Marble VOIP Partners LLC has filed its first litigation, suing Microsoft (6:22-cv-00076) in a new Western District of Texas complaint over a single patent generally related to using the Session Initiation Protocol (SIP) to enable VoIP in applications. Targeting the provision of its communication platforms, including Microsoft Teams and Skype for Business, the Texas NPE is associated with a set of figures familiar to patent monetization.
The asserted patent (7,376,129) issued to IBM in May 2008 with an estimated priority date in October 2003. In September 2019, IBM assigned the '129 patent to NPE Daedalus Group LLC as one of more than 500 assets transferred, with Daedalus Group subsequently moving it to Slingshot IOT LLC (together with over 60 patents), which passed ownership to Quartz Auto Technologies, LLC in February 2020. That transaction involved 18 US patents, nine of which Quartz Auto has been litigating in a campaign begun in February 2020 that remains active today. Marble VOIP pleads ownership of the '129 patent, but currently available USPTO assignment records not yet reflect an assignment away from Quartz Auto.
Marble VOIP Partners was formed in Texas in July 2020, identifying York Eggleston and Keith Machen as its managers. Eggleston and Machen manage a web of NPEs, including Maryland entities Slingshot Technologies LLC and Slingshot IOT. The two cofounded Maryland-based IP Commercialization Labs, LLC (IPCL), an "IP and technology commercialization firm". In the past, on its public website (which appears to have been intermittently in need of repair), IPCL has described its consulting services through three models: (1) "direct licensing", 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 licensing and any litigation that may be required to compel licensing negotiations"; (2) "indirect licencing [sic]", under which the "inventor/owner transfers the patents to a third party, typically an NPE, which will focus on and manage the monetization campaign" while "IPCL will manage the transfer to the third party, and will continue to manage the monetization process", touting the advantage "that indirect licensing can yield upfront cash payments in addition to percentage participation in gross recoveries or ownership in the venture"; and (3) "enforcement", under which "IPCL uses proven enforcement strategies that encourage companies to settle quickly rather than engage in lengthy and expensive litigation" using IPCL's purported ability to "litigate and win".
IPCL shares a Baltimore address with another Eggleston-Machen enterprise, 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", along with Studio Codeworks, a "software development and IT services firm" that was acquired by Qlarant at the end of 2019. Machen is an attorney; the YE website also describes Eggleston as "an "inventor, entrepreneur and financier".) Machen also apparently serves as president of Nexify, "a global leader in content personalization tools and solutions for all applications" that is identified as a YE Ventures "portfolio company".
None of these various entities has a history of filing any patent litigation, including Slingshot Technologies, but other entities associated with Eggleston and York have received and litigated assets through them, including Gravel Rating Systems LLC, Jawbone Innovations, LLC, Slingshot Printing LLC, and Stone Interactive Ventures LLC, as well as Quartz Auto. For an introduction to the campaigns of these NPEs, see "New Texas NPE Sues Samsung over Former Jawbone Patents" (May 2021).
One Eggleston-Machen venture hit a snag in 2020 when the pair, through Slingshot Technologies, filed suit in Delaware Chancery Court to contest the ownership of a certain portfolio of patent assets. Slingshot Technologies planned to acquire former France Telecom assets from Transpacific IP Group Limited (a patent monetization firm headquartered in Singapore), but Monarch Networking Solutions LLC, a subsidiary of Acacia Research Corporation, picked up the assets instead (and has asserted them, against Charter Communications and Cisco in a case filed in January 2020). For RPX coverage of that state court ownership dispute, and its effect on Monarch's patent infringement suit, see here.
Those IBM assets divested to Daedalus Group have made their way into litigation through other plaintiffs as well—to trace that activity, see, e.g., "Additional Former IBM Patents Move from Daedalus to Another NPE" (July 2020). 2022 may very well see additional litigation from the Eggleston-York team, whether over former IBM assets received or over other assets, as the two have created additional Texas LLCs, beyond Marble, Quartz, and Stone, with other rock-related names: Granite Vehicle Ventures LLC on June 24, 2020; Cobalt Navigation Ventures LLC on November 19, 2020; and Graphite Charging Company LLC on December 7, 2020.
The new case has been initially assigned to District Judge Alan D. Albright. 1/20, Western District of Texas.
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.
