Assignment history

As a senior patent prosecution analyst, I have reconstructed the full assignment history for US patent 5,490,216 to analyze its ownership chain for patterns of non-practicing entity (NPE) activity.

Inventors

The sole inventor listed on the patent is Frederic B. Richardson, III. The initial assignment of his interest to UNILOC (SINGAPORE) PRIVATE LIMITED (Reel 007050/0698) indicates he was the founder or principal of the original assignee. There are no unusual patterns, such as a mass departure of inventors, associated with this filing.

Original assignee

The original assignee of record is Uniloc Singapore Pte Ltd. Research and the extensive litigation history of this patent confirm that Uniloc's primary business model was patent licensing and assertion, not the development or sale of software products embodying the claims of the '216 patent. The various Uniloc entities (Singapore, USA, Luxembourg) have long been recognized as a major patent assertion entity (NPE).

Assignment timeline

The USPTO Patent Assignment Search database contains six recorded transfers for this patent.

• 1994-02-15 (executed) / recorded 1994-02-22 — Reel 007050/0698

  • Conveyance: Assignment
  • Assignor: Frederic B. Richardson, III
  • Assignee: UNILOC (SINGAPORE) PRIVATE LIMITED
  • Correspondent: Beyer & Bosom, Esqs, Washington, DC
  • Context: The inventor formally assigned his rights to the company he founded.

• 2009-04-14 (executed) / recorded 2011-01-28 — Reel 025686/0225

  • Conveyance: Assignment
  • Assignor: UNILOC (SINGAPORE) PRIVATE LIMITED
  • Assignee: UNILOC LUXEMBOURG S.A.
  • Correspondent: UNILOC USA, INC., Irvine, CA
  • Context: An internal reorganization transferring the patent to a European holding company, a common tactic for NPEs to optimize for litigation and tax purposes.

• 2009-04-14 (executed) / recorded 2011-01-28 — Reel 025686/0209 & 025686/0252

  • Conveyance: Security Agreement
  • Assignor: UNILOC (SINGAPORE) PRIVATE LIMITED and UNILOC LUXEMBOURG S.A.
  • Assignee: IMF (AUSTRALIA) LTD
  • Correspondent: UNILOC USA, INC., Irvine, CA. This recurrence of an internal correspondent is a notable signal.
  • Context: The patent was used as collateral to secure funding, likely for litigation, from IMF, a known litigation finance firm.

• 2014-04-24 (executed) / recorded 2014-05-02 — Reel 032649/0969

  • Conveyance: Release
  • Assignor: IMF (AUSTRALIA) LTD
  • Assignee: UNILOC LUXEMBOURG S.A.
  • Correspondent: Uniloc USA Inc, Irvine, CA. The same internal correspondent appears again.
  • Context: The security interest held by the litigation funder was released, returning unencumbered title to the Uniloc assertion entity.

• 2014-12-31 (executed) / recorded 2015-01-09 — Reel 034162/0593

  • Conveyance: Security Interest
  • Assignor: UNILOC LUXEMBOURG, S.A.; UNILOC CORPORATION PTY LIMITED; UNILOC USA, INC.
  • Assignee: FORTRESS CREDIT CO LLC
  • Correspondent: Dechert LLP, New York, NY
  • Context: The Uniloc entities granted a new security interest in the patent to another major litigation financier, Fortress Investment Group, likely to fund ongoing and future assertion campaigns.

Timeline diagram

timeline
    title Ownership of US 5490216
    1993 : Filed by inventor Richardson
    1994 : Assigned to Uniloc Singapore
    1996 : Patent Issued
    2003 : First infringement suit filed vs Microsoft
    2009 : Assigned to Uniloc Luxembourg SA
         : Security interest granted to IMF Australia
    2010 : Massive litigation campaign begins
    2014 : IMF security interest released
         : New security interest granted to Fortress
    2016 : All claims canceled by PTAB

NPE / troll-pattern signals

1. Shell-entity transfer: Present. The 2009 assignment from the Singaporean operating entity to Uniloc Luxembourg S.A. (Reel 025686/0225) is a transfer to a holding company in a favorable jurisdiction, a classic NPE strategy. Uniloc Luxembourg S.A. does not produce or sell products.

2. Known asserter in the chain: Present. Uniloc entities are among the most well-known and prolific patent assertion entities. Both Unified Patents and RPX have extensively cataloged Uniloc's litigation campaigns over many years. The assignee of record for most of the patent's litigation life, Uniloc Luxembourg S.A. (Reel 025686/0225), is the primary assertion vehicle.

3. Repeat correspondent across the chain: Present. The correspondent for the key transfers in 2009 and 2014 is listed as UNILOC USA, INC. itself, with one contact being Althea Prince (Reels 025686/0225, 025686/0209, 032649/0969). An entity managing its own patent assignment recordings internally is a strong indicator that the patents are core assets being actively managed for an assertion or licensing campaign.

4. Cascading transfers: Not present. The transfers were part of distinct corporate restructuring and financing events, not a rapid series of handoffs between shell LLCs.

5. Pre-litigation transfer: Present. The assignment to Uniloc Luxembourg S.A. was executed on 2009-04-14 (Reel 025686/0225). This was immediately followed by a wave of over 75 infringement lawsuits filed between late 2009 and 2014, clearly indicating the transfer was made to position the patent for its primary assertion campaign.

6. Bankruptcy fire-sale: Not present.

7. Privateering: Not present. Uniloc was asserting the patent on its own behalf, not for a third-party operating company.

8. Defensive aggregator (anti-NPE): Not present. The ownership chain contains only assertion entities and their financiers.

Verdict

• NPE — high confidence

The ownership history provides overwhelming evidence of NPE activity. The patent was transferred to a known assertion entity, Uniloc Luxembourg S.A. (Reel 025686/0225), immediately prior to the launch of a massive litigation campaign. The use of Uniloc's own US entity as the correspondent for these transfers confirms a tightly controlled assertion strategy. Furthermore, the multiple security agreements with known litigation funders (IMF and Fortress) demonstrate that the patent's sole value was as a financial asset to be monetized through litigation. The full assignment record can be verified at the USPTO Patent Assignment Search portal.