Defendant: Slomin's Inc. (New York)
- Plaintiff’s Counsel: Watson LLP
- Case Identification: 1:17-cv-06397, E.D.N.Y., 11/02/2017
- Venue Allegations: Venue is alleged to be proper because the Defendant resides in the district, has committed alleged acts of infringement in the district, and maintains a regular and established place of business there.
- Core Dispute: Plaintiff alleges that Defendant’s Home Security System infringes a patent related to methods for providing both automated emergency and manual non-emergency notifications.
- Technical Context: The technology concerns personal alert systems that integrate wide-area emergency broadcasts with localized, personal communication capabilities.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or specific licensing history concerning the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2005-06-23 | U.S. Patent No. 8,238,869 Priority Date |
| 2012-08-07 | U.S. Patent No. 8,238,869 Issued |
| 2017-11-02 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,238,869 - "Lifesaver Personal Alert and Notification Device"
The Invention Explained
- Problem Addressed: The patent’s background section describes the limitations of then-current alert systems. Wide-area systems, such as public sirens or radio alerts for natural disasters, often fail to reach individuals in noisy or isolated environments. Conversely, local-area systems, like restaurant pagers, are not designed for disseminating public emergency information (’869 Patent, col. 1:12-42).
- The Patented Solution: The invention proposes a hybrid system that bridges this gap. A "trigger device" is configured to receive a signal from a "wide area notification device" (e.g., a siren or weather radio). This trigger then automatically activates a local, "low-range transceiver" to broadcast an emergency alert to multiple "wearable transceivers." The same low-range transceiver can also be used manually by an operator to send non-emergency, personal messages to users (’869 Patent, Abstract; col. 2:1-11).
- Technical Importance: The described technology seeks to combine the broad-reach capability of public emergency alert networks with the targeted, personal delivery of localized paging systems, creating a more reliable and versatile notification method (’869 Patent, col. 2:58-62).
Key Claims at a Glance
- The complaint asserts independent claim 15 and dependent claim 18 (’Compl. ¶16).
- Independent Claim 15:
- Using a low-range transceiver to automatically relay a first emergency notification signal from a wide area notification device, and providing an audible/visible alert in response.
- Manually and independently 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, transmitted by an operator of the low-range transceiver 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.
III. The Accused Instrumentality
Product Identification
The "Slomin's Home Security System" and associated methods are the accused instrumentalities (Compl. ¶¶1, 19).
Functionality and Market Context
The complaint alleges the accused system allows a user to receive both emergency and non-emergency notifications (Compl. ¶19). Emergency notifications, such as those for carbon monoxide or smoke detection, can be sent to a user's mobile device (Compl. ¶19). Non-emergency notifications, such as an alert that a garage door is in use, can also be sent to a mobile device (Compl. ¶19). The system is described as utilizing a "low-range transceiver (e.g., Z-wave controller)" that relays alerts from the "Slomin's Home Security System connected to the Internet and related Slomin's Home Security System servers," which are alleged to function as the "wide area notification device" (Compl. ¶20).
IV. Analysis of Infringement Allegations
'869 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| using a low-range transceiver to automatically relay within a wide area notification area a first emergency notification signal from a wide area notification device, and to further provide an audible and/or visible alert notification in response to the first emergency notification signal; | The system uses a Z-wave controller (low-range transceiver) to automatically relay a fire alert (emergency signal) from the Slomin's servers (wide area notification device), which results in an audible/visible notification on a user's smartphone. | ¶20 | col. 7:9-14 |
| and manually, and independently from the first emergency notification signal, providing a second non-emergency notification signal to at least one of the plurality of users using the low-range transceiver, | A user can program non-emergency notifications (e.g., garage door alerts) through software, a process that is manual and independent from the automatic emergency alerts (e.g., smoke/fire). | ¶21 | col. 8:5-13 |
| wherein the non-emergency notification signal is a user-specific and event-specific notification signal that is transmitted by an operator of the low-range transceiver to a wireless transmitter that is worn by a user, wherein the user is a person other than the operator. | A user (operator) configures the Z-wave controller to send specific notifications to another person's mobile device (wireless transmitter), who is assigned to receive notifications but is a different person from the one who configured the system. | ¶21 | col. 11:4-12 |
No probative visual evidence provided in complaint.
- Identified Points of Contention:
- Scope Question: A central issue may be whether the "Slomin's Home Security System connected to the Internet and related Slomin's Home Security System servers" (Compl. ¶20) qualifies as a "wide area notification device" under the patent's definition. The complaint makes this allegation, but the patent specification primarily provides examples of public alert systems like siren towers and Tone Alert Radios (’869 Patent, col. 4:14-15), raising the question of whether a private, internet-based server architecture falls within the claim's scope.
- Scope Question: The infringement theory relies on a user's "mobile device" or "smartphone" (Compl. ¶¶19, 21) satisfying the claim limitation "a wireless transmitter that is worn by a user" (’869 Patent, col. 11:10-11). The patent specification describes preferred "wearable transceivers" as items like a "pendant, a ring, a bracelet, a wrist watch, or a pager" (’869 Patent, col. 8:51-54), which could raise a dispute over whether a smartphone, often carried in a pocket or purse rather than physically worn, meets this definition.
- Technical Question: What evidence supports the allegation that the accused system is used in a manner where the "operator" who configures the notifications is a different person from the "user" who receives them on a worn device? The complaint alleges this capability (Compl. ¶21), but demonstrating that this specific configuration occurs in practice will be an evidentiary matter.
V. Key Claim Terms for Construction
The Term: "wide area notification device"
- Context and Importance: The infringement allegation hinges on construing the Slomin's internet servers as a "wide area notification device" (Compl. ¶20). The definition of this term is therefore foundational to the plaintiff's case.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent defines the term as referring to "all notification devices that are activated by a command central or activation mechanism from a remote location" over significant distances (’869 Patent, col. 4:55-60). This language could support a construction that includes any remote server-based system.
- Evidence for a Narrower Interpretation: The specification consistently provides examples rooted in public civil defense and weather systems, such as a "coastal siren," a "TAR located in a hotel resort," or a TV set receiving a storm alert from the National Weather Service (’869 Patent, col. 4:1-10; col. 1:23-29). This could support a narrower construction limited to systems that broadcast public emergency information.
The Term: "wireless transmitter that is worn by a user"
- Context and Importance: Plaintiff's infringement theory depends on a user's "mobile device" (Compl. ¶19) meeting this limitation. Practitioners may focus on this term because modern smartphones are carried, but not necessarily "worn" in the same manner as the patent's examples.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "wearable transceiver" is defined functionally as being "sufficiently small to allow the transceiver to be worn on the body, in a pocket of a garment, or in a handheld purse or small backpack" (’869 Patent, col. 4:60-65). This language explicitly includes being carried in a pocket or purse, which could support including a smartphone.
- Evidence for a Narrower Interpretation: The patent repeatedly lists specific examples of worn items, such as a "pendant, a ring, a bracelet, a wrist watch, or a pager" (’869 Patent, col. 8:51-54). An argument could be made that these examples, which are physically attached to the person, should guide the term's meaning to exclude a general-purpose device like a smartphone that is merely carried.
VI. Other Allegations
- Indirect Infringement: The complaint alleges contributory and induced infringement by Defendant making, using, and selling the Accused Products (Compl. ¶15). The complaint does not specify the factual basis for inducement, such as by pointing to user manuals that instruct on infringing use.
- Willful Infringement: The complaint alleges that upon information and belief, Defendant has known of the ’869 Patent and that its infringement has been willful (Compl. ¶25). No specific facts are provided to substantiate pre-suit knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "wide area notification device", which the patent exemplifies with public broadcast systems like sirens and weather radios, be construed to cover a private, internet-based home security server infrastructure as alleged in the complaint?
- A second key question of definitional scope will be whether a modern "smartphone", typically carried in a pocket or purse, satisfies the claim limitation of a "wireless transmitter that is worn by a user", given the patent's definition that includes items carried in a pocket but whose specific examples are items physically affixed to a person like a bracelet or pendant.
- A central evidentiary question will be whether the plaintiff can demonstrate that the accused system is used in a configuration that meets the claim's specific requirement of an "operator" transmitting a signal to a different "user," a necessary element of the asserted independent claim.