Apparent IP Edge LLC plaintiff Invincible IP LLC has sued Alibaba (Alibaba Cloud US) (1:21-cv-00956), Citrix Systems (1:21-cv-00954), DigitalOcean (1:21-cv-00959), NetApp (1:21-cv-00960), and Nutanix (1:21-cv-00955) over the alleged infringement of up to five former Empire Technology Development LLC patents, of disparate origins, through the provision of infrastructure software products and solutions. These filings put the number of litigation campaigns that entities associated with IP Edge have begun over patents picked up from Empire Technology at 12.
The October 2020 assignment of nearly 30 US patents from Empire Technology to Invincible IP was recorded with the USPTO this past March. It included the five patents that the NPE has now asserted (8,938,634; 8,954,993; 9,479,472; 9,635,134; 9,678,774). With the '634 patent, which generally relates to "provid[ing] power savings in a data center", Invincible IP targets the Alibaba Cloud platform, Citrix Hypervisor virtualization service, the DigitalOcean cloud platform, NetApp Hyper Converged Infrastructure (HCI) solution, and Nutanix AHV virtualization service. The '634 patent comprises a single-member family, with its sole named inventor (Ezekiel Kruglick) assigning it, through Ardent Research, to Empire Technology in January 2012.
The '993 and '472 patents share the same named inventor and followed a similar path into Empire Technology's hands, through a February 2013 assignment. The comprise a family of two, generally related to processing "queue requests from co-located workers in a datacenter". The accused products are the AlibabaMQ for Apache RocketMQ distributed message queue service, Citrix ADC Simple Queue service, and NetApp Cloud Sync data replication service, with the two patents not asserted in the complaints filed against DigitalOcean and Nutanix. On social media, Kruglick identifies himself as having been the CEO and director of Ardent Research (characterized as "a technology consulting, research, and design company") from November 2009 through January 2021, listing several ongoing board positions (either member or technical advisor) into present day.
The '134 patent, which appears to have just expired, in May 2021, for failure to pay required maintenance fees, broadly concerns "manag[ing] resources in a cloud computing environment". It issued to Empire Technology after its named inventors assigned it in 2012 to Beijing Endless Time and Space Technology, which passed it to Empire on the same day. Invincible IP targets with the '134 patent network management tools, including the Alibaba Cloud Auto-Scaling service, Citrix Hypervisor, Digital Ocean Compute, NetApp Spot, and Nutanix AHV.
Finally, the '774 patent generally relates to migrating a virtual machine if the location of the "target host is within a particular perimeter". The five defendants are accused of infringement through the provision of data management products including the Alibaba Cloud - Elastic Compute Service, Citrix Xenserver virtualization tool, Digital Ocean Droplets virtualization service, NetApp ONTAP platform, and Nutanix Prism Central multi-cluster management tool. The '774 patent issued in June 2017 after its sole named inventor, through H&C Scientific Resources, assigned it as an application to Empire Technology in February 2012.
Empire Technology is a subsidiary of Allied Inventors Management, LLC (AIM), which was reportedly founded in 2015 to monetize patents received from Intellectual Ventures LLC (IV). In December 2018, Empire Technology granted a security interest in over 2,800 patent assets to a subsidiary of Crestline Investors, with the NPE subsequently recording a series of releases of the Crestline security interest over various sets of its patents, ahead of an accelerating set of divestments from late 2019 through 2020. Recipients include Allied Security Trust, presumably for subsequent sale, and IP Edge, as well as Boogio, Huawei, NohBell, and Mercury Kingdom Assets Limited (a murky entity, addressed in the British Virgin Islands, with director Standguard Nominees (H.K.) Ltd., a Hong Kong entity of uncertain operations, other than to continue prosecuting applications in the families acquired).
IP Edge has picked up multiple portfolios from Empire Technology since. In December 2019, it acquired batches of assets through apparent controlled entities Chimetech Licensing LLC (two patents), Crave Licensing LLC (33 patents), and Xinctec Technologies LLC (32). The firm added three more portfolios from Empire in 2020, received by Atestraw Licensing LLC (17 patents), Mellaconic IP LLC (6), and Syclone IP LLC (1). Across multiple of its 2020 campaigns, IP Edge has litigated 13 of those patents, hitting a combined 44 defendants across the set.
IP Edge was formed as prominent monetization firm IP Navigation Group, LLC (d/b/a IPNav) wound down operations when founder Erich Spangenberg "moved off" into 2014 to "do other things" thereafter (details here). Having been the director and vice president of Asia for IPNav in 2012-2013, Lillian Woung created IP Edge with fellow Texas attorneys Gautham (Gau) Bodepudi and Sanjay Pant, first in Nevada and later merging into Texas. The firm has been the top filer of NPE cases over the years since, having initiated over 135 litigation campaigns in total, both right before and of course after its formation in Texas.
Typically litigating in file-and-settle fashion, IP Edge has never taken a case to trial, with litigation usually ending at the pleadings stage, or just after. However, last year it filed an International Trade Commission (ITC) complaint, a first for the firm, through controlled plaintiff Q3 Networking LLC, against respondents CommScope, HP Enterprise, and NETGEAR, arguing the presence of a domestic industry based on the US activities of the original source of the patents asserted, Siemens. That investigation has persisted into expert discovery and dispositive motions. Then, in April 2021, through controlled plaintiff Bishop Display Tech LLC, the firm split 13 LCD patents acquired from Japanese firm IP Bridge, Inc. into two groups, one of seven and the other of six, asserted in a pair of Western District of Texas cases filed against Samsung on the same day. No complaint over either set of patents has been filed with the ITC.
The firm does not appear ready to leave its spot as the lead NPE plaintiff. Over the years, it has turned to various sources for its patents, including individual inventors, operating companies, other NPEs (like Empire Technology), and, more recently, at least one university-and its pipeline appears chock full of assets still to litigate. Perhaps most notable among them is a large portfolio of assets-more than 700-picked up from Technicolor SA in July 2020. The second quarter of 2021 saw that portfolio's first visible movement since it was acquired, with IP Edge's Magnolia Licensing LLP (the primary vehicle through which IP Edge appears to have completed that acquisition) transferring former Technicolor patents to at least three IP Edge NPEs: Bataan Licensing LLC, Sunflower Licensing LLC, and Triumph IP LLC.
Moreover, IP Edge has continued to form additional entities, likely future plaintiffs, in Texas, among them Crimson IP LLC (which just launched its own litigation campaign); Longbeam Technologies LLC; and US Innovation Fund LLC. That third entity is particularly notable as Bodepudi, Pant, and Woung are named directly as its managing members. IP Edge more typically identifies longtime Texas residents, usually without independent connection to patent monetization, as managers or managing members of its LLCs. The last two entities of which its founders are directly identified are Q3 Networking (litigating before the ITC) and Bishop Display Tech (hitting Samsung with a large number of former IP Bridge assets across two suits), both of which departed from the firm's established patterns and practices.
Gawthrop Greenwood, PC filed the new complaints on behalf of Invincible IP. A one-page assessment of this campaign is available for download on RPX Insight. 6/30, District of Delaware.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
