RPX's recently released RPX's recently released 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 made public indicate that Fortress received another late-quarter assignment, this one from Huawei.
Huawei executed two assignments on September 24 to Fortress's INVT SPE LLC, involving a total of three US patents. The transacted patents generally concern wireless equipment, dynamic content transmission, and Internet Protocol Television (IPTV). Issuing 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 $10M of 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 entity managed and controlled by Fortress's DBD Credit Funding LLC).
That agreement gave Fortress sole discretion over the patents as well as $30.5M of enforcement recoveries after the patents' previous owners (i.e., Huawei, Nokia, Panasonic) and third parties involved in the monetization efforts are compensated. (After that, Fortress also receives 70% of any future revenue generated by the patents.)
Inventergy's litigation campaign began in February 2017 with a pair of Delaware lawsuits filed against Apple and HTC. INVT SPE took over that campaign the following May, dismissing those first two cases after the TC Heartland decision came down and refiling 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 affirmed a final initial determination that respondents Apple, HTC, and ZTE did not infringe the asserted cellular networking patents (all former Panasonic patents)—and further, that the asserted patents were not standard essential. RPX coverage of that litigation, including the Federal Circuit's precedential decision affirming the ITC outcome, is available here.
Stayed pending the outcome of the ITC matter, 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 submitted jointly by the plaintiffs last month indicates that they are engaged in "substantive settlement discussions".
More about Fortress
Formed in 2007, New York-based Fortress Investment Group is a global investment manager reporting $44.4B of assets under management as of June 30, 2022. At the close of 2017, Japanese conglomerate SoftBank completed an acquisition of Fortress for $3.3B; in September, Softbank—which had just disclosed its largest-ever quarterly loss, totaling $23.4B—acknowledged that it is considering a sale of Fortress.
Currently available USPTO records indicate that Fortress holds—through entities in which it has invested and over which many defendants have contended that Fortress exercises control—more than 2,500 US patent assets of disparate origin and subject matter, only a portion of which are currently in litigation.
As reported in more detail here, Fortress appears to have received a portfolio of patents last quarter from Softex Incorporated, a Texas-based security software company; the transaction has not resulted in any litigation—yet.
Meanwhile, as RPX has recently reported, the Delaware prong of Fortress's multi-front battle against Intel remains stalled. In August, Chief Judge Colm F. Connolly stayed VLSI Technology LLC's Delaware case against Intel until the NPE has complied with his standing order regarding corporate disclosure. Judge Connolly will hear oral argument on VLSI's response to that order in December. For more details, see "Judge Connolly Invites Parties to Address Court's Authority to Order Disclosures" (October 2022).
Originally published 28 October 2022
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