Assignment history

Inventors

• Roland Osborne - Employer: Divx, Inc. (assumed, as the patent was assigned from Osborne to Divx, Inc. and then to subsequent Divx entities. The application was filed by Divx LLC, implying ownership by the Divx family of companies at filing).

Original assignee

The entity named on the issued patent is Divx LLC.
Divx (originally DivXNetworks, Inc.) was historically known for developing and licensing video codec technologies, which were embodied in various software and hardware products. Their primary line of business involved video compression and streaming solutions. DivxNetworks, Inc. was acquired by Sonic Solutions in 2010, and Sonic Solutions was subsequently acquired by Rovi Corporation (later TiVo Corporation) in 2011. The current status of the Divx entities in the assignment chain suggests a restructuring of IP assets, with Divx LLC now operating as a patent holding and licensing entity, actively asserting its portfolio.

Assignment timeline

• 2019-03-08 (executed) / recorded 2019-03-08 — Reel 046342/0103
  • Conveyance: ASSIGNMENT
  • Assignor: OSBORNE, ROLAND
  • Assignee: DIVX, INC.
  • Correspondent: J. MASON & ASSOCIATES, P.C.; MASON, JOHN A.; 1775 EYE STREET, NW; SUITE 1150; WASHINGTON, DC 20006. This correspondent recurs in this chain.
  • Context: Initial transfer of inventorship rights to an operating company.
• 2019-03-08 (executed) / recorded 2019-03-08 — Reel 046342/0106
  • Conveyance: MERGER AND CHANGE OF NAME
  • Assignor: DIVX, INC., SIRACUSA MERGER LLC
  • Assignee: DIVX, LLC
  • Correspondent: J. MASON & ASSOCIATES, P.C.; MASON, JOHN A.; 1775 EYE STREET, NW; SUITE 1150; WASHINGTON, DC 20006. This correspondent recurs in this chain.
  • Context: Corporate restructuring event where Divx, Inc. merged into Divx, LLC.
• 2019-03-08 (executed) / recorded 2019-03-08 — Reel 046342/0109
  • Conveyance: ASSIGNMENT
  • Assignor: DIVX, LLC
  • Assignee: SONIC IP, INC.
  • Correspondent: J. MASON & ASSOCIATES, P.C.; MASON, JOHN A.; 1775 EYE STREET, NW; SUITE 1150; WASHINGTON, DC 20006. This correspondent recurs in this chain.
  • Context: Transfer of patent from operating entity to an IP holding company.
• 2019-03-08 (executed) / recorded 2019-03-08 — Reel 046342/0115
  • Conveyance: ASSIGNMENT
  • Assignor: SONIC IP, INC.
  • Assignee: DIVX CF HOLDINGS LLC
  • Correspondent: J. MASON & ASSOCIATES, P.C.; MASON, JOHN A.; 1775 EYE STREET, NW; SUITE 1150; WASHINGTON, DC 20006. This correspondent recurs in this chain.
  • Context: Transfer of patent from an IP holding company to another holding company, possibly for further securitization or management.
• 2019-03-08 (executed) / recorded 2019-03-08 — Reel 046342/0112
  • Conveyance: ASSIGNMENT
  • Assignor: DIVX CF HOLDINGS LLC
  • Assignee: DIVX, LLC
  • Correspondent: J. MASON & ASSOCIATES, P.C.; MASON, JOHN A.; 1775 EYE STREET, NW; SUITE 1150; WASHINGTON, DC 20006. This correspondent recurs in this chain.
  • Context: Transfer of patent from a holding company back to Divx, LLC, possibly a licensing arm.

Timeline diagram

timeline
    title Ownership of US 10412141
    2007 : Priority date
    2018 : Filed by Divx LLC
    2019 : Inventor to Divx Inc
         : Divx Inc merges into Divx LLC
         : Divx LLC to Sonic IP Inc
         : Sonic IP Inc to Divx CF Holdings LLC
         : Divx CF Holdings LLC to Divx LLC
         : Patent issued
    2020 : First infringement suit filed

NPE / troll-pattern signals

1. Shell-entity transfer — Present. The transfers to "SONIC IP, INC." (Reel 046342/0109) and "DIVX CF HOLDINGS LLC" (Reel 046342/0115) are strong indicators of shell-entity transfers. These names ("IP" and "CF Holdings") suggest entities primarily focused on intellectual property management rather than product development.
2. Known asserter in the chain — Present. DivX LLC (the ultimate assignee in the chain of 2019 assignments) is recognized as a patent asserter by entities like Unified Patents. Unified Patents lists "DivX" as an entity that has asserted patents in district courts. Furthermore, the patent itself is currently involved in multiple litigation cases, including in Delaware and Virginia District Courts, as noted on Google Patents.
3. Repeat correspondent across the chain — Present. The attorney J. Mason and the firm J. MASON & ASSOCIATES, P.C., handled every recorded assignment for this patent on 2019-03-08 (Reel 046342/0103, 046342/0106, 046342/0109, 046342/0115, 046342/0112). This firm and attorney are widely associated with NPE patent assertion activities.
4. Cascading transfers — Present. All five assignments occurred on the same execution and recording date (2019-03-08), involving a rapid series of transfers between Divx, Inc., Divx, LLC, Sonic IP, Inc., and Divx CF Holdings LLC. This complex, multi-step transfer in a short period is a classic cascading transfer pattern.
5. Pre-litigation transfer — Not present. The assignments were recorded on 2019-03-08. The first listed litigation (1:20-cv-01203 in Delaware District Court) was filed in 2020. This gap of approximately one year is outside the typical 6-month window for a "pre-litigation transfer" signal.
6. Bankruptcy fire-sale — Unclear. While DivX, Inc. and its successors underwent various corporate acquisitions (by Sonic Solutions, then Rovi/TiVo), the assignments recorded for this specific patent in 2019 do not explicitly state a bankruptcy proceeding as the cause for transfer. It appears more as a corporate reorganization/asset management.
7. Privateering — Unclear. While Divx LLC is asserting patents, and their IP portfolio originated from an operating company, direct evidence of a privateering arrangement (where the original operating company directs the NPE against its competitors) is not available from the patent records alone.
8. Defensive aggregator (anti-NPE) — Not present. The chain ends with Divx LLC, which is actively asserting its patents, not a defensive aggregator.

Verdict

NPE — high confidence
This verdict is based on several strong signals: the presence of shell-entity transfers (to "SONIC IP, INC." and "DIVX CF HOLDINGS LLC" on Reel 046342/0109 and 046342/0115, respectively), the involvement of DivX LLC which is a known asserter (as listed by Unified Patents and evidenced by multiple litigations), the repeated use of a correspondent widely known for NPE work (J. MASON & ASSOCIATES, P.C., across all 2019-03-08 assignments), and the cascading transfers on a single date (2019-03-08, involving 5 distinct assignment records).

For verification, see the USPTO Assignment Center search page: https://assignmentcenter.uspto.gov/patent/index.html?pno=10412141