DCT
1:22-cv-00160
KIHOMAC v. Meosphere
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: KIHOMAC, Inc. (Virginia)
- Defendant: Meosphere, LLC DBA Lightning Kite, Emergent 3, Inc., and Preston Keller (Utah)
- Plaintiff’s Counsel: Tomchak Skolout; Alston & Bird LLP
- Case Identification: 1:22-cv-00160, D. Utah, 11/22/2022
- Venue Allegations: Venue is alleged to be proper in the District of Utah because Defendant Emergent 3 has committed acts of infringement, resides, and maintains a regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant Emergent 3’s emergency management software infringes a patent on integrated emergency notification systems, with further allegations of breach of contract and tortious conduct against a former employee and a former software developer.
- Technical Context: The technology relates to integrated software platforms for managing emergency situations, which provide real-time communication and location-based status updates between building occupants and first responders.
- Key Procedural History: The complaint details a complex business history where Plaintiff KIHOMAC acquired the patent-in-suit. Plaintiff alleges that a former employee (Defendant Keller) and a former software development partner (Defendant Lightning Kite), who both previously worked on KIHOMAC’s patented product, subsequently collaborated to create the accused infringing product. This history is central to the complaint’s allegations of willful infringement and other business torts.
Case Timeline
| Date | Event |
|---|---|
| 2016-01-22 | Priority Date for U.S. Patent No. 10,194,280 |
| 2016-01 | Tresit Group collaboration with Lightning Kite begins |
| 2017-12 | KIHOMAC acquires Tresit Group |
| 2018-01 | Preston Keller joins KIHOMAC |
| 2018-06-18 | Lightning Kite signs non-compete agreement with KIHOMAC |
| 2019-01-29 | U.S. Patent No. 10,194,280 issues |
| 2020-01 | Preston Keller promoted to DIR-S lead |
| 2020-10-12 | Emergent 3's Secretary allegedly receives copy of '280 Patent |
| 2021-06-24 | Preston Keller resigns from KIHOMAC |
| 2021-08-02 | Preston Keller forms Emergent 3, Inc. |
| 2021-11 | Lightning Kite terminates service agreement with KIHOMAC |
| 2022-10 | KIHOMAC learns of accused E3 product |
| 2022-11-22 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 10,194,280, “SYSTEM AND METHOD FOR INTEGRATED EMERGENCY NOTIFICATION,” issued January 29, 2019. (Compl. ¶37).
U.S. Patent No. 10,194,280 - SYSTEM AND METHOD FOR INTEGRATED EMERGENCY NOTIFICATION
The Invention Explained
- Problem Addressed: The patent identifies a lack of an "immediate, effective way to simultaneously notify" people at a location and first responders during an emergency, and to "communicate relevant information easily." ('280 Patent, col. 1:21-28).
- The Patented Solution: The invention is a system allowing any user to trigger an alert from a communication device, which then provides integrated functions such as real-time chat and color-coded floor plans that are updated to show user status (e.g., "safe" or "unsafe"). ('280 Patent, Abstract; col. 2:37-41). This allows for a decentralized alert system that provides shared, location-specific situational awareness.
- Technical Importance: The technology aims to improve coordination and information flow during chaotic emergency events by consolidating alerting, status reporting, and communication into a single, accessible platform. ('280 Patent, col. 1:13-18).
Key Claims at a Glance
- The complaint asserts infringement of the '280 Patent and references a claim chart exhibit that was not attached to the publicly filed document (Compl. ¶66). Independent claims 1 and 10 appear to be the broadest method claims.
- Independent Claim 1 recites a method with the following essential elements:
- selecting, on a communication device, an alert to be sent out over a communication network;
- selecting an alert type;
- identifying one or more locations associated with the alert type, with at least one associated floor plan;
- selecting one of the at least one floor plan;
- viewing color coding on the floor plan that is updated in real-time to show status;
- designating one's present location on the selected floor plan; and
- receiving an action plan reminder, where the user is prompted to designate their location after a "predetermined period of inactivity."
- The complaint does not specify which dependent claims may be asserted.
III. The Accused Instrumentality
Product Identification
- The "E3" software application developed and offered for sale by Defendant Emergent 3. (Compl. ¶11, 62).
Functionality and Market Context
- The complaint describes the E3 product as an "emergency management software application." (Compl. ¶10). It alleges that the E3 product's "look and feel, as well as the functionality, are remarkably similar" to KIHOMAC's own DIR-S product, which embodies the patented technology. (Compl. ¶55). The complaint further alleges that the E3 application has the "same features as DIR-S." (Compl. ¶57). The complaint does not, however, provide a detailed technical breakdown of the E3 application's specific features or operation, relying instead on these allegations of identity.
IV. Analysis of Infringement Allegations
The complaint references a "representative claim chart" in Exhibit 6, which is not included in the filing. (Compl. ¶66). The following table summarizes the infringement theory for Claim 1 based on the narrative allegations.
U.S. Patent No. 10,194,280 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| selecting, on a communication device, an alert to be sent out... | The E3 application is an emergency management software that allows users to initiate alerts. | ¶10, ¶62 | col. 7:32-37 |
| selecting... an alert type; | The E3 application allows for the selection of different types of emergencies, a function alleged to be identical to Plaintiff's product. | ¶55, ¶57 | col. 7:40-41 |
| identifying... one or more locations... wherein at least one floor plan is associated... | The E3 application is alleged to have the same features as the DIR-S product, which uses interactive floor plans and maps. | ¶3, ¶57 | col. 7:42-46 |
| selecting... one of the at least one floor plan; | The E3 application allows users to select a specific floor plan corresponding to a location. | ¶3, ¶57 | col. 7:47-49 |
| viewing... color coding associated with the selected... floor plan, wherein the color coding is updated in real-time to show status; | The E3 application allegedly provides real-time status updates on a floor plan, a feature of the patented system. | ¶55, ¶57 | col. 7:50-54 |
| designating, on the communication device, where presently located on the selected... floor plan; | The E3 application allows users to indicate their position on a floor plan. | ¶3, ¶57 | col. 7:55-58 |
| receiving... an action plan reminder... wherein the user is prompted to designate where presently located after a predetermined period of inactivity. | The complaint does not provide sufficient detail for analysis of this element. | col. 7:59 - col. 8:4 |
- Identified Points of Contention:
- Evidentiary Question: The complaint's infringement theory rests heavily on the assertion that the E3 application is "nearly identical" or has the "same features" as Plaintiff's own product. (Compl. ¶55, ¶57). A central issue will be whether Plaintiff can produce sufficient technical evidence to prove, on an element-by-element basis, that the E3 application actually performs each claimed step.
- Technical Question: What evidence does the complaint provide that the accused E3 product implements the specific logic of prompting a user to designate their location "after a predetermined period of inactivity" as required by the final limitation of Claim 1? The complaint makes no specific factual allegation regarding this feature, which raises a question of a potential mismatch between the accused product's functionality and the claim language.
V. Key Claim Terms for Construction
The Term: "action plan reminder"
Context and Importance: This term appears in Claim 1. The infringement analysis may turn on whether generic notifications within the E3 application can be considered an "action plan reminder." Practitioners may focus on this term because its construction will define the scope of the required user notification.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not provide an explicit definition, which may support an argument that any system-generated prompt guiding a user's next action qualifies.
- Evidence for a Narrower Interpretation: The specification provides examples of an "action plan" that comprises specific, standardized options such as "run, fight and hide." ('280 Patent, col. 2:5-8). This could support a narrower construction requiring a reminder related to a pre-defined, structured response protocol.
The Term: "prompted to designate where presently located after a predetermined period of inactivity"
Context and Importance: This clause in Claim 1 recites a specific, conditional function. Proving infringement of this element requires showing not just a location-designation feature, but one that is triggered by a specific condition (user inactivity).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that any time-based prompt for a status or location update, regardless of the underlying trigger, meets this limitation.
- Evidence for a Narrower Interpretation: The specification describes this feature with a specific example: "if the user has not had activity associated with the alert within a predetermined time period (i.e., 60 seconds), a prompt may be displayed asking the user to update his/her status." ('280 Patent, col. 4:15-18). This language may support a narrower construction requiring the system to specifically monitor user inactivity relative to the alert and then issue a prompt.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Emergent 3 induces infringement by distributing promotional materials, including YouTube videos, that allegedly instruct customers on how to use the E3 application in an infringing manner. (Compl. ¶64). It also alleges contributory infringement, asserting the E3 application is especially adapted for infringement and has no substantial non-infringing use. (Compl. ¶65).
- Willful Infringement: The complaint alleges that Defendant Emergent 3 had pre-suit knowledge of the '280 Patent. It specifically alleges that Emergent 3's Secretary was provided a copy of the patent on October 12, 2020, during investment discussions related to Plaintiff's product. (Compl. ¶67). The willfulness claim is further supported by the overarching narrative that a former employee and a former developer with intimate knowledge of Plaintiff's patented product created a competing, "nearly identical" product. (Compl. ¶55, ¶57). A screenshot from Defendant Lightning Kite’s website shows it advertising its work on Plaintiff’s “DIR-S” product as a featured client, which Plaintiff may use to establish the close relationship between the parties and the defendants' knowledge of the technology. (Compl. ¶33).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of technical proof: can Plaintiff substantiate its allegations that the accused E3 application is "nearly identical" to its own product by providing specific, element-by-element evidence showing that the E3 application performs every step of the asserted claims?
- A core issue will be one of functional scope: does the accused E3 application's notification and status-update system perform the specific, conditional logic required by Claim 1—namely, prompting a user for a location update triggered by a "predetermined period of inactivity"—or does its functionality fall outside the precise scope of the claim language?