The America Invents Act (AIA), which became fully implemented March 16, 2013, revised U.S. patent law but included few reforms directed to curbing Non-Practicing Entity (NPE) or “patent troll” activity. Thus, not surprisingly, patent troll activity has continued at an alarming rate during the early months of 2013. Summarized below are the recent activities of the most infamous patent trolls.
Fortunately, the president and the legislature appear to desire additional patent reform to address patent trolls. On Feb. 14, 2013, President Barack Obama addressed patent trolls and the need for more comprehensive patent reform in a "Fireside Hangout" which is a live question and answer session hosted in a Google+ hangout. President Obama acknowledged that the reforms of the AIA "only went about halfway to where we need to go."
On Feb. 25, 2013, the Saving High-Tech Innovators from Egregious Legal Disputes (SHIELD) Act of 2013 (H.R. 845) was reintroduced into the House by Rep. Peter DeFazio, D-Ore. and Rep. Jason Chaffetz, R-Utah. The SHIELD Act mandates a fee award to any party victorious on the issue of non-infringement or invalidity. This means that a company can sue for declaratory relief and recover its costs, even though the patentee never filed suit. The SHIELD Act excludes the inventors or “original assignees”, universities and their technology transfer organizations, and patentees that have a “substantial investment” in the exploitation of a patent via production or sale. The SHIELD Act requires NPEs to post a bond for the fees upon filing an infringement lawsuit. While this legislation raises many questions, at least it keeps the issue on the minds of the legislature and public.
ArrivalStar S.A. (and Melvino Technologies Limited)
Patents — U.S. Patent 6,486,801 (‘base station apparatus and method for monitoring travel of a mobile vehicle”), U.S. Patent 6,714,859 (‘system and method for an advance notification system for monitoring and reporting proximity of a vehicle”), U.S. Patent 6,904,359 (“notification systems and methods with user-definable notifications based upon occurrence of events”), U.S. Patent 6,952,645 (“system and method for activation of an advance notification system for monitoring and reporting status”), U.S. Patent 7,030,781 (“notification system and method that informs a party of vehicle delay”), and U.S. Patent 7,400,970 (“system and method for an advance notification system for monitoring and reporting proximity of a vehicle”).
History — ArrivalStar S.A. claims that its patents cover tracking and notifying the arrival time of a vehicle. ArrivalStar S.A. also claims that its patents cover tracking shipped packages from warehouse to front porch. In 2011 and 2012, ArrivalStar S.A. filed hundreds of infringement lawsuits against a variety of retailers, technology companies transportation companies, and municipalities. Electronic Frontier Foundation (EFF) provoked a reexamination of the ‘781 patent in September 2012 that remains pending.
Recent Activity — ArrivalStar S.A. has filed infringement lawsuits this year against companies including Ace Hardware, ASL Transportation Group, Aurionpro Solutions, Inc., Birds Eye Global Tracking, The Burton Corporation, Channel Logistics, LLC, Codemass, Inc., Cogent Solutions, CSA Software, Inc., Exact Point Global Tracking, LLC, Flight View, Inc., Garmin International, Inc., Global Satellite Engineering, Greenbrier Management Services, LLC, Gulf Express International LLC, Hewlett-Packard, Joseph Smith Customhouse Broker, Inc., Keds.com, K & N Engineering, Inc., Lacoste USA, Inc., Megatrux Transportation, Inc., Nautica, LLC, New Balance Athletic Shoe, Inc., Nexus Distribution Corporation, Open Mike Inc., Quicksilver, Inc., Recon Dynamics, RFID Global Solution, Inc., Rite Aid Corporation, Sharp Electronics Corporation, Sportsman’s Warehouse, S & A Distribution, Inc., ThinAir Wireless, Inc., Tracker Systems, Inc., Transportation Insight, LLC, Tts, LLC, Tubular USA, Inc., Tumi, Inc., Union Pacific Railroad Company, VSSOD Corporation, WCAF Shipment Management, Willis Shaw Express, and Xact Technology.
Cascades Branding Innovation, LLC
Patents — U.S. Patent 7,768,365 (“mobile mapping”) and U.S. Patent 8,106,766 (“mobile mapping”).
History — Cascades Branding Innovation, LLC claims that its patents cover any mobile application that shows a map of service locations relative to the location of the mobile device. In 2011 and 2012, Cascades Branding Innovation, LLC filed infringement lawsuits against a variety of online retailers and others.
Recent Activity — Cascades Branding Innovation, LLC has filed infringement lawsuits this year against companies including The Allstate Corporation.
Clear With Computers, LLC
Patents — U.S. Patent 5,625,766 (“electronic proposal preparation system for selling computer equipment and copy machines”), U.S. Patent 7,606,739 (““electronic proposal preparation system” ), and U.S. Patent 8,121,904 (“electronic system for creating customized product proposals stores a plurality of pictures and text segments to be used as building blocks in creating the proposal”).
History — Clear With Computers, LLC claims that its patent covers websites, making and using supply chain methods, sales methods, sales systems, marketing methods, marketing systems and inventory systems. Clear With Computers, LLC has successfully brought infringement lawsuits against hundreds of companies.
Recent Activity — Clear With Computers, LLC has filed infringement lawsuits this year against companies including Alcoa, Ag Growth International dba Batco Manufacturing, Alamo Group Inc., CLAAS of America Inc., Coleman Company, Empire Southwest, Fishing Holding LLC dba Ranger Boats, Forty Niners Football Company LLC, Gehl Company, Mahindra USA Inc., Kennametal, Linde Material Handling North America, Lufkin Industries, Manitowic Cranes LLC, Palfinger USA Inc., The Raymond Corporation, Salford Inc., Textron Inc., Universal Forest Products Inc., Valmont Industries Inc., Vermeer, and Yanmar American Corporation.
In March 2013, Hyundai Motor America, Inc. filed a request inter partes review of the ‘904 patent.
Cronos IP Solutions
Patents — U.S. Patent 5,664,110 (“remote ordering system”).
History — Cronos IP Solutions claims that its patent covers remote ordering systems that provides the user the ability to build and edit one or more order lists. Cronos IP Solutions filed only a few infringement lawsuits against retailers in 2012.
Recent Activity — None
Patents — U.S. Patent 7,119,716 (“response systems and methods for notification systems for modifying future notifications”), U.S. Patent 7,319,414 (“secure notification messaging systems and methods using authentication indicia“),U.S. Patent 7,479,899 (“notification systems and methods enabling a response to cause connection between a notified PCD and a delivery or pickup”), U.S. Patent 7,479,900 (“notification systems and methods that consider traffic flow predicament data”), U.S. Patent 7,482,952 (“response systems and methods for notification systems for modifying future notifications“),and U.S. Patent 7,876,239 (“secure notification messaging systems and methods using authentication indicia”).
History — Eclipse IP claims that its patents cover keeping individuals apprised of the whereabouts of a ‘mobile thing’ – a package, vehicle, or even a person. Eclipse IP filed at least 17 infringement lawsuits since 2011. After targeting the automotive industry in late 2012, Eclipse IP appears to have turned to the retail industry.
Recent Activity — Eclipse IP has filed infringement lawsuits this year against companies including Abercrombie & Fitch Co., eImprovements.com, Harley-Davidson, Inc., J.C. Penney Company, Neiman Marcus Group, Inc., Nordstrom Inc., Overstock.com, Pier 1 Imports, Inc., Ralph Lauren Corporation, Staples, Inc., Target Corporation, Wayfair Inc., Williams-Sonoma, Inc., and Zale Corporation.
FedEx Corporate Services, Inc. filed a declaratory judgment action on Jan. 25, 2013 requesting a declaration of invalidity for all five of the Eclipse IP patents. UPS previously filed a similar declaratory judgment action which is still pending.
EMG Technologies, LLC
Patents — U.S. Patent 7,441,196 (“Apparatus and method of manipulating a region on a wireless device screen for viewing, zooming”).
History — EMG Technologies, LLC claims that its patent covers displaying webpages on mobile devices with simplified navigation by manipulating touch screen to zoom and scroll. EMG Technologies, LLC filed infringement lawsuits against Apple, Inc., Microsoft Corporation, Motorola Mobility Inc., and Google Inc. and now appears to have turned toward the retail industry.
Recent Activity — EMG Technologies, LLC has filed infringement lawsuits this year against companies including Ally Financial Inc., AutoZone, Inc., Coach, Inc., General Mills, Inc., Green Mountain Coffee Roasters, Inc., Keurig, Inc., Puma North America, Inc., and Williams-Sonoma, Inc.
Helferich Patent Licensing
Patents — U.S. Patent 7,115,241 (“systems and methods for enabling a user of a communication device to manage remote information”), U.S. Patent 7,280,838 (“paging transceivers and methods for selectively retrieving messages”), U.S. Patent 7,499,716 (“system and method for delivering information to a transmitting and receiving device”), U.S. Patent 7,835,757 (“system and method for delivering information to a transmitting and receiving device”), U.S. Patent 8,107,607 (“wireless messaging system”), U.S. Patent 8,116,741 (“system and method for delivering information to a transmitting and receiving device”), and U.S. Patent 8,134,450 (“content provision to subscribers via wireless transmission”).
History — Helferich Patent Licensing claims that its patents cover sending web links within SMS text messages. Helferich Patent Licensing reportedly has collected hundreds of millions of dollars in royalties.
Recent Activity — JetBlue Airways, Inc. filed a declaratory judgment action on Feb. 28, 2013 requesting a declaration of invalidity for all eight of the Helferich patents.
On April 2, 2013, the USPTO ordered a stay in an inter partes reexamination proceeding filed by CBS Interactive Inc. and others on Aug. 17, 2012, pending termination or completion of an inter partes review of the ‘241 filed by CBS Interactive Inc. and others on Oct. 25, 2012.
Infinite Data, LLC
Patents — U.S. Patent 5,790,530 (“message-passing multiprocessor system”).
History — Infinite Data, LLC has successfully brought infringement lawsuits against many companies.
Recent Activity — Infinite Data, LLC has filed infringement lawsuits this year against companies including Barnes & Noble Inc., Boeing Company, BP America Inc., Chevron Corporation, Clorox Company, Federal Express Corporation, Ford Motor Company, General Motors Company, Home Depot Inc., JP Morgan Chase & Company, MasterCard Inc., Paramount Pictures, Pratt & Whitney, and Shell Oil Company.
Innovatio IP Ventures
Patents — There are 31 patents in the Innovatio portfolio.
History — Innovatio IP Ventures claims that its patents cover any use of Wi-Fi. Innovatio IP Ventures began filing infringement lawsuits against hotels and coffee shops in 2011. Reportedly Innovatio IP Ventures has sued hundreds of businesses and sent out more than 8,000 letters demanding license fees, generally ranging from $2,300 to $5,000. The targets of Innovatio IP Ventures are typically small businesses that use Wi-Fi.
Recent Activity — Racketeer Influenced and Corrupt Organizations (RICO) Act claims were dismissed on Feb. 4, 2013 in a lawsuit filed by Cisco Systems, Inc., Motorola Solutions, Inc., and Netgear, Inc. against Innovatio IP Ventures. Cisco Systems, Inc.’s novel argument was that the patent assertion behavior of Innovatio IP Ventures violated the RICO Act. Several other claims remain.
Patents — U.S. Patent 5,576,951 (“automated sales and services system”), U.S. Patent 6,289,319 ("automated business and financial transaction processing system"), and U.S. Patent 7,010,508 (“automated multimedia data processing network”).
History — Landmark Technology claims that its patents cover any use of shopping carts in connection with electronic commerce. Landmark Technology is a longtime patent troll whose focus is small businesses with internet sales.
Recent Activity — No new infringement lawsuits appear to have been filed Landmark Technology since December 2012.
Lodsys Group, LLC
Patents — U.S. Patent 7,222,078 (“methods and systems for gathering information from units of a commodity across a network”), and U.S. Patent 7,620,565 (“customer-based product design module”).
History — Lodsys Group, LLC claims that its patents cover in-application purchasing functionality and free-to-paid application upgrades. Lodsys Group, LLC also claims that its patents cover online help, interactive chats, and surveys or user feedback, and distributing electronic forms. Lodsys Group, LLC began bringing infringement lawsuits against small mobile application developers in 2011. Apple intervened claiming that its licenses with Lodsys prevent infringement by the defendants. Apple’s assertions remain pending. Google has since intervened in other lawsuits with claims similar to Apple but those assertions also remain pending. Lodsys Group, LLC then turned to online retailers with interactive chats, user feedback forms, or survey features but as of April 2013 appears to have refocused its attention to mobile game developers having in-app purchasing.
Recent Activity — Lodsys Group, LLC has filed infringement lawsuits this year against companies including BackFlip Studios, BullionVault, Crocs, Dr. Pepper Snapple Group, Edmac Industries, Gameloft, Gamevil, General Motors, Implix USA, Jirbo, Jones Group, Loews Hotels, MobileAge, OpticsPlanet, Orchid Cellmark, Oriental Trading Company, Pocket Gems, PromoManagers, Retail Concepts, Saks, Somerset Investments, Steris Corp., Sunstorm Interactive, SuperValu, TMSoft, TLA Systems, Volkswagen of America, The Walt Disney Company, and 4imprint.
Patents — U.S. Patent 7,822,816 (“system and method for data management”).
History — MacroSolve, Inc. claims that its patent covers distributing electronic forms via the intranet to mobile devices. MacroSolve, Inc. began bringing infringement lawsuits against small mobile application developers in 2011. In 2012, MacroSolve, Inc. moved on to other online companies having mobile applications such as Bank of America, Facebook, Marriott, and Wal-Mart.
Recent Activity — MacroSolve, Inc. has filed infringement lawsuits this year against companies including Bed, Bath and Beyond, Inc., Cosco Wholesale Corporation, and Sears Holding Management Company.
Personal Audio, LLC
Patents — U.S. Patent 6,119,076 (“audio program player including a dynamic program selection controller” ), and U.S. Patent 8,112,504 (“system for disseminating media content representing episodes in a serialized sequence”).
History — Personal Audio, LLC claims that its patents cover distributing podcasts or other media files. Personal Audio, LLC has successfully brought infringement lawsuits against companies such as Amazon.com, Apple, Motorola, RIM, Samsung, and Sirius XM Radio. Personal Audio, LLC appears to now have turned its sights to content developers.
Recent Activity — Personal Audio, LLC has filed infringement lawsuits this year against companies including ACE Broadcasting Network LLC, Adam Carolla’s Ace Broadcasting, CBS Corporation, Howstuffworks.com, NBC Universal Media, LLC, and Togi Entertainment.
Princeton Digital Image Corporation
Patents — U.S. Patent 4,813,056 (“modified statistical coding of digital signals”).
History — Princeton Digital Image Corporation claims that its patent covers encoding image data into JPEG files for providing JPEG images of products on a website. Beginning in 2011, Princeton Digital Image Corporation began suing large numbers of companies including websites, retailers, and camera and device manufacturers and resellers for patent infringement. The ‘056 patent expired in December 2007, but suits are being filed for "past infringement" of this patent. Under U.S. patent law, a patent owner can sue for "past infringement" up to six years before the filing of a lawsuit, so Princeton Digital Image Corporation can theoretically continue suing companies until December 2013.
Recent Activity — In what appears to be a last big push against the retail industry, Princeton Digital Image Corporation has filed infringement suits this year against companies including Abercrombie & Fitch Inc., Alticor Global Holdings, Amazon.com Inc., American Eagle Outfitters, Inc., Avon Products, Buy.com, Cabala’s, CAE Healthcare USA Inc., CBS Interactive, CDW Corporation, Coldwater Creek, Inc., Costco, Wholesale, Dell, Disney Shopping Inc., Drugstore.com, Euromarket Designs, Inc., Footlocker.com, HSN Interactive, ITD Group, Guitar Center Inc., J.C. Penney Company, NetFlix, Macy’s, Nieman Marcus Group Inc., Nordstrom.com, Office Depot Inc., PPR Americas, Inc., QVC, Recreational Equipment, Saks Direct LLC, Scholastic, Sears Holdings, Staples Inc., Systemax Inc., Target, Toys ‘R’ Us Inc., Ubisoft Entertainment SA, Wal-Mart.com Inc., and 1-800 Flowers.com.
Project Paperless, LLC (and “alphabet soup” companies)
Patents — U.S. Patent 7,477,410 (“distributed computer architecture and process for virtual copying”), and U.S. Patent 7,986,426 (“distributed computer architecture and process for document management”).
History — Project Paperless, LLC claims that its patents covers anyone who sends a PDF via email from a scanner or copier connected to computer network. Starting in 2012, Project Paperless, LLC began sending thousands of cease and desist letters to small companies having a scanner or copier and typically demanding $900 to $1,200 per employee. It has filed very few lawsuits. In August 2012, Project Paperless, LLC voluntarily dismissed its lawsuit against BlueWave Computing when the defendant refused to settle and brought counterclaims attacking the validity of the patents. The cease and desist letters then began coming from a large number of companies with six letter names such as AzPro, DucPla, GosNel, JitNom etc. which appear to divide the country into regions.
Recent Activity — It appears the “alphabet soup” companies continue to send thousands upon thousands of cease and desist letters to small businesses. No new infringement lawsuits appear to have been filed in 2013.
Select Retrieval, LLC
Patents — U.S. Patent 6,128,617 (“data display software with actions and links integrated with information”).
History — Select Retrieval, LLC claims that its patent covers all parametric search on a website. In 2011 and 2012, Select Retrieval, LLC filed hundreds of infringement lawsuits against a variety of retailers and others.
Recent Activity — Select Retrieval, LLC has filed infringement lawsuits this year against companies including Pool Group Enterprises, LLC.
On March 15, 2013, an infringement lawsuit previously filed by Select Retrieval against LL Bean was stayed pending the outcome of a separate declaratory judgment lawsuit filed by Adobe Systems, Inc. in which Adobe is attempting to invalidate the ‘617 patent.