Some of the former intellectual property assets of Aliph (d / b / a Jawbone), a manufacturer of Bluetooth headsets and other audio accessories that was wound up in 2017 (75 of them) has been the subject of litigation. The current owner, Jawbone Innovations, LLC, sued
Samsung (2: 21-cv-00186) on providing products with voice activity detection capabilities and associated microphone arrays, including headphones and smartphones. The complaint specifically highlights the Samsung Galaxy Buds Pro and Galaxy S20 as products accused of infringing the two claimed patents.
Jawbone Innovations argues that “Samsung has been made aware that the accused products infringe the claimed patents, and / or has otherwise become aware of the claimed patents [8,019,091; 8,280,072] and admitted that the accused products infringe the claimed patents at least from 2017 ”, when the liquidation of Jawbone is said to have prompted a“ multitude of technology companies, including
Apple, Samsung, Google,
LG and Fitbit [to be] identified as potential purchasers of Jawbone’s US patents. ”He further argues that he is the“ sole and exclusive owner of all rights, title and interest in and in ”the two patents.
Issued to Jawbone in September 2011 with estimated priority in July 2000 (based on the filing of a provisional application), the ‘091 patent is generally concerned with the detection and processing of a desired signal in the presence of acoustic noise, using a sensor for detecting vibrations of human tissue associated with voicing activity. The ‘072 patent issued to Jawbone in October 2012 with estimated priority in June 2007, also based on the filing of a provisional application. This is typically a physical microphone array that creates a virtual microphone array for noise cancellation. Gregory C. Burnett (identifying himself as the “Chief Scientist” with Jawbone from 2000-2011, now “on sabbatical”) is identified as a named inventor for both, alone for the ‘072 patent and with Eric F. Breitfeller for the ‘091 Patent.
Hosain Rahman formed Jawbone (f / k / a Aliph) in the late 90s with Alexander Asseily. The assets of the company, which had received funding secured by its intellectual property from various entities (including DBD Credit Funding LLC, an entity of Fortress Investment Group LLC;
Wells fargo; Waterman of Silver Lake; and BlackRock Advisors, in that order), were liquidated in 2017, when two disposals were registered with the USPTO of an Aliph entity to JAWB Acquisition LLC (erroneously identified in USPTO records as “Jawab Acquization, LLC ”), on behalf of which Daniel Setton has signed as manager.
Setton appears to be a manager of Lionel capital, which describes itself on its public website as “an investment firm focused on branded consumer products companies, from early stage investments, growth cycles to distressed assets in need of turnaround.” Current and past investments include “Aliph Brands”, described as a brand management company; on its public website, Aliph Brands gives a very similar description to Lionel Capital (“We target early stage, growing and struggling assets in need of a turnaround to create value brands,” quoting Jawbone as one of its brands).
The real applicant here, Jawbone Innovations, was formed on February 1, 2021 with York Eggleston of Slingshot Technologies LLC as a director. It acquired the patents claimed on May 18, 2021 from JI Audio Holdings LLC, a Texan entity formed on May 7, 2021 with JAWB Acquisition (formed in July 2017 in New Jersey) identified as its manager.
Eggleston manages Slingshot Technologies, a Maryland NPE also associated with Keith Machen. The two co-founded Maryland Intellectual Property Marketing Laboratories, LLC(IPCL), an “intellectual property and technology commercialization company”. In the past, on its public website (which appears to have needed repair intermittently), IPCL has described its consulting services through three models: (1) “direct license”, under which “the inventor retains ownership of the patent (s) and therefore controls the campaign ”while“ IPCL serves as an outsourced service provider to manage licenses and any litigation that may be necessary to force license negotiations ”; (2) “indirect license
[sic]”, under which” the inventor / owner transfers the patents to a third party, usually an NPE, who will focus on and manage the monetization campaign “while” IPCL will handle the transfer to the third party and continue to manage the monetization process “, touting the advantage” that indirect licensing can result in upfront cash payments in addition to a percentage interest in gross collections or business ownership “; and (3)” l ‘enforcement, “whereby” IPCL uses proven enforcement strategies that encourage resolution quickly rather than engaging in lengthy and costly litigation “using IPCL’s purported ability to” be satisfied and win “.
IPCL shares a Baltimore address with another Eggleston-Machen company, YE Ventures, which is described as a technology commercialization company with an investment vehicle (YE Capital) and an R&D operation (YE Venture Labs). (On its website, YE Ventures describes IPCL as a “partner”, as well as Codeworks Studio, a “software development and computer services company” which was acquired by Qlarant end of 2019. Machen is a lawyer; the YE website also describes Eggleston as “an“ inventor, entrepreneur, and financier. ”) Machen is also apparently president of
Nexify, “A global leader in content personalization tools and solutions for all applications” which is identified as a “portfolio company” of YE Ventures. None of these various entities have ever filed patent litigation, including Slingshot Technologies, but other entities associated with Eggleston and York have received and litigated assets through them.
For example, in June 2019, Slingshot Printing LLC, an Eggleston-Machen entity, filed four cases, each technically a separate campaign, against HP on old buckets Lexmark International patents received from Electric funai. (See here for background.) Another claimant associated with Eggleston and Machen, Stone Interactive Ventures LLC, established in Maryland in October 2018, has argued a few patents, received from IV, against Electronic arts (EA) relatively uneventfully, with the September 2019 case dismissed with prejudice within one month of the respondent’s response being filed later in the year. (Additional information is available here.)
Last year, Quartz Auto Technologies, LLC sued
Lyft and Uber (and Uber subsequently acquired Postmates) on several old IBM patents, received either directly from Daedalus Group LLC or indirectly from this NPE through the entity Eggleston-Machen Slingshot IOT LLC. The litigation ended in mid-January 2021 over Uber and Postmates but continues over Lyft, as well as against GrubHub, which was continued in March 2021. (Additional information about this campaign can be read here.)
An Eggleston-Machen company ran into a problem last year when the pair, through Slingshot Technologies, filed a lawsuit in Delaware Chancery Court challenging ownership of a certain portfolio of patent assets. Slingshot Technologies planned to acquire the former
France Telecom assets of Transpacific IP Group Limited (a Singapore-headquartered patent monetization company), but Monarch Networking Solutions LLC, a subsidiary of Acacia Research Corporation, instead recovered the assets (and claimed them, against Communication of the Charter and Cisco in a case filed in January 2020). For the last RPX coverage of this property litigation in state court and its effect on Monarch’s patent infringement lawsuit, see here.
Meanwhile, 2021 looks likely to see a few more campaigns from Eggleston and Machen. Gravel Rating Systems LLC Pleads for “Knowledge Filter” Patent, suing Cellco d / b / a Verizon Wireless Partnership,
Costco, Deutsche Telekom(T Mobile), Lowe’s, and
Target, all in the Eastern District of Texas. The records of this state identify four other limited liability companies created last year in this state and naming the two managers: Granite Vehicle Ventures LLC on June 24, 2020; Marble VOIP Partners LLC on July 14, 2020; Cobalt Navigation Ventures LLC on November 19, 2020; and Graphite Charging Company LLC on December 7, 2020.
Jawbone Innovations argues that it has “complied at all times” with its marking obligations, as have “previous assignees and licensees”. The new case was originally attributed to District Judge Rodney Gilstrap. 5/27, Eastern District of Texas.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.