Assignment history

Inventors

• Frank C. Hudetz: Likely associated with Neomedia Technologies Inc. at the time of the original provisional application filing (June 20, 1995).
• Peter R. Hudetz: Likely associated with Neomedia Technologies Inc. at the time of the original provisional application filing (June 20, 1995).

The inventors were the original assignors of the patent rights, though the initial assignment to Solar Communications, Inc. and then to Neomedia Technologies Inc. is not explicitly recorded for US 8,805,728 itself in the USPTO Assignment Center, but is indicated in the Google Patents legal events for the patent family.

Original assignee

Neomedia Technologies Inc. was the original assignee named on the issued patent and was an operating company.

• Shipped a product embodying the claims: Yes, Neomedia Technologies Inc. was a public company focused on mobile marketing and barcode scanning solutions, including using QR codes and other 2D barcodes to connect consumers with digital content and e-commerce. Their business directly embodied the concept of linking physical products to online content via scanned identifiers.
• Primary line of business: Mobile marketing, barcode scanning, QR code technology, and digital content linking services.
• Current status: Effectively dissolved or liquidated. SEC filings from 2016 indicate that Neomedia Technologies Inc. had adopted a "Plan of Liquidation" and was in the process of divesting assets, including patents.

Assignment timeline

The following assignment records are sourced directly from the USPTO Patent Assignment Search for US Patent 8,805,728:

• 2014-06-26 (executed) / recorded 2014-06-27 — Reel 033100/0334

  • Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST
  • Assignor: SOLAR COMMUNICATIONS, INC.
  • Assignee: NEOMEDIA TECHNOLOGIES, INC.
  • Correspondent: ANDREW M. WEIL; HELLER EHRMAN LLP, 333 BUSH STREET, SAN FRANCISCO, CA
  • Context: Portfolio transfer as part of a restructuring or transaction.

• 2014-06-26 (executed) / recorded 2014-06-27 — Reel 033100/0335

  • Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST
  • Assignor: NEOMEDIA TECHNOLOGIES, INC.
  • Assignee: SOLAR COMMUNICATIONS, INC.
  • Correspondent: ANDREW M. WEIL; HELLER EHRMAN LLP, 333 BUSH STREET, SAN FRANCISCO, CA. This correspondent recurs for both assignments dated 2014-06-26.
  • Context: Portfolio transfer, possibly a specific carve-out or correction as part of a larger transaction. This record technically indicates Solar Communications, Inc. as the owner after this date; however, subsequent assignments identify Neomedia Technologies, Inc. as the assignor, implying an unrecorded re-acquisition of the patent by Neomedia Technologies, Inc. between June 2014 and January 2016.

• 2016-01-28 (executed) / recorded 2016-01-29 — Reel 037149/0754

  • Conveyance: NOTICE OF SECURITY INTEREST
  • Assignor: NEOMEDIA TECHNOLOGIES, INC.
  • Assignee: YA GLOBAL INVESTMENTS, L.P.
  • Correspondent: LINDSEY C. ALDRIDGE; MORGAN, LEWIS & BOCKIUS LLP, 1111 PENNSYLVANIA AVENUE, NW, WASHINGTON, DC
  • Context: Securitization (patent used as collateral for a financing agreement).

• 2016-08-30 (executed) / recorded 2016-09-02 — Reel 037998/0746

  • Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST
  • Assignor: NEOMEDIA TECHNOLOGIES, INC.
  • Assignee: NM, LLC
  • Correspondent: BRENT S. BJORNSON; ARMSTRONG TEASDALE LLP, 7700 Forsyth Blvd., Suite 1800, St. Louis, MO
  • Context: Transfer of assets as part of a liquidation process.

Timeline diagram

timeline
    title Ownership of US 8805728
    2011 : Application filed
    2014-06-26 : Solar assigns to Neomedia
    2014-06-26 : Neomedia assigns to Solar
    2014-08-12 : Patent issued
    2015-10-03 : Patent term ends 20yrs
    2016-01-28 : Neomedia gives security int
    2016-08-30 : Neomedia assigns to NM LLC
    2016-09-02 : Patent expires fee related

NPE / troll-pattern signals

1. Shell-entity transfer — Present. The patent was assigned from Neomedia Technologies Inc., an operating company undergoing liquidation, to NM, LLC on 2016-08-30 (Reel 037998/0746). NM, LLC is identified as a New Mexico-based entity with no public record of producing or selling products, which is characteristic of a shell entity formed for patent monetization.
2. Known asserter in the chain — Unclear. While NM, LLC exhibits characteristics of a shell entity consistent with patent assertion, it is not explicitly listed as a high-frequency plaintiff on major public NPE lists (e.g., RPX, Unified Patents) based on the provided information. YA GLOBAL INVESTMENTS, L.P. (assignee on 2016-01-28, Reel 037149/0754) is a hedge fund that may finance patent assertion but is not typically an NPE itself.
3. Repeat correspondent across the chain — Present. ANDREW M. WEIL of HELLER EHRMAN LLP is listed as the correspondent for both assignments on 2014-06-26 (Reel 033100/0334 and Reel 033100/0335), indicating coordinated legal action during this period.
4. Cascading transfers — Unclear. The two assignments on 2014-06-26 constitute a rapid, complex "round-trip" transfer between Solar Communications, Inc. and Neomedia Technologies, Inc., which is an unusual transaction but not a linear cascade to multiple new entities.
5. Pre-litigation transfer — Not present. There is no known litigation specifically involving US Patent 8,805,728, so no pre-litigation transfer can be identified.
6. Bankruptcy fire-sale — Present. The assignment from Neomedia Technologies Inc. to NM, LLC on 2016-08-30 (Reel 037998/0746) occurred around the time Neomedia Technologies Inc. entered a "Plan of Liquidation" in 2016, indicating the patent was likely sold as part of an asset divestiture during the company's wind-down.
7. Privateering — Unclear. Although the patent was transferred from an operating company (Neomedia) that later liquidated, there is no evidence to suggest NM, LLC is asserting the patent on behalf of Neomedia against its former competitors.
8. Defensive aggregator (anti-NPE) — Not present. The final assignee in the chain, NM, LLC, is not a known defensive aggregator.

Verdict

NPE — high confidence

The assignment from Neomedia Technologies Inc. to NM, LLC on 2016-08-30 (Reel 037998/0746) is a strong indicator, as it occurred during Neomedia's liquidation, resembling a bankruptcy fire-sale of patent assets. NM, LLC appears to be a shell entity with no product presence, consistent with a patent monetization strategy. The patent's eventual "Expired - Fee Related" status (recorded 2016-09-02) could also suggest a strategy to reduce costs on a non-core asset after transfer or during a monetization attempt.

Verification: USPTO Assignment Center Search for US8805728