Denver-based digital signage CMS company Four Winds Interactive has filed a lawsuit in Colorado to go after Silicon Valley-based 22 Miles over patent infringement, copyright infringement and something called Patent False Marking, in addition to other related claims.
FWI is claiming 22 Miles – which markets itself as an “innovative interactive digital signage solution vendor” – is marketing a wayfinding solution that infringes on a patent obtained by FWI two years ago. It’s also claiming 22 Miles has an unlicensed copy of FWI’s core software application and is using it to sell against FWI, even offering an FWI discount.
The suit, as well, raises a suggestion that 22 Miles has reverse-engineered Four Winds’ core software application.
The filing also suggests 22 Miles is promoting a claim of “patented digital technology” while there is, the lawsuit says, no record of 22 MILES having any pending or issued US patents.
The suit was filed last Friday in a US District Court. That filing – Case 16-cv-00704 in the US District Court for the District of Colorado, if you want to look it up – is on the public record. It makes for pretty interesting reading, including the following selected passages:
In 2014, a California company named 22 MILES that formally identified itself as an HR placement company with a single software product, entered the market for visual communications. Through its founder “Joey” Yu Zhao, 22 MILES claimed, after less than six months in the market, to be a leader in visual communications software, with “patented” technology and a full suite of visual communications software products. These products appeared remarkably similar to FWI’s software programs. By the end of 2015, 22 MILES began appearing with uncanny frequency at many of FWI’s customer opportunities and pitches.
Thereafter, FWI’s customers began to inform FWI that 22 MILES’ products looked similar to FWI products, that 22 MILES was offering them a “FWI Discount,” and, importantly, that 22 MILES had a copy of FWI’s software and was using it in demonstrations to potential customers. Based upon 22 MILES’ sudden offering of a software solution that appeared to read upon an FWI patent, and conduct that appeared to suggest that 22 MILES had somehow gained access to FWI’s proprietary technology, customer and sales information, FWI began looking closely at 22 MILES in early 2016.
The suit also suggests 22 Miles may have reverse-engineered, or been greatly inspired (my term) by FWI’s source code …
Further review of publicly available information revealed that 22 MILES’ “wayfinding” product (a method of assisting a user of a visual display in finding her/his way, akin to a map) infringes upon an FWI patent. And, despite 22 MILES claiming “patented technology” on multiple websites, no record of such patented technology exists. Finally, Internet-based information demonstrates that 22 MILES has somehow copied or mimicked FWI source code or reverse engineered FWI software. FWI initiates this action to stop 22 MILES from continuing to steal and profit from its unlawful use of FWI intellectual property.
Further in the claim, FWI’s lawyers suggest there is a pattern of behavior from the executive team at 22 Miles.
This investigation revealed that 22 MILES is no stranger to accusations of intellectual property theft: it is currently a co-defendant in a Florida trade secrets lawsuit, accused of stealing another of FWI competitor’s trade secrets relating to visual communication, and it was identified in a 2014 California lawsuit as the “staffing company” that provided the plaintiff with a contractor who later stole that plaintiff’s proprietary technology.
The Florida company is Janus (that case is still dragging its way through the process) and the California court case, which 22 Miles mostly lost, had to do with PQ Labs hiring a contractor from 22 Miles, who then left and started a competing touch technology firm.
In that one, which handily also has a public record, the judge went with the plaintiffs (PQ Labs) “on their claims for misappropriation of trade secrets, trademark infringement, false advertising, tortious interference with prospective economic advantage, breach of contract, breach of fiduciary duty, conversion, and unfair competition related to the same.”
I assume lawyers from both sides will advise the parties to do the No Comment thing, but I have a note in to a 22 Miles exec – Tomer Mann – whose name appears in the filing. Mann is at the center of the court case with Janus, though Janus’ parent company.
FWI is looking for an injunction against 22 Miles, as well as damages. It has asked for a jury trial.
Dave Haynes is the founder and editor of Sixteen:Nine, an online publication that has followed the digital signage industry for some 14 years. Dave does strategic advisory consulting work for many end-users and vendors, and also writes for many of them. He’s based near Halifax, Nova Scotia, on Canada’s east coast.