Assignment history

Inventors

• Geonjung KO (SK Telecom Co Ltd, Wilus Institute of Standards and Technology Inc.)
• Jinsam Kwak (SK Telecom Co Ltd, Wilus Institute of Standards and Technology Inc.)
• Juhyung Son (SK Telecom Co Ltd, Wilus Institute of Standards and Technology Inc.)

It is noted that all three inventors are listed with two affiliations (SK Telecom Co Ltd and Wilus Institute of Standards and Technology Inc.) at the time of filing, which suggests a collaborative effort or a transfer of employment/ IP rights occurred around the time of the invention. Generally, patent rights initially vest with the inventors, but are often assigned to the employer through employment agreements.

Original assignee

The entity named on the issued patent is SK Telecom Co Ltd and Wilus Institute of Standards and Technology Inc.

SK Telecom Co Ltd is a South Korean wireless telecommunications operator. It provides wireless voice and data transmission services, fixed-line telecommunication services (telephone, broadband internet, IPTV), and other businesses including IoT solutions. SK Telecom is an operating company, actively developing and deploying 5G core technologies and services. As of the current date, SK Telecom Co Ltd is an operating company.

Wilus Institute of Standards and Technology Inc. is a South Korea-based R&D company focused on developing next-generation wireless communications and multimedia technology standards, including 5G, Wi-Fi, and audio/video codecs. Wilus has made significant contributions to various standards bodies (e.g., 3GPP, IEEE 802.11, MPEG) and licenses its Standard Essential Patents (SEPs) through patent pools and bilateral agreements. They have also initiated litigation to enforce their Wi-Fi 6 SEPs. Wilus appears to be an operating R&D and licensing company.

Assignment timeline

• 2017-12-26 (executed) / recorded 2017-12-26 — Reel 043006/0598
  • Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST
  • Assignor: KO, GEONJUNG; KWAK, JINSAM; SON, JUHYUNG
  • Assignee: WILUS INSTITUTE OF STANDARDS AND TECHNOLOGY INC.
  • Correspondent: BAE, KIM & LEE IP, 11TH FLOOR, SOUTH BLDG., CENTERVILLE, 115, GA RYONG RO, SEOCHO-GU, SEOUL, KOREA (REPUBLIC OF)
  • Context: Transfer of inventor's interest to a co-applicant/assignee.
• 2017-12-26 (executed) / recorded 2017-12-26 — Reel 043006/0598
  • Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST
  • Assignor: SK TELECOM CO LTD
  • Assignee: WILUS INSTITUTE OF STANDARDS AND TECHNOLOGY INC.
  • Correspondent: BAE, KIM & LEE IP, 11TH FLOOR, SOUTH BLDG., CENTERVILLE, 115, GA RYONG RO, SEOCHO-GU, SEOUL, KOREA (REPUBLIC OF). This correspondent recurs in this chain.
  • Context: Transfer of original assignee's interest to a co-applicant/assignee.
• 2018-07-18 (executed) / recorded 2018-07-18 — Reel 044033/0849
  • Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST
  • Assignor: WILUS INSTITUTE OF STANDARDS AND TECHNOLOGY INC.
  • Assignee: WILUS INSTITUTE OF STANDARDS AND TECHNOLOGY INC., SK TELECOM CO., LTD.
  • Correspondent: BAE, KIM & LEE IP, 11TH FLOOR, SOUTH BLDG., CENTERVILLE, 115, GARYONG-RO, SEOCHO-GU, SEOUL, 06634 KOREA (REPUBLIC OF). This correspondent recurs in this chain.
  • Context: Reassignment to include SK Telecom Co., Ltd. as a co-assignee.
• 2022-12-18 (executed) / recorded 2022-12-19 — Reel 062152/0001
  • Conveyance: LICENSE
  • Assignor: SK TELECOM CO., LTD.
  • Assignee: WILUS INSTITUTE OF STANDARDS AND TECHNOLOGY INC.
  • Correspondent: BAE, KIM & LEE IP, 11TH FLOOR, SOUTH BLDG., CENTERVILLE, 115, GARYONG-RO, SEOCHO-GU, SEOUL, 06634 KOREA (REPUBLIC OF). This correspondent recurs in this chain.
  • Context: Exclusive license granted by SK Telecom to Wilus.
• 2024-06-20 (executed) / recorded 2024-06-20 — Reel 067098/0609
  • Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST
  • Assignor: SK TELECOM CO., LTD.
  • Assignee: WILUS INSTITUTE OF STANDARDS AND TECHNOLOGY INC.
  • Correspondent: BAE, KIM & LEE IP, 11TH FLOOR, SOUTH BLDG., CENTERVILLE, 115, GARYONG-RO, SEOCHO-GU, SEOUL, 06634 KOREA (REPUBLIC OF). This correspondent recurs in this chain.
  • Context: Transfer of SK Telecom's interest to Wilus.
• 2020-08-31 (executed) / recorded 2025-02-26 — Reel 068695/0001
  • Conveyance: CORRECTIVE ASSIGNMENT
  • Assignor: SK TELECOM CO., LTD.
  • Assignee: WILUS INSTITUTE OF STANDARDS AND TECHNOLOGY INC.
  • Correspondent: BAE, KIM & LEE IP, 11TH FLOOR, SOUTH BLDG., CENTERVILLE, 115, GARYONG-RO, SEOCHO-GU, SEOUL, 06634 KOREA (REPUBLIC OF). This correspondent recurs in this chain.
  • Context: Corrective assignment to amend agreement date of an exclusive license.

Timeline diagram

timeline
    title Ownership of US 10313077
    2015 : Priority date
    2017 : Application filed
         : Inventors assign to Wilus
         : SKT assigns to Wilus
    2018 : Wilus assigns to Wilus, SKT
    2019 : Patent granted
    2022 : SKT licenses to Wilus
    2024 : SKT assigns to Wilus
    2025 : Corrective assignment re: license

NPE / troll-pattern signals

1. Shell-entity transfer — not present. Both SK Telecom and Wilus Institute of Standards and Technology Inc. are identifiable operating companies with active R&D and product/licensing activities.
2. Known asserter in the chain — present. Wilus Institute of Standards and Technology Inc. has engaged in patent assertion, including initiating litigation in the Eastern District of Texas against companies like ASUS, HP, and Samsung for Wi-Fi 6 SEP infringement. Unified Patents has also filed challenges against Wilus's Wi-Fi patents.
3. Repeat correspondent across the chain — present. BAE, KIM & LEE IP is the correspondent of record for all recorded assignments related to this patent (Reel 043006/0598, Reel 044033/0849, Reel 062152/0001, Reel 067098/0609, Reel 068695/0001).
4. Cascading transfers — not present. The transfers, while multiple, are spread out over several years and primarily involve the two original entities, not a rapid succession of different LLCs.
5. Pre-litigation transfer — unclear. While Wilus has initiated litigation in 2024, the assignments involving SK Telecom to Wilus happened in 2022 and 2024, which could be related to preparing for assertion, but there isn't a tight "within 6 months" window to the initial suits on this specific patent.
6. Bankruptcy fire-sale — not present. There is no indication that either SK Telecom Co Ltd or Wilus Institute of Standards and Technology Inc. has undergone bankruptcy proceedings.
7. Privateering — unclear. While Wilus asserts patents and SK Telecom is an operating company, there's no public evidence to suggest that SK Telecom is using Wilus to assert patents on its behalf against competitors in a privateering arrangement.
8. Defensive aggregator (anti-NPE) — not present. The chain does not terminate at a known defensive aggregator.

Verdict

NPE — moderate confidence. Wilus Institute of Standards and Technology Inc., the current assignee, is identified as a patent asserter that actively licenses and litigates its SEP portfolio, as evidenced by its lawsuits against ASUS, HP, and Samsung for Wi-Fi 6 SEP infringement, and challenges by Unified Patents. The consistent use of the same correspondent firm, BAE, KIM & LEE IP, across multiple assignments further supports a pattern often associated with NPEs.

USPTO Assignment Center search for US10313077: https://assignmentcenter.uspto.gov/#!/assignment-view/US10313077/1