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RPXcame out recently RPXThe recently published Q3 in Review included coverage of an assignment from a security software company to an entity with apparent ties to Fortress Investment Group LLC. USPTO records since released indicate that Fortress received another assignment at the end of the quarter, this one from Huawei.
Huawei executed two assignments on September 24 to INVT SPE LLC of Fortress, involving a total of three US patents. The patents negotiated generally relate to wireless equipment, dynamic content transmission and Internet protocol television (IPTV). Issued to Huawei between July 2006 and July 2012, the patents have not been asserted in any US litigation to date.
Unable to make scheduled payments on $10 million in debt, publicly traded NPE Inventergy Global, Inc. entered into a restructuring agreement with Fortress in December 2016, after which it assigned hundreds of telecommunications patents to INVT SPE (described at the time as a special purpose business entity managed and controlled by DBD Credit Funding LLC of Fortress).
This agreement gave Fortress sole discretion over the patents as well as $30.5 million in enforcement recoveries from the former owners of the patents (that’s to sayHuawei, nokia,
panasonic) and third parties involved in monetization efforts are compensated. (After that, Fortress also receives 70% of future patent revenue.)
Inventergy’s litigation campaign began in February 2017 with a pair of lawsuits filed in Delaware against Appleand HTC. INVT SPE resumed this campaign the following May, dismissing these first two cases after the TC Heartland decision fell and filed them in New Jersey, along with a complaint against ZTE.
The following year, INVT SPE took the campaign to the ITC (337-TA-1138), which in 2020 upheld an initial final decision that respondents Apple, HTC, and ZTE had not infringed the patents of claimed cellular network (all former Panasonic patents) — and further, that the claimed patents were not essential to the standard. RPX coverage of this litigation, including the Federal Circuit’s precedent ruling upholding the ITC’s result, is available here.
Stays pending the outcome of the ITC case, INVT SPE’s District Court cases against Apple and ZTE were dismissed with prejudice in June 2021 and May 2022, respectively. Meanwhile, the NPE’s case against HTC remains active in New Jersey, though a status update jointly submitted by the plaintiffs last month says they are engaged in “substantial settlement discussions.”
Learn more about the fortress
Formed in 2007, New York-based Fortress Investment Group is a global investment manager reporting $44.4 billion in assets under management as of June 30, 2022. As of the end of 2017, the Japanese conglomerate Soft Bank completed the acquisition of Fortress for $3.3 billion; in September, Softbank – which had just disclosed its biggest quarterly loss, totaling $23.4 billion – admitted that it was considering selling Fortress.
Currently available USPTO records indicate that Fortress holds, through entities in which it has invested and over which numerous defendants have argued Fortress has control, more than 2,500 original and disparate object, of which only a part is currently in dispute. .
As discussed in more detail here, Fortress appears to have received a patent portfolio in the last quarter of Softex Incorporated, a Texas-based security software company; the transaction has not resulted in any litigation – yet.
Meanwhile, as RPX recently reported, the Delaware leg of Fortress’ multi-pronged battle against Intelremains in neutral. In August, Chief Justice Colm F. Connolly stayed VLSI Technology LLC’s Delaware case against Intel until the NPE complied with its standing order regarding corporate disclosure. Judge Connolly will hear oral argument on VLSI’s response to that order in December. For further details, see “Judge Connolly Invites Parties to Address Court’s Authority to Order Disclosures” (October 2022).
Originally published October 28, 2022
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