Assignment history

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Inventors

• Eileen C. Shapiro: At the time of the original invention (priority date Dec 23, 1999), Shapiro was a principal at The Hillcrest Group, Inc., a management consulting firm, as indicated by the correspondent address on the initial assignment.
• Steven J. Mintz: Mintz was also a principal at The Hillcrest Group, Inc. alongside Shapiro.

There are no unusual departure patterns; the inventors assigned the patent to their own entity.

Original assignee

The original assignee of record was DecisionSorter, LLC. This entity appears to have been a holding company created by the inventors, Eileen Shapiro and Steven Mintz, for the purpose of holding this intellectual property. It does not appear to have shipped any commercial product embodying the claims. The patent was later assigned from this entity to an assertion-focused LLC.

Assignment timeline

• 2000-03-29 (executed) / recorded 2000-04-10 — Reel 014291/0001

  • Conveyance: Assignment
  • Assignor: Eileen C. Shapiro; Steven J. Mintz
  • Assignee: DecisionSorter, LLC
  • Correspondent: Eileen C. Shapiro, The Hillcrest Group, Inc., Annapolis, MD.
  • Context: The inventors formally assigned their invention to their own holding company.

• 2010-12-03 (executed) / recorded 2010-12-03 — Reel 025110/0651

  • Conveyance: Assignment
  • Assignor: DecisionSorter, LLC
  • Assignee: Dalton Sentry, LLC
  • Correspondent: Barry G. Magid, Faegre & Benson LLP, Minneapolis, MN.
  • Context: The inventors' holding company transferred the patent to a newly formed entity that would become the primary asserter of the patent.

• 2012-09-28 (executed) / recorded 2012-10-01 — Reel 028578/0781

  • Conveyance: Security Agreement
  • Assignor: Dalton Sentry LLC
  • Assignee: Hankes Danko, LLC
  • Correspondent: Jonathan T. Hanke, Leydig, Voit & Mayer, Ltd., Chicago, IL.
  • Context: The patent was used as collateral, likely to secure funding for the litigation campaign that was underway.

• 2013-11-04 (executed) / recorded 2013-11-06 — Reel 031383/0285

  • Conveyance: Patent Assignment And Release Of Liens
  • Assignor: Hankes Danko, LLC; Dalton Sentry, LLC
  • Assignee: DS-Intellectual Property, LLC
  • Correspondent: Brian R. Matsushita, Diederiks & Whitelaw, PLC, Woodbridge, VA.
  • Context: The security interest was released and the patent was assigned to a new shell LLC as part of a likely internal reorganization.

• 2016-04-06 (executed) / recorded 2016-04-06 — Reel 037989/0001

  • Conveyance: Assignment
  • Assignor: DS-Intellectual Property, LLC
  • Assignee: Shapiro-Mintz-Acquisition-Trust
  • Correspondent: Eileen C. Shapiro, The Hillcrest Group, LLC, Silver Spring, MD. (Recurring correspondent, one of the inventors).
  • Context: The patent was transferred back to a trust controlled by the original inventors, likely after the conclusion of the assertion campaign.

Timeline diagram

timeline
    title Ownership of US 8069073
    1999 : Invention priority date
    2000 : Assigned to DecisionSorter LLC (Inventors' entity)
    2010 : Assigned to Dalton Sentry LLC
    2011 : Patent Issued
    2012 : First infringement suits filed by Dalton Sentry
         : Security agreement recorded with Hankes Danko LLC
    2013 : Assigned to DS-Intellectual Property LLC
    2016 : Assigned back to Shapiro-Mintz-Acquisition-Trust (Inventors' entity)
    2019 : Patent expires

NPE / troll-pattern signals

1. Shell-entity transfer — Present. The transfer from the inventors' initial LLC to Dalton Sentry, LLC (Reel 025110/0651) and subsequently to DS-Intellectual Property, LLC (Reel 031383/0285) are transfers to entities with no known products whose primary activity was patent assertion.

2. Known asserter in the chain — Present. Dalton Sentry, LLC is a well-documented patent assertion entity. Google Patents lists dozens of lawsuits filed by Dalton Sentry asserting this patent family, and the entity is identified as an NPE by industry trackers like RPX and Unified Patents.

3. Repeat correspondent across the chain — Present. Inventor Eileen C. Shapiro is the correspondent for the first assignment into the inventors' LLC (Reel 014291/0001) and the final assignment back to the inventors' trust (Reel 037989/0001), bookending the period of third-party assertion. This demonstrates direct inventor involvement at the beginning and end of the chain.

4. Cascading transfers — Present. In the period between September 2012 and November 2013, the patent was subject to a Security Agreement involving Hankes Danko, LLC, and then an assignment involving both Dalton Sentry and Hankes Danko to a new entity, DS-Intellectual Property, LLC. This cluster of transactions involving multiple entities in a short period is a notable signal.

5. Pre-litigation transfer — Present. The assignment to assertion entity Dalton Sentry, LLC was executed on December 3, 2010 (Reel 025110/0651). The first infringement suits asserting the patent family were filed in early 2012, well within the typical window of a transfer made to prepare for litigation.

6. Bankruptcy fire-sale — Not present. The chain of title reflects structured, deliberate transfers, not a sale out of bankruptcy proceedings.

7. Privateering — Unclear. The patent originated with inventors, was transferred to an NPE for assertion, and was ultimately returned to a trust controlled by the inventors. This is the classic structure of a privateering arrangement where inventors partner with an assertion firm. However, without public disclosure of the agreement between the inventors and Dalton Sentry, this cannot be definitively confirmed.

8. Defensive aggregator (anti-NPE) — Not present. The patent was never assigned to a defensive aggregator like RPX or LOT Network.

Verdict

NPE — high confidence

The ownership history of US patent 8,069,073 shows at least five distinct and strong signals of NPE activity. The patent was transferred from the inventors' holding company to Dalton Sentry, LLC (Reel 025110/0651), a known high-volume patent asserter, for the clear purpose of litigation, which commenced shortly after the transfer. The subsequent use of the patent as collateral (Reel 028578/0781) and transfers between shell entities further confirm this was a sophisticated assertion campaign, not the activity of an operating company. The full assignment record can be viewed at the USPTO Patent Assignment Search Center.