Assignment history

Inventors

• Dake He: At the time of filing (February 5, 2016), Dake He was employed by the original assignee, BlackBerry Ltd. There are no unusual patterns, such as a mass departure of inventors, associated with this filing.

Original assignee

• BlackBerry Ltd.: BlackBerry was the original assignee of the patent. At the time of filing, the company was transitioning from its legacy hardware business (smartphones) to a focus on enterprise software and services, including cybersecurity, endpoint management, and IoT solutions. While video encoding/decoding is relevant to secure communications, it is unlikely that BlackBerry shipped a specific commercial product that directly embodied the novel claims of this patent, as their primary business had shifted away from media-centric consumer devices. BlackBerry remains an operating company today, focused on its software and services business.

Assignment timeline

• 2016-02-05 (executed) / recorded 2016-02-05 — Reel 037965/0622

  • Conveyance: Assignment of Assignors Interest
  • Assignor: He, Dake (Inventor)
  • Assignee: BLACKBERRY LIMITED
  • Correspondent: Stephen B. Ackerman, The Law Office of Stephen B. ACKERMAN, 4016 Flowers Road, Suite 450A, Atlanta, GA 30360
  • Context: Standard assignment from inventor to employer at the time of filing.

• 2023-04-27 (executed) / recorded 2023-05-02 — Reel 063471/0474

  • Conveyance: Assignment of Assignor's Interest
  • Assignor: BLACKBERRY LIMITED
  • Assignee: OT PATENT ESCROW, LLC
  • Correspondent: Michael T. Renaud, Mintz Levin Cohn Ferris Glovsky and Popeo PC, One Financial Center, Boston, MA 02111
  • Context: First step in a portfolio fire-sale, moving patents into an intermediary holding company as part of a large-scale divestment.

• 2023-06-16 (executed) / recorded 2023-06-20 — Reel 064015/0001

  • Conveyance: Nunc Pro Tunc Assignment
  • Assignor: OT PATENT ESCROW, LLC
  • Assignee: MALIKIE INNOVATIONS LIMITED
  • Correspondent: Marc A. Fenster, Russ August & Kabat, 12424 Wilshire Blvd, 12th Floor, Los Angeles, CA 90025. This correspondent is a well-known patent litigation attorney, frequently representing assertion entities.
  • Context: Second step of the portfolio sale, transferring the patent from the escrow entity to the ultimate assertion-focused owner.

• 2023-06-19 (executed) / recorded 2023-06-20 — Reel 064015/0010

  • Conveyance: Nunc Pro Tunc Assignment
  • Assignor: BLACKBERRY LIMITED
  • Assignee: MALIKIE INNOVATIONS LIMITED
  • Correspondent: Marc A. Fenster, Russ August & Kabat, 12424 Wilshire Blvd, 12th Floor, Los Angeles, CA 90025. This is the same recurrent correspondent from the immediately preceding assignment.
  • Context: A "belt and suspenders" assignment directly from the original seller to the final buyer to clean the chain of title and ensure legal standing for future litigation.

• 2023-09-05 (recorded) — Reel 065261/0411 & 065261/0415

  • Conveyance: Corrective Assignment
  • Assignors: BLACKBERRY LIMITED; OT PATENT ESCROW, LLC
  • Assignees: OT PATENT ESCROW, LLC; MALIKIE INNOVATIONS LIMITED
  • Correspondents: Mintz Levin; Russ August & Kabat
  • Context: Administrative corrections filed to fix clerical errors in the earlier assignment documents, reaffirming the BlackBerry → OT Patent Escrow → Malikie Innovations transfer chain.

Timeline diagram

timeline
    title Ownership of US 10778989
    2016 : Filed by Dake He
         : Assigned to BlackBerry Ltd
    2020 : Patent Issued
    2023 : Assigned to OT Patent Escrow LLC
         : Assigned to Malikie Innovations Ltd
         : Corrective assignments recorded

NPE / troll-pattern signals

1. Shell-entity transfer — Present. The patent was transferred from BlackBerry Ltd., an operating company, to OT Patent Escrow, LLC, and subsequently to Malikie Innovations Limited. Per the litigation summary, Malikie Innovations is a subsidiary of Key Patent Innovations Ltd., an Irish entity focused on monetizing the ex-BlackBerry portfolio. These entities do not produce products and exist for licensing and assertion. (Reels 063471/0474 and 064015/0001).

2. Known asserter in the chain — Present. The current assignee, Malikie Innovations Limited, is a subsidiary of Key Patent Innovations Ltd., which is publicly identified by sources like Unified Patents as a significant patent asserter. It has initiated litigation campaigns using other patents from the acquired BlackBerry portfolio. (Reel 064015/0001).

3. Repeat correspondent across the chain — Present. Marc A. Fenster of Russ August & Kabat is the correspondent for two key transfers to the final assignee, Malikie Innovations Limited. This firm and attorney are well-known for representing patent assertion entities in litigation. (Reels 064015/0001 and 064015/0010).

4. Cascading transfers — Present. The patent was transferred from BlackBerry to OT Patent Escrow on 2023-04-27 and then from OT Patent Escrow to Malikie Innovations on 2023-06-16, a period of less than two months. This rapid, multi-step transfer through a special-purpose escrow entity to a final assertion vehicle is a classic pattern for portfolio monetization.

5. Pre-litigation transfer — Not present. As of today's date, no litigation has been filed asserting this patent, so this signal is not triggered.

6. Bankruptcy fire-sale — Not present. The sale was a strategic divestment by BlackBerry of non-core patent assets, not part of a formal bankruptcy proceeding.

7. Privateering — Present. An operating company, BlackBerry, sold a large portfolio of its patents to a non-practicing entity, Key Patent Innovations (via Malikie), which is now asserting those patents against competitors in the technology industry. This fits the definition of privateering, where an operating company offloads patents for assertion by a third party.

8. Defensive aggregator (anti-NPE) — Not present. The chain terminates at an assertion entity, not a defensive aggregator.

Verdict

• NPE — high confidence

This verdict is based on multiple strong, corroborating signals. The patent was transferred from an operating company (BlackBerry) through a series of rapid, cascading assignments to Malikie Innovations Limited, a subsidiary of the known patent assertion entity Key Patent Innovations (Reels 063471/0474 and 064015/0001). This transfer fits the pattern of privateering and the use of shell or special-purpose entities. Furthermore, the final assignments were handled by a correspondent attorney and law firm known for representing NPEs, providing additional confirmation of the intent to monetize this patent through licensing and litigation.

A direct link to the search results can be found at the USPTO Patent Assignment Search page.