Following Multiple Dismissals and Transfers in Its QR Code Campaign, Kaldren Hits Social Networking Companies in Delaware
- June 13, 2017
IP Edge LLC affiliate Kaldren LLC has added Kik US (1:17-cv-00752) and Snap (1:17-cv-00753) to its QR code campaign, suing the companies in Delaware (where they were formed) over a family of four patents (6,098,882; 6,176,427; 6,820,807; 8,281,999) generally related to encoding digital data in a machine-readable format. The defendants’ social networking apps are targeted for their use of QR codes. These latest filings follow a flurry of dismissals and transfers in Kaldren’s first two waves of litigation, one of which was filed in the Eastern District of Texas, the other in the Southern District of New York.
The patents-in-campaign each issued between August 2000 and October 2012 to Massachusetts-based Cobblestone Software, claiming priority in March 1996. Cobblestone Software was formed in Delaware in March 1995 by named inventors Thomas C. and Walter G. Antogninis. Thomas appears to have earned a doctorate degree in mathematics and to have held technical roles at several companies, including ventures in which both Antogninis have held an interest (e.g. Heartland, Inc. (f/k/a International Wireless f/k/a Origin Investment Group)). Walter is a New York lawyer and a professor at Pace University.
Cobblestone Software’s barebones website characterizes the company as “the true pioneer of the concept of hyperlinking the physical world using bar codes” and the ‘807 patent as “cover[ing] the basic concept of using bar codes as physical world hyperlinks, a breadth that is unsurprising given our own priority as the pioneering company in this space”. Cobblestone transferred the patents-in-campaign to Kaldren in November 2016.
Kaldren launched its sole litigation campaign in March 2017 with suits against Citigroup, General Mills, J.D. Power and Associates, NeilMed Pharmaceuticals, Pioneer, Procter & Gamble, and SunTrust Banks. On June 8, Kaldren moved to dismiss its case against General Mills with prejudice; two days earlier, Magistrate Judge Caroline Craven had granted the defendant’s May 4 motion to transfer the case against it to the District of Minnesota. (General Mills’s principal place of business is in Minneapolis, Minnesota.) Kaldren voluntarily dismissed its suit against SunTrust Banks (a Delaware corporation with a principal place of business in Georgia) with prejudice on May 30. In the cases against the remaining first-wave defendants, extensions of the deadline to answer have been granted.
Earlier this month, Kaldren was ordered by two Southern District of New York judges to explain how venue is proper in that district given TC Heartland; the NPE had filed its second wave of litigation there, against American Express, The Hain Celestial Group, HSBC, JP Morgan Chase, and PNY Technologies. As of the publication date of this article, the statuses of each of those cases are as follows:
|American Express||The parties have reported that they have reached a settlement in principle; the case will be dismissed on July 10 unless either party requests otherwise.|
|The Hain Celestial Group||By letter dated May 30, Kaldren stated that “[u]nder 28 U.S.C. § 1400(b) and TC Heartland”, Hain “‘resides’ in Delaware because it is incorporated there”, but also claims to have evidence that Hain “‘committed acts of infringement and has a regular and established place of business’ in New Hyde Park, New York”. Kaldren has requested that the court transfer the case sua sponte or by agreed motion of the parties to the Eastern District of New York.|
|HSBC||The defendant has not answered Kaldren’s complaint.|
|JPMorgan Chase||An initial pretrial conference is set for August 17, 2017.|
|PNY Technologies||The parties have agreed to a transfer to the District of New Jersey.|
Kaldren was formed in Texas on October 21, 2016 with Tin Nguyen as its managing member. It is not yet clear whether Kaldren’s Nguyen is the Tin D. Nguyen that manages two other litigating IP Edge affiliates, Autumn Cloud LLC and Vortex Pathway LLC, or if he is related to either Phi D. Nguyen (identified as the managing member of IP Edge affiliates Serenitiva LLC and Silkeen LLC) or Phi Nguyen (the managing member of IP Edge affiliate RICPI Communications LLC). It also remains unclear whether Tin, Tin D., Phi, and/or Phi D. Nguyen are related to Son Nguyen (of Reef Mountain LLC and Guild Forest LLC), Brittany Nguyen (of Meraloc LLC, Opal Run LLC, and Wiremed Tech LLC), and/or Hang Nguyen (of Mod Stack LLC and Pherah LLC). (Neither Guild Forest nor Wiremed Tech has yet to file any litigation.)
For an overview of how the Supreme Court’s TC Heartland decision has effected IP Edge’s varied litigation campaigns, see “IP Edge Faces Consequences of TC Heartland on Multiple Fronts” (May 2017). More information on TC Heartland can be found at “Supreme Court Returns to Narrower Patent Venue Statute” (May 2017), with additional analysis about the decision’s potential effects and limitations at “Full Significance of TC Heartland Lies in Nuances of Court’s Decision” (May 2017). 6/13, District of Delaware.