Cassiopeia IP patent determined to be likely unpatentable

On April 29, 2020, the Patent Trial and Appeal Board (PTAB) instituted trial on all challenged claims in an IPR filed by Unified against U.S. Patent 7,322,046, owned and asserted by Cassiopeia IP LLC, an IP Edge affiliate and well-known NPE.

The ‘046 patent is directed to the secure use of a service in a network. The ’046 patent is currently being asserted against Ricoh, Funai, Yamaha, and QNAP. All other cases have been terminated.

To read the institution decision and view the case record, see Unified’s Portal. Unified is represented in this proceeding by in-house counsel, Alyssa Holtslander and Roshan Mansinghani, and outside counsel, Lee & Hayes, PLLC.

Another GE-owned, HEVC Advance standard essential patent, challenged as likely invalid

On April 28, 2020, as part of its ongoing efforts in its SEP Video Codec Zone, Unified filed a petition for inter partes review (IPR) against U.S. Patent 9,357,217. The '217 patent is owned by GE Video Compression, LLC (GEVC), which is participating in the HEVC Advance patent pool (HEVC Advance patent list).

The ’217 patent, originally assigned to Fraunhofer-Gesellschaft, was transferred to GEVC in 2015.

HEVC Advance claims that certain claims of the '217 patent are essential to the HEVC standard. After conducting an independent analysis, Unified has determined that the ‘217 patent is likely unpatentable.

Unified is represented by Eric Buresh of Erise IP in this proceeding. Visit Unified’s Public Portal for more information about its Video Codec landscape (OPAL) and standard submission repository (OPEN). To read the petition and review the case record, view IPR2020-00858 on the Portal.

$5,000 Cash Prize for Prior Art on SaveltSafe Patent

On April 24, 2020, Unified Patents added a new PATROLL contest, with a $5,000 cash prize, seeking prior art for at least claim 4 of US Patent 8,929,552, owned by SaveItSafe, LLC, an NPE. The '552 patent relates to securement of electronic information and cryptographic keys. SaveItSafe is currently asserting the '552 patent against Oracle and Ultra Electronics Holdings in the Western District of Texas. However, the prior owner, No Magic, Inc., previously asserted the patent against Futurex, Atos IT Solutions and Services, SafeNet, Townsend Security, and Thales e-Security in 2015 through 2017. Litigation history can be found here.

The contest will expire on June 15, 2020. Please visit PATROLL for more information or to submit an entry for this contest.

The Great Recession Resulted in an Explosion of NPE Assertions

As the world reels from the impact of the current Covid-19 pandemic, Unified Patents decided to examine the past to see if it could be any indicator of the future. Though no two economic cycles are the same, Unified Patents surprisingly found that the results showed (controlling for changes in measurement) that the number of Non-Practicing Entities (NPEs) and Patent Assertion Entities (PAEs) nearly doubled. There could be a number of reasons, but some factors could be investors looking for alternative or non-cyclical vehicles to get a return, cheaper and higher quality portfolios available, and more attorneys willing to take contingency or lower fees. One takeaway is that if the economy weakens further, NPE assertions will likely increase significantly if the previous pattern repeats.

Using the Unified Patents litigation and NPE data with the Stanford NPE Litigation Database for pre-2013 data, Unified Patents examined the number of lawsuits brought by NPEs and PAEs. The Stanford database accounts for the America Inventors Act (AIA) joinder rules, by using the total number of defendants rather than lawsuits. Using this method, researchers were able to detect a spike of NPE activity in 2011 that other studies simply missed.  By missing this spike in 2011, most attributed the jump in assertions to the AIA joinder rules. However, with this spike in NPE activity, before the AIA was enacted, would mean NPE activity was on the rise despite the joinder rules. In general, the Stanford NPE Litigation Database found that the number of distinct patent disputes nearly doubled between 2000 and 2015. 21 Stan. Tech. L. Rev. 235 (2018).

Unified Patents specifically looked at three distinct categories: (1) Non-NPE Assertions, (2) Other NPE Assertions, and (3) NPE Assertions by Acquiring Patents. Category three, NPE Assertions by Acquiring Patents, has skyrocketed by 2000% from 2000 (61) to 2017 (1281). The highest being in 2013, in which NPE Assertions by Acquiring Patents accounted for 2,475 assertions or about 41% of all patent assertions. 

When mapping against the S&P 500 Index, the Great Recession (December 2007-June 2009) becomes an indication of how NPEs or PAEs respond. NPE Assertions by Acquiring Patents remained flat, until roughly 2010. Between 2004-2008 there were only 1,089 total NPE Assertions by Acquiring Patents. Post recession saw 3,398 assertions, a 212% increase, for the years of 2009-2012. From 2009 to 2010, there was only a 18.4% increase in NPE Assertions by Acquiring Patents. However, as companies began the recovery process, 2010 to 2011 saw a 111.8% increase. Then the largest jump happened from 2011 to 2012 and saw a 174% increase in NPE Assertions by Acquiring Patents.

After the post-recession recovery, litigation began to decline starting in 2016. However, Unified’s Portal showed that in 2018 and 2019, NPE assertions accounted for 51% and 55% respectively, of all patent litigation. This means despite the decline in litigation, NPE activity has remained consistent since the Great Recession. 

It should be noted that while the non-joinder rules in 2011 increased the number of individual parties sued, even the rule change can't explain the overall rise in defendants sued, new NPE campaigns, and other activity being driven (at the time) by publicly traded PAEs and defensive patent aggregators like RPX, Acacia, Intellectual Ventures, IP Val, and Marathon, not to mention early Uniloc cases and Rothschild filings which often initially targeted SMEs (small and medium sized enterprises). Post-AIA, assertions have come down, but they are still above pre-Great Recession numbers. The question is whether this will continue during this cycle.

Using this data as a reference point, NPE activity over the next few years will not stop. As companies look for ways to trim and as companies go under, NPEs will continue to buy patents to be later asserted in various campaigns. This in combination with investor groups turning to litigation finance of patents, due to their non-cynical nature, is leading to a new breed of NPEs. One that based on the last recession will only continue to grow and assert more patents than before. 

Copyright © 2020, Unified Patents, LLC. All rights reserved.

Investel Capital patent challenged as likely unpatentable

On April 17, 2020, Unified filed a petition for inter partes review (IPR) against U.S. Patent 9,936,030, owned and asserted by Investel Capital Corporation (an NPE). The ’030 patent relates to sharing user content and integrating external content based on user location.

View Investel Capital’s district court litigation.  To read the petition and view the case record, see Unified's Portal.  Unified is represented Ellyar Barazesh of Stoel Rives in this proceeding.