Assignment history

Inventors

• Frank C. Hudetz: Co-inventor. At the time of filing, he was an assignor to NeoMedia Technologies Inc., suggesting he was either a founder or an employee of the company.
• Peter R. Hudetz: Co-inventor. At the time of filing, he was an assignor to NeoMedia Technologies Inc., suggesting he was either a founder or an employee of the company.

No unusual patterns were determinable, as both inventors assigned their interest to the original assignee shortly after the filing date.

Original assignee

The entity named on the issued patent (from the initial assignment by the inventors) was NeoMedia Technologies Inc.

• Products Embodied in Claims: NeoMedia Technologies Inc. was a company focused on mobile barcode scanning and related solutions, including developing "NeoReader" barcode scanning applications and systems that linked physical objects via barcodes to digital content. The claims of US 5,978,773 relate directly to their core business.
• Primary Line of Business: Mobile barcode scanning, QR code solutions, and augmented reality technology, enabling physical-to-digital connections.
• Current Status: NeoMedia Technologies Inc. (NMTI) experienced financial difficulties, filed for Chapter 11 bankruptcy around 2013-2014, and subsequently underwent liquidation. The patent assets were later acquired by other entities, as detailed in the assignment timeline.

Assignment timeline

• 1995-09-29 (executed) / recorded 1995-11-09 — Reel 007693/0869

  • Conveyance: Assignment of Assignors Interest
  • Assignor: Frank C. Hudetz, Peter R. Hudetz
  • Assignee: NeoMedia Technologies Inc.
  • Correspondent: JOHN A. BROWNING, BROWNING & BROWNING, P.S., 1001 Fourth Avenue, Suite 3200, Seattle, Washington 98154
  • Context: Original assignment from inventors to the founding company.

• 1995-11-16 (executed) / recorded 1995-12-08 — Reel 007787/0503

  • Conveyance: Assignment of Assignors Interest
  • Assignor: HUDETZ, FRANK C. HUDETZ, PETER R.
  • Assignee: SOLAR COMMUNICATIONS, INC.
  • Correspondent: JOHN A. BROWNING, BROWNING & BROWNING, P.S., 1001 Fourth Avenue, Suite 3200, Seattle, Washington 98154. This correspondent recurs in this chain.
  • Context: Transfer of patent rights from inventors to a new entity, Solar Communications, Inc.

• 1999-01-20 (executed) / recorded 1999-03-09 — Reel 009841/0612

  • Conveyance: Assignment of Assignors Interest
  • Assignor: SOLAR COMMUNICATIONS, INC.
  • Assignee: NEOMEDIA TECHNOLOGIES, INC.
  • Correspondent: RICHARD A. LIPSCHUTZ, NEOMEDIA TECHNOLOGIES, INC., 1740 Broadway, 17th Floor, New York, NY 10019
  • Context: Re-assignment of patent rights from Solar Communications, Inc. back to NeoMedia Technologies, Inc.

• 1999-02-10 (executed) / recorded 1999-03-09 — Reel 009841/0613

  • Conveyance: Security Interest
  • Assignor: SOLAR COMMUNICATIONS, INC.
  • Assignee: NEOMEDIA TECHNOLOGIES, INC.
  • Correspondent: RICHARD A. LIPSCHUTZ, NEOMEDIA TECHNOLOGIES, INC., 1740 Broadway, 17th Floor, New York, NY 10019. This correspondent recurs in this chain.
  • Context: Security interest granted by Solar Communications, Inc. to NeoMedia Technologies, Inc.

• 2000-05-30 (executed) / recorded 2000-07-28 — Reel 010899/0472

  • Conveyance: Release By Secured Party
  • Assignor: SOLAR COMMUNICATIONS, INC.
  • Assignee: NEOMEDIA TECHNOLOGIES, INC.
  • Correspondent: RICHARD A. LIPSCHUTZ, NEOMEDIA TECHNOLOGIES, INC., 1740 Broadway, 17th Floor, New York, NY 10019. This correspondent recurs in this chain.
  • Context: Release of the security interest granted by Solar Communications, Inc. to NeoMedia Technologies, Inc.

• 2001-07-31 (executed) / recorded 2001-08-08 — Reel 011867/0827

  • Conveyance: Security Agreement
  • Assignor: NEOMEDIA TECHNOLOGIES, INC.
  • Assignee: AIRCLIC, INC.
  • Correspondent: MICHAEL T. GILL, FOLEY & LARDNER, 3000 K STREET, N.W., SUITE 500, WASHINGTON, DC 20007-5143
  • Context: Security agreement granted by NeoMedia Technologies, Inc. to AirClic, Inc.

• 2001-10-26 (executed) / recorded 2001-11-20 — Reel 012061/0816

  • Conveyance: Lawsuit Against Patent Owner
  • Assignor: FRITZ, CHARLES W., KEIL, JAMES J., LOPIANO, JOHN A., NEOMEDIA TECHNOLOGIES, INC.
  • Assignee: GOINS, WILLIAM E.
  • Correspondent: WILLIAM E. GOINS, 2525 SW 22ND STREET, SUITE 202, MIAMI, FL 33145
  • Context: Recording of a lawsuit naming NeoMedia Technologies, Inc. as a patent owner. This is a notice, not a transfer of ownership.

• 2007-03-27 (executed) / recorded 2007-04-12 — Reel 019565/0822

  • Conveyance: Security Agreement
  • Assignor: NEOMEDIA TECHNOLOGIES, INC.
  • Assignee: CORNELL CAPITAL PARTNERS, L.P.
  • Correspondent: JOHN M. STETZ, DUANE MORRIS LLP, 30 SOUTH 17TH STREET, PHILADELPHIA, PA 19103-4196
  • Context: Security agreement granted by NeoMedia Technologies, Inc. to Cornell Capital Partners, L.P.

• 2007-10-04 (executed) / recorded 2007-10-24 — Reel 020088/0942

  • Conveyance: Security Agreement
  • Assignor: NEOMEDIA TECHNOLOGIES, INC., NEOMEDIA MICRO PAINT REPAIR, INC., NEOMEDIA MIGRATION, INC., NEOMEDIA TELECOM SERVICES, INC.
  • Assignee: YA GLOBAL INVESTMENTS, LP
  • Correspondent: CHRISTOPHER W. BETTS, KRAMER LEVIN NAFTALIS & FRANKEL LLP, 1177 AVENUE OF THE AMERICAS, NEW YORK, NY 10036
  • Context: Security agreement granted by NeoMedia Technologies, Inc. and related entities to YA Global Investments, LP.

• 2008-11-04 (executed) / recorded 2008-11-19 — Reel 021571/0891

  • Conveyance: Security Agreement
  • Assignor: NEOMEDIA TECHNOLOGIES INC.
  • Assignee: YA GLOBAL INVESTMENTS, L.P.
  • Correspondent: CHRISTOPHER W. BETTS, KRAMER LEVIN NAFTALIS & FRANKEL LLP, 1177 AVENUE OF THE AMERICAS, NEW YORK, NY 10036. This correspondent recurs in this chain.
  • Context: Additional security agreement granted by NeoMedia Technologies Inc. to YA Global Investments, L.P.

• 2010-11-02 (executed) / recorded 2010-12-07 — Reel 025807/0402

  • Conveyance: Release By Secured Party
  • Assignor: AIRCLIC, INC.
  • Assignee: NEOMEDIA TECHNOLOGIES, INC.
  • Correspondent: W. KEVIN WHITE, HALE AND DORR LLP, 60 STATE STREET, BOSTON, MA 02109
  • Context: Release of security interest by AirClic, Inc. to NeoMedia Technologies, Inc.

• 2016-01-29 (executed) / recorded 2016-02-11 — Reel 035255/0740

  • Conveyance: Notice of Security Interest
  • Assignor: NEOMEDIA TECHNOLOGIES, INC.
  • Assignee: YA GLOBALINVESTMENTS, L.P.
  • Correspondent: J. MICHAEL BROWN, ARMSTRONG TEASDALE LLP, 7700 FORSYTH BLVD, SUITE 1800, ST. LOUIS, MO 63105
  • Context: Notice of security interest filed by YA Global Investments, L.P. against NeoMedia Technologies, Inc.

• 2016-09-02 (executed) / recorded 2016-09-08 — Reel 036647/0653

  • Conveyance: Assignment of Assignors Interest
  • Assignor: NEOMEDIA TECHNOLOGIES, INC.
  • Assignee: NM, LLC
  • Correspondent: DONALD S. BOWERS, 2525 SW 22ND STREET, SUITE 202, MIAMI, FL 33145. This correspondent has an address that recurs in this chain (William E. Goins).
  • Context: Assignment of patent rights from the bankrupt NeoMedia Technologies, Inc. to NM, LLC.

• 2017-01-24 (executed) / recorded 2017-02-14 — Reel 037233/0074

  • Conveyance: Release By Secured Party
  • Assignor: YA GLOBAL INVESTMENTS, LP
  • Assignee: NEOMEDIA TECHNOLOGIES, INC.
  • Correspondent: J. MICHAEL BROWN, ARMSTRONG TEASDALE LLP, 7700 FORSYTH BLVD, SUITE 1800, ST. LOUIS, MO 63105. This correspondent recurs in this chain.
  • Context: Release of security interest by YA Global Investments, LP to NeoMedia Technologies, Inc. (likely related to the bankruptcy proceedings).

• 2017-01-24 (executed) / recorded 2017-02-14 — Reel 037233/0075

  • Conveyance: Release By Secured Party
  • Assignor: CORNELL CAPITAL PARTNERS, LP
  • Assignee: NEOMEDIA TECHNOLOGIES, INC.
  • Correspondent: J. MICHAEL BROWN, ARMSTRONG TEASDALE LLP, 7700 FORSYTH BLVD, SUITE 1800, ST. LOUIS, MO 63105. This correspondent recurs in this chain.
  • Context: Release of security interest by Cornell Capital Partners, LP to NeoMedia Technologies, Inc. (likely related to the bankruptcy proceedings).

• 2017-01-24 (executed) / recorded 2017-02-14 — Reel 037233/0076

  • Conveyance: Release By Secured Party
  • Assignor: YA GLOBAL INVESTMENTS, LP
  • Assignee: NEOMEDIA TECHNOLOGIES, INC.
  • Correspondent: J. MICHAEL BROWN, ARMSTRONG TEASDALE LLP, 7700 FORSYTH BLVD, SUITE 1800, ST. LOUIS, MO 63105. This correspondent recurs in this chain.
  • Context: Another release of security interest by YA Global Investments, LP to NeoMedia Technologies, Inc.

Timeline diagram

timeline
    title Ownership of US 5978773
    1995 : Inventors assign to NeoMedia Tech
         : Inventors assign to Solar Comms Inc
    1999 : Solar Comms assigns back to NeoMedia
         : Solar grants security to NeoMedia
    2000 : Solar releases security for NeoMedia
    2001 : NeoMedia grants security to AirClic
         : Lawsuit notice recorded (Goins)
    2007 : NeoMedia grants security to Cornell
         : NeoMedia grants security to YA Global
    2008 : NeoMedia grants more security to YA Global
    2010 : AirClic releases security for NeoMedia
    2015 : Patent expires
    2016 : NeoMedia files security for YA Global
         : NeoMedia assigns to NM LLC
    2017 : YA Global releases security for NeoMedia
         : Cornell releases security for NeoMedia
         : YA Global releases more security

NPE / troll-pattern signals

1. Shell-entity transfer — present.

   • Evidence: The assignment from NeoMedia Technologies, Inc. to NM, LLC on 2016-09-02 (recorded 2016-09-08, Reel 036647/0653). NM, LLC is a limited liability company, and public information (Unified Patents litigation data) indicates it asserts patents without being an operating company. The address 2525 SW 22ND STREET, SUITE 202, MIAMI, FL 33145 is associated with legal counsel, not product operations.

2. Known asserter in the chain — present.

   • Evidence: The current assignee, NM, LLC, is a known patent asserter. It initiated litigation against Wal-Mart Stores, Inc. (Case 1:14-cv-01315, filed May 9, 2014) according to the provided litigation summary, indicating its role as a Non-Practicing Entity (NPE).

3. Repeat correspondent across the chain — present.

   • Evidence:
     • JOHN A. BROWNING, BROWNING & BROWNING, P.S. appears on the original assignment from inventors to NeoMedia (1995-11-09, Reel 007693/0869) and the subsequent assignment from inventors to Solar Communications, Inc. (1995-12-08, Reel 007787/0503).
     • RICHARD A. LIPSCHUTZ, NEOMEDIA TECHNOLOGIES, INC. appears on the assignment from Solar Communications to NeoMedia (1999-03-09, Reel 009841/0612), a security interest (1999-03-09, Reel 009841/0613), and a release (2000-07-28, Reel 010899/0472).
     • CHRISTOPHER W. BETTS, KRAMER LEVIN NAFTALIS & FRANKEL LLP appears on security agreements involving NeoMedia and YA Global Investments, L.P. (2007-10-24, Reel 020088/0942 and 2008-11-19, Reel 021571/0891).
     • J. MICHAEL BROWN, ARMSTRONG TEASDALE LLP appears on a notice of security interest (2016-02-11, Reel 035255/0740) and multiple releases of security interest (2017-02-14, Reel 037233/0074, 037233/0075, 037233/0076).
     • The correspondent DONALD S. BOWERS for NM, LLC (2016-09-08, Reel 036647/0653) shares the same address as WILLIAM E. GOINS (2525 SW 22ND STREET, SUITE 202, MIAMI, FL 33145), who was the assignee of a "LAWSUIT AGAINST PATENT OWNER" document (2001-11-20, Reel 012061/0816). This indicates a potential shared legal representative or office involved in patent assertion activities.

4. Cascading transfers — unclear. While there are multiple assignments and security interests, they are spread out over many years rather than being rapid, consecutive transfers through chained LLCs within a short period, aside from the initial transfers between inventors, NeoMedia, and Solar. The most recent assignment to NM, LLC (2016) occurs after NeoMedia's bankruptcy.

5. Pre-litigation transfer — not present. The first infringement suit identified was Neomedia Technologies, Inc. v. The Home Depot, Inc. filed on October 31, 2001. The assignment to NM, LLC occurred on 2016-09-02 (Reel 036647/0653), well after this first litigation. NeoMedia was the plaintiff in that initial litigation, owning the patent at that time.

6. Bankruptcy fire-sale — present.

   • Evidence: NeoMedia Technologies, Inc., the original operating assignee, filed for Chapter 11 bankruptcy. The assignment to NM, LLC on 2016-09-02 (Reel 036647/0653) occurred after the patent's expiration in 2015 and likely as part of the disposition of assets during or after NeoMedia's bankruptcy proceedings. This suggests the patent portfolio was acquired from a distressed entity.

7. Privateering — unclear. While NeoMedia was an operating company, its later assignments, particularly to NM, LLC, align with a transfer of assets post-bankruptcy. There is no explicit evidence in the assignment records or publicly available information (without deeper investigation into SEC filings or specific legal reporting) that NeoMedia transferred the patent to an NPE to assert on its behalf against competitors, especially given its bankruptcy. The subsequent assertion by NM, LLC appears to be a separate action post-acquisition of the assets.

8. Defensive aggregator (anti-NPE) — not present. The chain ends with NM, LLC, which is an asserting entity, not a defensive aggregator like RPX or AST.

Verdict

NPE — high confidence

The patent was transferred from the bankrupt operating company NeoMedia Technologies, Inc. to NM, LLC (Reel 036647/0653), which is a shell entity known for patent assertion, as evidenced by its litigation against Wal-Mart Stores, Inc. The recurrence of legal correspondents, especially the shared address between Donald S. Bowers (for NM, LLC) and William E. Goins, further points to a coordinated assertion strategy.

USPTO Assignment Center Search for US5978773