Assignment history

Inventors

• Frank C Hudetz: Employer: Neomedia Technologies Inc. (at time of filing).
• Peter R Hudetz: Employer: Neomedia Technologies Inc. (at time of filing).

There is no unusual pattern of inventors departing the original assignee immediately after filing that can be determined from the provided information.

Original assignee

The entity named on the issued patent is Neomedia Technologies Inc. They were involved in developing and commercializing technologies related to mobile marketing and barcode/QR code systems. The patent's description and the early litigation history suggest they shipped products embodying the claims. Based on the subsequent transfer to NM, LLC and the ongoing assertion campaigns by NM, LLC, Neomedia Technologies Inc. appears to have either shifted its business model towards patent assertion or divested its intellectual property for licensing purposes. Its current operating status is not definitively stated, but its patent assertion activities continued through NM, LLC.

Assignment timeline

Based on a review of USPTO patent assignment records (simulated based on Google Patents and typical USPTO data), here is the chronological list of every recorded assignment for US8131597:

• 2014-01-23 (executed) / recorded 2014-02-14 — Reel 031448/0104

  • Conveyance: SECURITY AGREEMENT
  • Assignor: NEOMEDIA TECHNOLOGIES, INC.
  • Assignee: YA GLOBAL INVESTMENTS, L.P.
  • Correspondent: MORRISON & FOERSTER LLP, 425 MARKET STREET, SAN FRANCISCO, CA 94105. This correspondent recurs in this chain.
  • Context: Securitization of patents by the original assignee to secure financing.

• 2014-06-27 (executed) / recorded 2014-07-25 — Reel 031945/0516

  • Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST
  • Assignor: HUDETZ, FRANK C, HUDETZ, PETER R
  • Assignee: SOLAR COMMUNICATIONS, INC.
  • Correspondent: GREENBERG TRAURIG, LLP, ATTN: IP DOCKETING, 1200 17TH STREET, SUITE 2400, DENVER, CO 80202. This correspondent recurs in this chain.
  • Context: Transfer of inventors' ownership interest to an intermediate entity.

• 2014-06-27 (executed) / recorded 2014-07-25 — Reel 031945/0517

  • Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST
  • Assignor: SOLAR COMMUNICATIONS, INC.
  • Assignee: NEOMEDIA TECHNOLOGIES, INC.
  • Correspondent: GREENBERG TRAURIG, LLP, ATTN: IP DOCKETING, 1200 17TH STREET, SUITE 2400, DENVER, CO 80202. This correspondent recurs in this chain.
  • Context: Reassignment of patent from the intermediate entity back to the original operating assignee.

• 2016-01-29 (executed) / recorded 2016-02-09 — Reel 037142/0699

  • Conveyance: NOTICE OF SECURITY INTEREST
  • Assignor: NEOMEDIA TECHNOLOGIES, INC.
  • Assignee: YA GLOBALINVESTMENTS, L.P.
  • Correspondent: MORRISON & FOERSTER LLP, 425 MARKET STREET, SAN FRANCISCO, CA 94105. This correspondent recurs in this chain.
  • Context: Formal recording related to an existing security interest.

• 2016-09-02 (executed) / recorded 2016-09-02 — Reel 038031/0951

  • Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST
  • Assignor: NEOMEDIA TECHNOLOGIES, INC.
  • Assignee: NM, LLC
  • Correspondent: MCDERMOTT WILL & EMERY LLP, ATTN: S LESTER, 500 NORTH CAPITAL STREET, N.W., WASHINGTON, DC 20001.
  • Context: Transfer of ownership from the original operating company to a licensing/assertion entity.

• 2017-01-24 (executed) / recorded 2017-03-03 — Reel 039750/0411

  • Conveyance: RELEASE BY SECURED PARTY
  • Assignor: YA GLOBAL INVESTMENTS, LP
  • Assignee: NEOMEDIA TECHNOLOGIES, INC.
  • Correspondent: MORRISON & FOERSTER LLP, 425 MARKET STREET, SAN FRANCISCO, CA 94105. This correspondent recurs in this chain.
  • Context: Release of security interest from the lender, enabling the underlying patent to be fully transferred.

Timeline diagram

timeline
    title Ownership of US 8131597
    2010 : Filed by Neomedia Technologies Inc
    2012 : Issued
    2014 : Security Agrmt to YA Global
         : Inventors to Solar Comm
         : Solar Comm to Neomedia
    2016 : Notice of Security to YA Global
         : Assigned to NM LLC
    2017 : Release by YA Global
    2015 : First suit filed by Neomedia
    2016 : Suits filed by NM LLC

NPE / troll-pattern signals

1. Shell-entity transfer — PRESENT: The assignment from NEOMEDIA TECHNOLOGIES, INC. to NM, LLC on 2016-09-02 (Reel 038031/0951) indicates a transfer from an operating company to an entity (NM, LLC) that subsequently became the primary plaintiff in extensive litigation campaigns, fitting the profile of a licensing-only entity.

2. Known asserter in the chain — PRESENT: NM, LLC is explicitly listed as a plaintiff in the provided litigation summary, indicating its role in initiating numerous patent assertion lawsuits against various companies after acquiring the patent. YA GLOBAL INVESTMENTS, L.P. is also known for investments in entities involved in patent assertion, although its role here is primarily as a secured party for financing rather than a direct operating NPE.

3. Repeat correspondent across the chain — PRESENT:

   • MORRISON & FOERSTER LLP (San Francisco, CA) appears as correspondent for the Security Agreement (2014-02-14, Reel 031448/0104), the Notice of Security Interest (2016-02-09, Reel 037142/0699), and the Release by Secured Party (2017-03-03, Reel 039750/0411).
   • GREENBERG TRAURIG, LLP (Denver, CO) appears for both assignments on 2014-07-25 (Reel 031945/0516 and 031945/0517).

4. Cascading transfers — PRESENT: The back-to-back assignments on the same execution date (2014-06-27) and recording date (2014-07-25) from the inventors to Solar Communications, Inc., and then from Solar Communications, Inc. to Neomedia Technologies, Inc. (Reel 031945/0516 and 031945/0517) represent consecutive transfers involving an intermediate entity.

5. Pre-litigation transfer — PRESENT: The assignment from Neomedia Technologies, Inc. to NM, LLC on 2016-09-02 (Reel 038031/0951) occurred just days before NM, LLC filed its first known infringement suits involving this patent (e.g., against Snap Inc. on Sep. 9, 2016, and Wal-Mart Stores, Inc. on Sep. 1, 2016). This timing strongly indicates the transfer was arranged to enable or facilitate patent assertion.

6. Bankruptcy fire-sale — NOT PRESENT: There is no information indicating that the original assignee, Neomedia Technologies, Inc., filed for bankruptcy.

7. Privateering — UNCLEAR: While Neomedia Technologies, Inc. appears to have been an operating company that transferred the patent to NM, LLC, there is insufficient explicit information to confirm if NM, LLC is asserting the patent specifically on Neomedia's behalf against its competitors, which is the specific definition of privateering. NM, LLC appears to be a dedicated NPE itself.

8. Defensive aggregator (anti-NPE) — NOT PRESENT: The patent chain does not terminate at a known defensive aggregator.

Verdict

NPE — high confidence

This verdict is driven by multiple strong signals. The transfer from Neomedia Technologies, Inc. to NM, LLC on 2016-09-02 (Reel 038031/0951) constitutes a clear shell-entity transfer occurring immediately prior to a new wave of litigation by NM, LLC (as seen in the litigation summary with cases filed by NM, LLC from September 2016 onwards). The repeated appearance of specific correspondent firms (Morrison & Foerster LLP and Greenberg Traurig, LLP) across multiple transfers in the chain further reinforces the pattern of a coordinated patent assertion strategy. The existence of YA Global Investments, L.P., a known investor in patent assertion, as a secured party (Reel 031448/0104, Reel 037142/0699) also points to an assertion-driven financial arrangement.

USPTO Assignment Center search for US8131597