Verna IP Holdings LLC v. Alert Media Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Verna IP Holdings, LLC (New Mexico)
  • Defendant: Alert Media, Inc. (Delaware)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 6:23-cv-00373, W.D. Tex., 05/16/2023
• Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant has committed acts of infringement there, maintains a regular and established place of business in the district, and conducts substantial business in the forum.
• Core Dispute: Plaintiff alleges that Defendant’s systems for providing real-time alerts infringe a patent related to generating and distributing digitized voice alerts.
• Technical Context: The technology concerns systems for converting text-based alerts, such as those related to emergencies or security events, into digitized voice messages for automated broadcast to various electronic devices.
• Key Procedural History: The complaint alleges that Defendant has known of the patent-in-suit and its underlying technology since at least the filing date of a prior lawsuit between the same parties, Verna IP Holdings, LLC v. Alert Media, Inc., 6:21-cv-422. This prior litigation is cited as the basis for allegations of willful and indirect infringement.

Case Timeline

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

U.S. Patent No. 11,403,932 - "Digitized Voice Alerts"

• Patent Identification: U.S. Patent No. 11,403,932, "Digitized Voice Alerts", issued August 2, 2022.

The Invention Explained

• Problem Addressed: The patent describes a need for an "improved and efficient approach for transmitting or broadcasting instant voice alerts" in response to emergencies or for security monitoring, particularly for a "highly mobile society" where people may be driving or otherwise unable to read text-based alerts. (Compl. ¶9; ’932 Patent, col. 2:62-67).
• The Patented Solution: The invention provides methods and systems that can detect an event (e.g., an emergency or a sensor trigger), generate a text message, convert that text into a "digitized voice alert," and transmit it for automatic audio announcement on remote devices. (’932 Patent, Abstract; col. 3:22-34). The solution is described as capable of converting alerts into multiple languages and delivering them through specific cellular towers to target a geographic region or interrupting an in-progress phone call to deliver the alert. (’932 Patent, col. 3:55-67, col. 4:25-30).
• Technical Importance: The technology aims to provide immediate, audible alerts to the public or to system users, which can "save lives and resources," especially in situations where visual attention is limited, such as driving. (Compl. ¶9; ’932 Patent, col. 2:62-64).

Key Claims at a Glance

• The complaint asserts infringement of one or more of claims 1-18. (Compl. ¶8). Independent claims 1, 10, 17, and 18 are asserted.
• Independent Claim 1 (Method):
  • determining an emergency situation affecting a specified region and requiring emergency notification to wireless hand held device users in the specified region;
  • generating and converting a text message indicative of the emergency situation into a digitized voice alert;
  • converting the digitized voice alert into at least one language selected from a plurality of languages for broadcast of the digitized voice alert through the at least one wireless hand held device; and
  • transmitting the digitized voice alert through specific towers of a cellular communications network in the specified region for distribution of an emergency announcement about the emergency situation provided by the digitized voice alert to at least one wireless hand held device in communication with the specific towers of the cellular communications network in the specified region.
• The complaint reserves the right to assert dependent claims. (Compl. ¶8).

III. The Accused Instrumentality

• Product Identification: The complaint accuses unspecified "devices/products and systems" maintained, operated, and administered by Defendant Alert Media, Inc. (Compl. ¶8).
• Functionality and Market Context:
  • The accused instrumentalities are described as providing "instant/real-time Voice alerts automatically to remote electronic devices." (Compl. ¶7). The functionality involves the "automatic digitized conversion of text messages to voice alerts for transmission to remote electronic devices." (Compl. ¶9). The complaint alleges these products are used for purposes such as emergency and security monitoring. (Compl. ¶9).
  • The complaint does not provide further technical detail on the operation of the accused products but alleges Defendant's actions have led to "monetary and commercial benefit." (Compl. ¶8).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges that Alert Media’s products infringe the ’932 patent by providing systems that automatically convert text messages to voice alerts for transmission to remote devices. (Compl. ¶¶ 7, 9). The complaint states that support for these allegations is found in an attached Exhibit B, which was not included in the publicly filed document. (Compl. ¶10). Therefore, a detailed element-by-element analysis cannot be constructed from the provided documents. The narrative theory suggests that the Defendant's alert systems perform the core steps of the patented methods, including generating voice alerts for remote transmission. (Compl. ¶9).

• Identified Points of Contention: Based on the complaint’s narrative and the patent’s claims, the infringement analysis may raise several questions:
  • Scope Questions: Claim 1 requires transmitting an alert "through specific towers of a cellular communications network in the specified region." A central question may be whether the accused system performs such geographically targeted, tower-specific transmission, or if it uses a more general internet-based distribution method that does not rely on selecting "specific towers."
  • Technical Questions: Claim 1 also requires "converting the digitized voice alert into at least one language selected from a plurality of languages." A key evidentiary question will be whether the accused products perform this multi-language conversion as a feature and, if so, whether it functions as required by the claim. The complaint’s general allegations do not specify how or if the accused products meet this limitation.

V. Key Claim Terms for Construction

• The Term: "digitized voice alert"

• Context and Importance: This term appears in every independent claim and is central to the invention. The definition will be critical to determining if the output of the accused system meets this limitation. Practitioners may focus on this term because its construction will dictate whether a simple audio file qualifies, or if it must possess specific characteristics tied to the "text message" from which it is converted.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes the term in functional ways, such as an "automatic audio announcement" or a "text-to-voice alert," which could support a broad definition covering various forms of synthesized speech. (’932 Patent, col. 2:16-17, col. 2:37-39).
  • Evidence for a Narrower Interpretation: The claims consistently tie the "digitized voice alert" to being converted from a "text message indicative of the activity" or "emergency situation." (’932 Patent, col. 29:41-42, col. 31:21-23). This could support a narrower interpretation requiring a direct text-to-speech conversion process for any accused alert.

• The Term: "transmitting the digitized voice alert through specific towers of a cellular communications network"

• Context and Importance: This limitation from claim 1 defines the method of distribution. The case may turn on whether the accused system, which likely operates over the internet, can be said to transmit "through specific towers." Defendant may argue its system is network-agnostic, while Plaintiff may argue that any cellular delivery ultimately routes through specific towers.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent discusses its technology in the context of the Personal Localized Alerting Network ("PLAN"), which distributes alerts geographically. (’932 Patent, col. 19:6-14). This context could support interpreting the term functionally to mean any geographically targeted cellular broadcast.
  • Evidence for a Narrower Interpretation: The plain language of the claim requires transmission "through specific towers," suggesting an active selection or targeting of cellular infrastructure, not just a general broadcast that happens to be received via towers. The specification reinforces this by describing distribution "in the specified region." (’932 Patent, col. 30:48-54).

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement. (Compl. ¶¶ 11-12). Inducement is based on allegations that Alert Media "actively encouraged or instructed" its customers on how to use its products in an infringing manner. (Compl. ¶11). Contributory infringement is based on allegations that the accused product components lack substantial non-infringing uses. (Compl. ¶12). For both, knowledge is alleged based on the prior lawsuit. (Compl. ¶¶ 11-12).
• Willful Infringement: The complaint alleges willful infringement, seeking treble damages. (Compl. Prayer for Relief ¶e). The basis for willfulness is the allegation that Alert Media "has known of the ’932 patent, or should have known of it, and the technology underlying it from at least the filing date of" the prior litigation between the parties. (Compl. ¶9).

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

• A core issue will be one of claim scope and technical operation: Does the accused alert system, likely a software-as-a-service platform, practice the specific distribution method of transmitting "through specific towers of a cellular communications network," as required by claim 1, or is there a fundamental mismatch with how modern IP-based alert systems function?
• A second central question will be evidentiary: Can Plaintiff produce evidence showing that Defendant's system performs all the claimed steps, particularly the conversion of alerts into "at least one language selected from a plurality of languages," a specific feature not detailed in the complaint's general allegations?
• Finally, the allegation of willfulness will depend on the proceedings and outcome of the prior litigation, Verna IP Holdings v. Alert Media. The extent of Defendant's knowledge and intent, established in that earlier case, will be a critical factual question for the court.