Assignment history

Inventors

The inventors named on US Patent 8579710 are Oliver (Lake) Watkins, JR., Yousuf Chowdhary, Jeffrey Brunet, and Ravinder (“Ray”) Sharma. At the time of filing (January 18, 2012), all inventors were associated with XMG Studio Inc., which was the original assignee. Ray Sharma was the founder of XMG Studio Inc..

Original assignee

The original assignee listed on the issued patent is XMG Studio Inc. XMG Studio Inc. was a mobile game developer based in Toronto, Canada, founded in 2009. They developed games for iOS, Android, and Windows Phone platforms, including "Fashion Star Boutique" and "Drag Racer World," and also co-produced projects like "Degrassi" and "Ghostbusters: Paranormal Blast". Given their business as a mobile game developer and the patent's focus on virtual goods trading in video games, it is highly probable they shipped products embodying the claims. The company became inactive on social media in late 2016 and was acquired by Highmark Interactive in June 2017. Therefore, XMG Studio Inc. is no longer an operating entity under its original name and business.

Assignment timeline

• 2012-05-24 to 2012-05-28 (executed) / recorded 2012-05-31 — Reel 028294/0412

  • Conveyance: Assignment
  • Assignor: WATKINS, OLIVER (LAKE), JR.; CHOWDHARY, YOUSUF; BRUNET, JEFFREY; SHARMA, RAVINDER (RAY)
  • Assignee: XMG STUDIO, INC.
  • Correspondent: MILLER THOMSON LLP; 20 Queen Street West, Suite 2700, Toronto, Ontario M5H 3S1, Canada. This firm recurs later in this chain.
  • Context: Inventors assigned their rights to the original corporate entity.

• 2013-04-01 (executed) / recorded 2013-04-02 — Reel 030130/0325

  • Conveyance: Assignment
  • Assignor: XMG STUDIO INC.
  • Assignee: 2343127 ONTARIO INC.
  • Correspondent: MARK W. PONG; MILLER THOMSON LLP; 20 Queen Street West, Suite 2700, Toronto, Ontario M5H 3S1, Canada. This correspondent and firm recur in this chain.
  • Context: Transfer from the original operating company to a numbered company, likely for internal asset management or a sale.

• 2018-04-01 (executed) / recorded 2018-04-09 — Reel 045888/0036

  • Conveyance: Merger
  • Assignor: 2343127 ONTARIO INC.; XMG STUDIO INC.
  • Assignee: XMG STUDIO INC.
  • Correspondent: ROBERT S. KREMERS, ESQ.; 7954 Oxford Rd, Rydal, PA 19046. This correspondent recurs later in this chain.
  • Context: Merger and change of name, effectively re-establishing XMG Studio Inc. as the assignee, potentially after its acquisition by Highmark Interactive in 2017.

• 2019-05-21 (executed) / recorded 2019-05-22 — Reel 049249/0617

  • Conveyance: Assignment
  • Assignor: XMG STUDIO INC.
  • Assignee: IMAGINATION PARK TECHNOLOGIES INC.
  • Correspondent: ROBERT S. KREMERS, ESQ.; 7954 Oxford Rd, Rydal, PA 19046. This correspondent recurs in this chain.
  • Context: Transfer from XMG Studio Inc. to Imagination Park Technologies Inc.

• 2019-06-25 (executed) / recorded 2022-08-17 — Reel 061203/0185

  • Conveyance: Assignment
  • Assignor: IMAGINATION PARK TECHNOLOGIES INC.
  • Assignee: IMAGINE AR INC.
  • Correspondent: WAX LAW, LLC; 1000 Friendsville Rd Suite 101, Collegeville, PA 19426. This correspondent recurs later in this chain.
  • Context: Transfer from Imagination Park Technologies Inc. to Imagine AR Inc.

• 2019-06-25 (executed) / recorded 2023-01-24 — Reel 062491/0383

  • Conveyance: Corrective Assignment
  • Assignor: IMAGINE AR INC.
  • Assignee: IMAGINEAR INC.
  • Correspondent: WAX LAW, LLC; 1000 Friendsville Rd Suite 101, Collegeville, PA 19426. This correspondent recurs in this chain.
  • Context: Corrective assignment to update the assignee's name from Imagine AR Inc. to ImagineAR Inc. (as indicated by the current assignee information).

Timeline diagram

timeline
    title Ownership of US 8579710
    2012 : Inventors assign to XMG Studio Inc
    2013 : XMG Studio Inc assigns to 2343127 Ontario Inc
    2018 : 2343127 Ontario Inc merges to XMG Studio Inc
    2019 : XMG Studio Inc assigns to Imagination Park Tech
         : Imagination Park Tech assigns to Imagine AR Inc
    2022 : Imagine AR Inc assignment recorded
    2023 : Corrective assign to ImagineAR Inc recorded
    2024 : CAFC case 26-1720 filed

NPE / troll-pattern signals

1. Shell-entity transfer — Present.

   • 2013-04-01 / 2013-04-02 — Reel 030130/0325: Transfer from XMG Studio Inc. to "2343127 ONTARIO INC.", a numbered company. This typically indicates an entity whose primary purpose is not product development but often holds assets, fitting the description of a shell entity.
   • 2019-05-21 / 2019-05-22 — Reel 049249/0617: Transfer from XMG Studio Inc. to "IMAGINATION PARK TECHNOLOGIES INC.".
   • 2019-06-25 / 2022-08-17 — Reel 061203/0185: Transfer from IMAGINATION PARK TECHNOLOGIES INC. to "IMAGINE AR INC.", followed by a corrective assignment to "IMAGINEAR INC.". ImagineAR Inc. identifies itself as an augmented reality company, but the chain of transfers through various entities after the original game developer was acquired suggests a holding company structure that could facilitate licensing or assertion, rather than direct product embodiment of these specific claims (virtual goods trading in games).

2. Known asserter in the chain — Unclear.

   • None of the assignees (2343127 ONTARIO INC., IMAGINATION PARK TECHNOLOGIES INC., IMAGINE AR INC., IMAGINEAR INC.) are explicitly listed on common public NPE lists (Acacia, Marathon, Intellectual Ventures, etc.) based on available information. However, the litigation at the CAFC (26-1720) suggests an assertion activity.

3. Repeat correspondent across the chain — Present.

   • MILLER THOMSON LLP (including MARK W. PONG) appears as correspondent for the assignments on Reel 028294/0412 and Reel 030130/0325.
   • ROBERT S. KREMERS, ESQ. appears as correspondent for the assignments on Reel 045888/0036 and Reel 049249/0617.
   • WAX LAW, LLC appears as correspondent for the assignments on Reel 061203/0185 and Reel 062491/0383.
   • The recurrence of specific attorneys/firms across multiple transfers within this chain, particularly post-original-assignee, is a strong signal for coordinated patent management, which is common in NPE operations.

4. Cascading transfers — Present.

   • 2019-05-21 / 2019-05-22 — Reel 049249/0617 (XMG Studio Inc. to Imagination Park Technologies Inc.)
   • 2019-06-25 / 2022-08-17 — Reel 061203/0185 (Imagination Park Technologies Inc. to Imagine AR Inc.)
   • These two transfers, while not strictly within 24 months for recording dates due to a delay in recording the second one, show a rapid sequence of executed assignments in May-June 2019, shortly after the 2018 merger event. The effective date of the Imagination Park Technologies Inc. to Imagine AR Inc. assignment is June 25, 2019, just over a month after the previous assignment was executed. This rapid succession of transfers between different corporate entities, particularly with a shift in correspondents, indicates a structured movement of the patent asset.

5. Pre-litigation transfer — Unclear.

   • The CAFC case (26-1720) was filed in 2024. The most recent substantive assignment (Imagination Park Technologies Inc. to Imagine AR Inc.) was executed on 2019-06-25, and recorded on 2022-08-17 and 2023-01-24. This is more than 6 months prior to the 2024 litigation filing, so it's not a direct pre-litigation transfer. However, the patent family has "First worldwide family litigation filed" in 2012, which precedes these assignments (Unified Patents Link: https://portal.unifiedpatents.com/litigation/Delaware%20District%20Court/case/1%3A24-cv-01252). The provided context doesn't specify when the very first litigation (not just the CAFC appeal) began.

6. Bankruptcy fire-sale — Not present.

   • XMG Studio Inc. was acquired by Highmark Interactive in June 2017, not through a bankruptcy proceeding. The subsequent assignments appear to be strategic transfers rather than a distressed sale.

7. Privateering — Unclear.

   • There is no explicit evidence from the assignment records or the provided patent data (like SEC filings) to suggest a privateering arrangement where an operating company transfers the patent to an NPE to assert on its behalf.

8. Defensive aggregator (anti-NPE) — Not present.

   • The chain does not terminate at a known defensive aggregator like RPX, AST, LOT Network, Unified Patents, or Open Invention Network.

Verdict

NPE — moderate confidence

The presence of multiple shell-entity transfers (from XMG Studio Inc. to a numbered company, and then further transfers to Imagination Park Technologies Inc. and ImagineAR Inc. - Reel 030130/0325, Reel 049249/0617, Reel 061203/0185, Reel 062491/0383) and the repeated use of specific correspondent attorneys across different stages of the chain are strong indicators. Additionally, the rapid succession of executed assignments in 2019 (Reel 049249/0617, Reel 061203/0185) points to a structured handling of the patent asset. The patent is currently involved in litigation at the CAFC (case 26-1720), further supporting an assertion-focused strategy.

USPTO Assignment Center search: https://assignmentcenter.uspto.gov/