The Patent Trial and Appeal Board (PTAB) saw activity in August 2018 involving a variety of frequent litigants. This included petitions for inter partes review (IPR) filed against two NPEs controlled by Fortress Investment Group LLC, INVT SPE LLC and Uniloc 2017 LLC, the latter of which has in recent months cofiled a barrage of lawsuits with subsidiaries of Australian NPE Uniloc Corporation Pty. Limited (Uniloc). The PTAB also instituted trial in August for IPRs against Uniloc 2017 and some of its campaign coplaintiffs, and in an IPR against an NPE controlled by patent attorney Brian Yates, whose US litigation has waned as he pursues a new patent licensing initiative through his company iPEL, Inc. Finally, the PTAB issued final decisions in August for IPRs against Uniloc, Empire IP LLC, and Quarterhill Inc.
Last Monday, the US Supreme Court’s TC Heartlanddecision returned a key portion of the patent venue statue, one that allows infringement suits to be brought where a defendant corporation “resides”, to its prior interpretation: such a defendant “resides” only in its state of incorporation. Three days later, two February cases filed in Delaware by Inventergy, Inc. and controlled by Fortress Investment Group LLC, one each against Apple and HTC, were voluntarily dismissed without prejudice. Fortress refiled those two suits, accusing Apple (2:17-cv-03738) and HTC (2:17-cv-03740) of infringing the same seven mobile telecommunications patents (6,466,563; 6,611,676; 6,760,590; 7,206,587; 7,760,815; 7,764,711; 7,848,439), but this time in New Jersey. Fortress did so through an entity (INVT SPE LLC) that it had created in March and with much more specific allegations supporting its contention that venue is proper in New Jersey.
Following a restructuring agreement signed in the fourth quarter of last year, publicly traded NPE Inventergy Global, Inc. says it has given Fortress Investment Group LLC sole discretion over the monetization of nearly 750 telecommunications patents. The announcement follows Inventergy’s launch in February of a new campaign targeting mobile telecommunications patents—its first litigation in just over a year.
On December 29, 2016, Inventergy filed an 8-K disclosing amendments made earlier that month to its October 2014 agreement with Fortress, giving Fortress sole discretion over the monetization of certain of Inventergy’s patents, excluding “future acquired patents related to Inventergy Innovations, LLC”. The amendments appear to have changed the revenue sharing arrangement between the two companies, giving Fortress 70% and Inventergy 30% after other obligations have been fulfilled.
In its May 1 press release, Inventergy stated that it has assigned 740 telecommunications patents to a special purpose entity named INVT SPE LLC, which it says will be managed and controlled by an affiliate of Fortress (identified in an earlier press release as DBD Credit Funding LLC). According to Inventergy, Fortress now “has sole discretion to make any and all decisions relating to the patents and related monetization activities, including the right to license, sell or sue unauthorized users of the patents”.
USPTO records do not currently show any patent assignments to INVT SPE; however, a record of a December 2016 security agreement between Inventergy and DBD, involving over 150 assets, including patents originating with Huawei, Nokia, and Panasonic, is viewable on RPX Insight.
In February of this year, Inventergy filed its first litigation in nearly twelve months, suing Apple (1:17-cv-00196) and HTC (1:17-cv-00200) over patents that it received from Panasonic in 2013. The defendants are accused of infringement through the manufacture and sale of mobile phones and tablets that use the mandatory portions of various mobile communications standards. The patents-in-suit (6,466,563; 6,611,676; 6,760,590; 7,206,587; 7,760,815; 7,764,711; 7,848,439) generally relate to multiple aspects of mobile telecommunications: the ‘563, ‘711, and ‘439 patents to CDMA (“Code Division Multiple Access”) transmissions; the ‘590 and ‘587 patents to cellular base stations; and the ‘676 and ‘815 patents to radio communications transmissions. Inventergy alleges that the practice of the mandatory portions of certain standards necessarily infringes, for the ‘563 patent, use of the mandatory portions of the HSPA standard; for the ‘676 patent, of the WCDMA/HSPA standard; for the ‘590 patent, ‘439, and ‘711 patents, the LTE standard; for the ‘587 patent, the UMTS standard; and for the ‘815 patent, the EGPRS standard. The asserted patents, which do not appear to have been litigated prior to Inventergy’s new campaign, are among approximately 500 that Inventergy received from Panasonic in an assignment dated December 20, 2013.
Inventergy’s suits against Apple and HTC are the NPE’s only active cases; they are currently in the early stages of litigation.
Inventergy saw a decline in revenue in 2016, totaling $1.8M compared to $4.8M in fiscal 2015. The NPE has attributed the year-over-year decrease to a one-time patent transaction that comprised $4M of its 2015 revenue. According to a press release, that June 2015 deal, which was with an undisclosed third party, involved two patent families “relevant to the mobile communications infrastructure and mobile handset market segments” and representing “3.3% of the 60 patent families, and 5.4% of the total patent assets originally acquired by Inventergy from Panasonic”. In that same press release, Inventergy stated that it owned “a total of nearly 760 patents grouped into 116 world-wide patent families acquired from industry leaders Panasonic, Nokia, and Huawei”.
Inventergy ended 2016 with a net loss of $7.7M, down from $11.7M in the prior year, and cash and cash equivalents of $1.5M. As of the date of this article’s publication, Inventergy’s stock was trading at $0.23 a share.
A couple of months after amending its October 2014 agreement with Fortress Investment Group LLC, Inventergy, Inc. has kicked off its first litigation campaign to assert patents that it received from Panasonic in December 2013. Two new cases, one each against Apple (1:17-cv-00196) and HTC (1:17-cv-00200), allege infringement of seven patents (6,466,563; 6,611,676; 6,760,590; 7,206,587; 7,760,815; 7,764,711; 7,848,439) through the manufacture and sale of mobile phones and tablets that use the mandatory portions of various mobile communications standards. Inventergy’s publicly traded parent (Inventergy Global, Inc.) has indicated in SEC filings that, under the “Restructuring Agreement”, Fortress has “the sole discretion to make any and all decisions relating to [Inventergy’s] patents and patent monetization activities” with certain exclusions.