Case Study Patent #6384850

US 6,384,850
PatentBooks Evaluation
A TAEUSworks Report
December 4, 2014
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Contents
1. US 6,384,850 ........................................................................................................................................ 3
1.1. Claims Analysis ........................................................................................................................................................................... 3
1.2. Classification Analysis ................................................................................................................................................................. 3
1.3. Citation Analysis ......................................................................................................................................................................... 3
1.4. US 6,384,850 Evaluation............................................................................................................................................................. 4
1.4.1. Evaluation Summary .......................................................................................................................................................... 4
1.4.4. Market Criteria .................................................................................................................................................................. 7
1.4.5. Legal Criteria ...................................................................................................................................................................... 9
1.4.6. Summary.......................................................................................................................................................................... 10
1.4.7. Potential Licensees .......................................................................................................................................................... 11
1.4.8. Revenue Forecast ............................................................................................................................................................ 11
1.5. Analytics ................................................................................................................................................................................... 12
1.5.1. Patents per Priority year Based on US Classification Similarity ....................................................................................... 12
1.5.2. Patents per Priority Year Based on Semantic Similarity .................................................................................................. 13
1.5.3. Possible Prior Art Patents per Priority Year ..................................................................................................................... 14
1.5.4. Top Potential Licensees Based on Semantic Relevance and Patent Count ..................................................................... 15
1.5.5. Companies Having Similar Technology Based on Classification Similarity Analysis ........................................................ 16
2. Appendix A: Company Profiles ............................................................................................................ 17
2.1. TAEUS Corporation ................................................................................................................................................................... 17
2.2. Global IP Law Group ................................................................................................................................................................. 18
2.3. RGL Forensics ........................................................................................................................................................................... 19
3. Appendix B: Legal Team...................................................................................................................... 20
4. Appendix C: Financial Team ................................................................................................................ 22
5. Appendix D: Technical Team ............................................................................................................... 23
6. Exhibit E: Validation Evaluation Flow .................................................................................................. 25
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Page 2 of 25
1. US 6,384,850
Title
USPTO
Google
Information management and synchronous communications system with menu generation
Priority Date
999-09-21
Filed Date
1999-09-21
Publication Date
2002-05-07
Expiration Date
2019-09-21
Inventors
Mcnally, Keith R, Roof, William H, Bergfeld, Richard
Current Assignee
Ameranth Technology
Location
US
Systems, Inc.
PTO Length
2.63 years
Claims
16
Backward Citations
5
Forward Citations
36
Family Members
6
Litigation
Yes
Abstract
An information management and synchronous communications system
and method facilitates database equilibrium and synchronization with
wired wireless and Web-based systems user-friendly and efficient
generation of computerized menus and reservations for restaurants and
other applications that utilize equipment with nonstandard graphical
formats display sizes and/or applications for use in remote data entry
information management and communication with host computer
digital input device or remote pager via standard hardwired connection
the internet a wireless link or the like.
1.1. Claims Analysis
1.2. Classification Analysis
Independent Claims:
2
Dependent Claims:
14
Total Claims:
16
Shortest Independent Claim:
#12 (150 words)
Longest Independent Claim:
#1 (219 words)
I IP Classifications: 1
G06F 17/30: Information retrieval, Database structures therefor
US Classifications: 1
: Menu or selectable iconic array (e.g., palette)
1.3. Citation Analysis
Backward Citations: 5 (Unassigned: 1, Microsoft Corporation: 1, General Electric Company: 1, Ipdev Co., Illinois: 1, HERE Global B.V.: 1)
Forward Citations: 10 (Google Inc.: 4, Good Technology, Inc.: 2, ERUERUSHII Ascent Media Group: 1, Samsung Group: 1, Neomar, Inc.: 1, Elgort
Daniel R E: 1)
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Page 3 of 25
1.4. US 6,384,850 TAEUSworks Evaluation
1.4.1. Evaluation Summary
US 6,384,850 TAEUSworks Scores
100000
90000
80000
90,463.92
93,162.39
Technical Strength
Market Strength
92,082.21
70000
60000
50000
40000
30000
20000
10000
Legal Strength
1.4.2. Acceptance/Rejection Criteria
1.0
Does the patent meet the technical boundary conditions for inclusion in the PatentBook?
a. Yes (explanation required)
b. No
Global IP Response: Yes. Per TAEUS, Global IP has been instructed to assume this asset meets the technical boundaries for inclusion
in the PatentBook.
2.0
Are the patent maintenance fees current?
a. Yes
b. No
Global IP Response: Yes. According to PAIR, 4th, 8th and 12th year fees are all paid. Respective payments were made on 1/3/2006,
10/7/2009 and 11/3/2013. Note entity status changed from small to large between 8th and 12th year
payments.
3.0
Is the chain of title for the patent clear?
a. Yes
b. No
Global IP Response:
Yes, according to public information. The USPTO assignments database lists Ameranth Technology Systems,
Inc. as the current assignee, assigned by Keith McNally, William Roof, and Richard Bergfeld (R/F 010460/0511).
4.0
Has the patent been found to be unenforceable in a court of law?
a. Yes
b. No
Global IP Response: No, not as of the date of this submission.
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Page 4 of 25
Note: Answers to questions 5-12 are only required for patents submitted as candidates for Tier 1 and Tier 2.
5.0
Has one or more of the claims been found invalid in a court of law? (May require special review process)
a. Yes
b. No
Global IP Response: Yes, a jury found the '850 patent invalid; Ameranth moved for a new trial, which was denied and later
appealed. The parties reached a settlement through mediation on appeal before a Federal Circuit Mediator
and the verdict was later vacated, as was the judgment of invalidity (Case Reference: Ameranth v. Menusoft
Systems Corp et al, Docket No. 07-cv-00271).
Is the patent currently in the process of being reexamined or reissued? (i.e., can't go in to additional review until the
reexamination process is complete)
a. Yes
b. No
Global IP Response: No, not as of the date of this submission.
6.0
Is the patent currently being challenged on validity? (noticed or filed-i.e., can't go in to additional review until the
challenge has been resolved.)
a. Yes
b. No
Global IP Response: Yes. In at least one action-- IPDEV Co. v. Ameranth, Inc., Docket No. 3:14-cv-01303 (S.D. Cal. May 27, 2014)-IPDEV challenges the validity of the '850 patent under Section 102(g) (pre-AIA). Other threatened claims of
invalidity may exist which would not be known without access to proprietary information.
7.0
Are there any exclusive license agreements (geographic, field of use, etc.) or encumbrances on the patent that could
affect the non-exclusive licensing rights of the patent for the PatentBook?
a. Yes (explanation required)
b. No
Global IP Response: Cannot be confirmed without access to proprietary information.
8.0
9.0
Are there any joint ownership issues with the patent?
a. Yes (explanation required)
b. No
Global IP Response: Cannot be confirmed without access to proprietary information, but based on publicly available information,
no joint ownership issues are present.
10.0
Was the patented invention made under a joint research agreement?
a. Yes (explanation required)
b. No
Global IP Response: Cannot be confirmed without access to proprietary information.
Is the patent subject to any government rights due to government funding of the research activity resulting in the
patented invention?
a. Yes (explanation required)
b. No
Global IP Response: Cannot be confirmed without access to proprietary information, but based on publicly available information,
the government does not appear to have any rights to the patent.
11.0
12.0
Is the patent part of a patent pool or essential to the practice of a technology standard?
a. Yes (explanation required)
b. No
Global IP Response: Cannot be confirmed without access to proprietary information, but the subject matter suggests technology
standards are not applicable.
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Page 5 of 25
1.4.3. Technical Criteria
Factor
I.
II.
III.
IV.
V.
Score
(1-5)
Observability
Ease of Investigation/
Investigation Methodology
Novelty/Originality/Technical
Advantages (How original is the
invention?)
Utility
4
4
2
4
Technology Maturity
4
VI.
Availability of Alternatives
3
VII.
Possibility of Commercial Use
5
VIII.
IX.
X.
XI.
Validity Confidence
Presence of required or blocking
patents
Other licenses required to practice
the technology
2
4
3
Industry standardization
3
XII.
XIII.
Commercialization A: Difficulty of
Implementation in Products
Commercialization B: Technical
Know-how Requirements
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Comments
How observable is the invention on a product?
This technology is observable (particularly, Claim 12) on a product. While some of the elements of
Claim 1 are not directly observable, they can be inferred from testing.
How difficult is it to determine if the patented technology is being used?
Testing and observation of the app operation will be sufficient to demonstrate use.
Examples of technical advantages include: can't build a display without it, lower cost materials, ease
of manufacturing, enhances product quality, adds features, etc.
The invention is relatively novel, but not breakthrough technology. The technology is an adaptation
of similar systems that existed in other fields.
How useful is the invention to the products and where is this patent going to be used?
Use of the patented technology provides a competitive advantage for on-line ordering of food.
How mature is the technology covered by the patent? (e.g., most applicable to early adopter,
leading-edge products/manufacturing, fast follower, new (current generation) products, low-cost
manufacturer, etc.)
As more and more restaurants adopt on-line ordering of food, use of the technology will continue to
expand for the foreseeable future.
What is the availability of alternative technologies to accomplish the same result, and/or how
difficult would it be to design around the patented technology?
Alternatives are possible to implement, but these alternatives may not provide the ease of use and
extensive options that the patented technology provides. Accomplishing the same result without
using this technology may cause customer frustration while using the alternative.
What is the likelihood that the technology covered by the patent is used by products in the
marketplace today?
This technology (or extremely similar technology) is widely adopted today in many on-line food
ordering systems.
How likely is the patent to be at risk for anticipation or obviousness?
Based on class analysis, citation analysis, and looking at the use of the technology in other
industries, it is likely that there is a risk of at least 103 prior art.
What is the possibility that there are required patents or blocking patents?
Based on class analysis and citation analysis, it is possible that there are other patents which may be
required to implement the patented technology. The risk is relatively low, however.
What is the possibility that there are other patents in the space which would need to be licensed to
practice the technology
It is possible that there may be other patents that would need to be licensed to implement a
complete system, as claimed in the '850 patent.
Is the patent part of an industry standard (extent to which current and future products can be sold
without the patent)?
While there are no industry standards that require (or make optional) the use of this technology, the
breadth of the claims appear to cover many of the on-line restaurant ordering systems that have
been implemented and are being used.
How much time is required to implement the technology?
4
5
Implementation of the technology in a web application should be very straightforward and not
require a substantial investment in R&D or infrastructure. A full system should be able to be
implemented in less than 6 months.
What degree of technical know-how (tacit knowledge) is necessary for implementation?
Database, web and app developers should be able to implement the technology without any
additional information other than what is disclosed in the patent.
Page 6 of 25
1.4.4. Market Criteria
Factor
I.
Score
(1-5)
What is the contribution to profit margins from integrating the covered technology (value
addition)?
Value Contribution
3
II.
Product differentiation
3
IV.
The patent features provide increase ordering efficiency, but stops short of some of the unique
features and services provided by current POS offerings.
As a software intensive business, formal regulation is increasing particularly in the realm of privacy
concerns. As the POS service becomes more ubiquitous, industry players have increasing
responsibility for data and system security, particularly as related to transactions that occur in via
cloud computing.
Based on the claims construction of the menu ordering system from a wireless handheld device,
there seems to be few alternatives to the use of the '850 patent. There may be some alternative
methods, but it may be difficult to achieve. Given the litigious nature of the '850 patent, the
outcome of litigation could have a significant impact on the value of the patent (both up or down)
relative to other patents in the space.
What are the expected costs of future technology development?
Additional R&D Requirements
4
VII.
What is the patent's contribution to product differentiation (extent to which it adds highly desirable
features that distinguish it from similar products)?
What is the replacement cost (cost to integrate alternative technology fulfilling similar function)?
Replacement Cost
5
VI.
Operational efficiencies through the use of POS services will lead to cost savings, but the results will
not be easily measured. See www.trycaviar.com that includes real time GPS, ease of ordering in a
group from multiple devices to one ticket, etc.
Do any regulatory barriers to commercialization exist in target markets?
Regulatory Requirements
3
V.
A discrete analysis of the profit margin contributions is not easily determinable in aggregate as
related to the '850 patent. However, anecdotal evidence of increases in revenue and operation
efficiencies at restaurants that utilized point-of-sale (POS) software services is numerous in
example. In general, consumers prefer the ease of use of POS ordering systems, particularly
younger generations that are inclined to order "take away" or "to-go" meals off their smartphone
or tablet.
What is the manufacturing cost saved when implementing the patented technology?
Manufacturing cost savings
2
III.
Comments
Market research shows that consumers are quick to adopt technology related to POS and
reservation systems, particularly through the use of smartphones and tablets. According to the
National Restaurant Association (NRA) 20% of consumers use technology when selecting a full
service restaurant. In most instances, the development of this technology can be outsourced by
restaurants to third-party service providers. Larger chains may choose to build systems in-house
with the hopes that the ROI will be achieved through higher scale.
What is the market size for products currently using the covered technology (annual product sales
revenue)?
Market Size
5
"According to the NRA, the restaurant industry is a $684 billion industry that employs over 13.5
million people with almost a million different locations throughout the United States. The '850
patent is applicable to the point-of-sale (POS) software support and services industry in addition to
the downstream industry of actual restaurants.
1) The POS industry is estimated to be a $1.3B industry. Of that, food service is estimated to be
16% of the total, meaning POS within foodservice is approximately $215M market with estimated
growth between 3% to 4% p.a.
2a) Chain restaurants (e.g. DineEquity, Darden Restaurants, etc.) are fairly fragmented and
represent almost $100 billion of the industry's revenue.
2b) Quick service restaurants (e.g. McDonald’s, YUM Brands, Chipotle, etc.) are also fairly
fragmented and represent almost $200 billion of the industry's revenue. "
VIII.
What is the forecasted duration of product sales?
Duration of product sales
5
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The need for online ordering and reservation systems is not expected to abate, but rather continue
to evolve and grow. Companies like Open Table, Grubhub, and TryCaviar are regularly innovating
the way in which people order meals or make reservations online. The growth in business will
certainly outlast the term of the '850 patent.
Page 7 of 25
Factor
IX.
Score
(1-5)
What is the market direction (growing, declining) for products currently using the covered
technology?
Market direction
3
X.
Comments
The industry as a whole is likely to see low digit growth with a variety of growth rates by the
individual players. While larger restaurants and chains may choose to build their own POS and
reservation systems, the fragmented affiliations within the industry will likely see most restaurants
opting to outsource their systems to third-parties.
What is the life expectancy of the patented technology in the market (time until other patents
provide better alternatives)?
Life expectancy of the technology in
the market
3
"The '850 patent has foundational ideas related to using a central processing unit to list menu
options to a handset (or equivalent). Once the consumer selects their order, the information is
relayed to a communication system. Regardless of enhancements to current or future developed
technology or software, the basic tenants of menu ordering over a wireless handheld device is
unlikely to change.
That said, however, the impact of Alice v. CLS Bank is a legitimate issue related to the potential life
expectancy of the patent. Further, the litigious nature of the '850 patent increases the scrutiny
these patents will receive. If validity is affirmed, the life will be long. If the patent is invalidated,
the value will decline to nil. "
XI.
What is the market fragmentation/competition for products using the covered technology?
Market fragmentation/competition
4
"There are at least 20 major POS operators in the restaurant software system industry. These
companies are growing at a faster rate than the restaurant industry and have a few key players that
have grown at a tremendous rate from start-up organizations to major market players with
significant market adoption.
The restaurant industry is highly fragmented with the vast majority of restaurateurs being small
business owners. That said, numerous large industry players are available to license the
technology. "
XII.
What is the scope of marketing options for products using the covered technology?
Marketing Options
5
XIII.
Commercial Potential A: Adoption in
Primary Markets
XIV.
1
If the POS industry is considered the primary market, the use of the '850 patent is necessary to the
development of a wireless ordering system.
While the restaurant industry is technically not a secondary market, POS software is a secondary
issue to the overall industry. That said, restaurants that provide take-out or are quick-service will
require the use of wireless handheld device ordering as consumers will demand the ease of use in
most situations.
Is the patent protected in other markets?
Geographical coverage
2
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To what extent is the patent likely to be integrated into other products within the designated
industry? Does the patented invention form the basis for demand of the article sold or used, or of
any ancillary items sold or used?
To what extent is the patent likely to be integrated into other products outside the target industry?
Commercial Potential B: Adoption in
Secondary Markets
XV.
5
Two industries are potential licensors of the technology: 1) POS software-as-a-service companies,
and 2) the restaurant industry. The prior is likely licensing or expecting to license certain
technologies for use in its business. The latter is likely less tech savvy, is typically looking for
consulting services or to outsource its software services. Accordingly, the restaurant's that are
building their own ordering systems may be less aware of its potential need for licensing patents
and technology.
If the '850 patent has foreign counterparts, the market revenues estimated here will increase
significantly. Given international issues related to software patents, however, the case for licensing
the '850 international equivalents may be more difficult.
Page 8 of 25
1.4.5. Legal Criteria
Factor
I.
Score
(1-5)
Review of office actions, rejections, appeals, timeline, estoppels
File History Analysis: General
4
II.
File History Review C
5
IV.
File History Review D
5
V.
Specification Review B: Patentability
1
VII.
Re-examination Analysis
VIII.
Scope of Claims A: General
1
XI.
XII.
Scope of Claims C: Doctrine of
Equivalents issues
Scope of Claims D: Divided
infringement issues
Patent Term Remaining (useful life)
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Review of the file history reveals no issues of patent exhaustion or bars via the first sale doctrine
that would limit enforceability.
Are there issues of enforcement due to expiration of the patent or the application of a statute of
limitations barring recovery of damages for infringement of the patent?
Review of the file history reveals no issues of enforcement arising from patent expiration or statute
of limitations bars.
Claims provide reasonable certainty as to the claim scope; the best mode is stated; multiple
embodiments are explained and claim language is subject to broader interpretations based on the
specification (e.g. construction of "menu" and display and transmission option), though "hospitality
applications" could be better defined.
Are there issues of the subject matter of the invention not being patentable, or of public policy
disfavoring enforcement of patents in such area?
Yes, these claims are likely subject to Alice v. CLS Bank scrutiny. Specification language that refers
to improved systems over paper-based ordering is particularly unhelpful.
Has the patent been reexamined?
No record of re-examination proceedings.
The claims are reasonably broad, though each independent claim contains certain narrowing
language. For example, claim 1 limits display of menus to a "hierarchical tree format" and claim 12
limits use of the system to use on a wireless handheld device.
Are there claim construction issues or Summary Judgment that limited the scope of claims?
Scope of Claims B: Claim
construction issues
4
X.
Are there issues of patent exhaustion or application of the first sale doctrine that would limit
enforceability of the patent?
What is the scope of the claims of the patent?
3
IX.
There are no issues in the file history of priority of another patent that are not overcome with claim
language amendments. However, an interference action brought by IPDEV Co. seeks adjudication
of priority of its 7,738,449 and 5,991,739 over the '850 patent. Docket No. 3:14-cv-01303 (S.D. Cal.
May 27, 2014).
How well does the written description of the invention satisfy the requirements of definiteness and
enablement?
Specification Review A: Definiteness
and Enablement
5
VI.
102(e) (pre-AIA) and 103(a) rejections were overcome with claim language features that describe
information management, synchronizing of generating and transmitting menus, a sub-modifier
menu stored on a data storage device, a displayable window on a GUI, application software for
generating a second menu from a first, and transmitting the second menu to a wireless handheld
device or webpage. To the extent Ameranth distinguished over the prior art with these features,
the scope of the patent will be limited.
Are there issues of priority of another patent application or of patent interference?
File History Review B
1
III.
Comments
5
3
3
Yes, a court has ruled on claim construction in at least two cases (Ameranth v. Menusoft Systems
Corp et al, Docket No. 07-cv-0027, E.D. Tex; and Ameranth, Inc. v. Par Technology Corp et al,
Docket No. 10-cv-00294, E.D. Tex). Several terms were construed in each and some against
Ameranth's construction positions. Preclusive effect should be considered with respect to future
defendants and the claim construction positions Amaranth would take. Notably, since these claim
construction rulings, Ameranth has filed dozens of additional litigations which have settled (under
unknown terms).
Is there a requirement to rely on the doctrine of equivalents to assert the patent against alleged
infringers?
No, infringement claims against defendants are direct/indirect infringement.
Are there issues of divided infringement that would limit enforceability of the patent?
Independent claims are system claims. An indirect infringement argument will likely be relied on as
customers are those who use the entire system.
What is the remaining useful life of the patent?
Page 9 of 25
Factor
Score
(1-5)
Comments
Estimated patent expiration date is September 21, 2019.
XIII.
Has this patent been litigated before?
Litigation history
4
XIV.
Yes, this patent has extensive litigation history including dozens of defendants, most of which were
combined into a single lawsuit that appears to have resulted in settlements in late 2013. Access to
proprietary information would be beneficial to the reviewer, but we assume that multiple
settlements have resulted from these lawsuits, though we cannot speculate as to the settlement
terms.
Do Assignees in this technology/product/licensor area tend to favor litigation?
Litigation Risk
5
Assignee Ameranth is very litigious; litigation targets also appear to favor litigation as at least one
declaratory judgment action has been filed against Ameranth and another interference action
alleging a claim of priority.
1.4.6. Summary
Summary
Number
Comments
Acceptance-Rejection Criteria:
12
Go-No Go
Technical Criteria:
13
Market Criteria:
15
Legal Criteria:
14
Total Scored Factors:
US6384850 PatentBooks Criteria
Acceptance-Rejection Criteria:
Score
1
N/A
Technical Criteria:
90463.9175
Market Criteria:
93162.3933
Legal Criteria:
92082.2103
Total Score (Average):
1
42
Comments/Ave.
Accepted
91902.8403
Score is computed from the raw Evaluation scores using a ratio algorithm.
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Page 10 of 25
US 6,384,850 - PatentBooks Evaluation
1.4.7. Potential Licensees
▶ Agilysys, Inc.
▶
Eventbrite Inc
▶
MOBO Co., Limited
▶
QuikOrder, Inc.
▶
▶
▶
▶
Exit 41 LLC
Expedia, Inc.
Genesis Gaming Solutions Inc
GrubHub, Inc.
▶
▶
▶
▶
Monkeymedia, Inc., Texas
Munchaway LLC
Naama Networks Inc
Netwaiter, L.L.C.
▶
▶
▶
▶
▶ California Commerce Club Inc
▶
Hawaiian Gardens Casino, California
▶
▶
▶ Cash Register Sales and Service of
Houston
▶ ChowNow LLC
▶ Club
▶ Comcast Corporation
▶ Commerce Casino Inc
▶ Does Co.
▶ Domino s LLC
▶ eBay Inc.
▶ El Dorado Corp., Taiwan
▶ El Dorado Enterprises Inc
▶ EMM8, Inc.
▶
Hilton International Co. d.b.a. Vista
International
Hollywood Park Casino Inc
Hotel Tonight Inc
Hyatt Hotels Corp
IAC/InterActiveCorp
It Casino Solutions LLC, California
Kudzu Interactive, Inc.
LaughStub LLC
Live Nation Entertainment, Inc.
Marriott International, Inc.
Menusoft Systems Corporation
▶
Normandie Club, L.P. Normandie Club
Incorporated (General Partner
organized in California)
Normandie Club, L.P.
Sabre Corporation
Seamless North America, LLC
Starbucks Corporation
Starwood Hotels & Resorts Worldwide,
Inc
Subtle Corporation, The
▶
The Blackstone Group L.P.
▶
▶
▶
▶
▶
▶
▶
▶
▶
▶
Oracle Corporation
Orbitz Worldwide, Inc.
ORDR.IN, Inc.
O-Web Technologies, Ltd.
Papa John’s USA Inc
Papa s Hair Company, Inc.
PAR Technology Corporation
Partech Electronics Ltd
Penn National Gaming, Inc
priceline.com Incorporated
▶
▶
▶
▶
▶
▶
▶
The Ritz Hotel, Ltd.
TicketBiscuit, LLC
Ticketfly Inc
TicketMob LLC
Usablenet, Inc.
White Mountains Insurance Group, Ltd.
Yum! Brands, Inc.
▶
▶
▶
▶
Apple Inc.
Atx
Best Internationalkk
Best Western International, Inc.
▶
▶
▶
▶
▶
▶
▶
▶
▶
▶
1.4.8. Revenue Forecast
POS Revenue Forecast
Food Service POS Revenue
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16%
2005
2006
2007
2008
2009
2010
2011
2012
2013
2014
2015
2016
2017
2018
2019
$1,110.4
$1,145.1
$1,171.6
$1,186.9
$1,141.5
$1,186.5
$1,232.7
$1,287.7
$1,321.3
$1,343.3
$1,369.7
$1,393.2
$1,424.2
$1,439.9
$1,476.0
177.7
183.2
187.5
189.9
182.6
189.8
197.2
206.0
211.4
214.9
219.2
222.9
227.9
230.4
236.2
Page 11 of 25
US 6,384,850 - PatentBooks Evaluation
1.5. Analytics
1.5.1. Patents per Priority year Based on US Classification Similarity
Patents per Source per Priority Year
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1.5.2. Patents per Priority Year Based on Semantic Similarity
Patents per Source per Priority Year
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1.5.3. Possible Prior Art Patents per Priority Year
Patents per Source per Priority Year
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1.5.4. Top Potential Licensees Based on Semantic Relevance and Patent Count
Parasoft Corporation,
California
Change Tools, Inc.
Cozimo Technologies
Just Enjoy, Llc
Missiontrex Ltd Co
Block Communications, Inc.,
Ohio
Linkstorm
Decentrix, Inc., Colorado
Itventures Limited
Ipdev Co., Illinois
Changetools Inc
Priceline.com Incorporated
Binnj Inc
E-meal Llc
Restaurant Revolution
Technologies, Inc.
Local Corporation
Softrek, Inc.
Bmenu As
Fiserv, Inc.
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1.5.5. Companies Having Similar Technology Based on Classification Similarity Analysis
Trumpf Gmbh & Co Kg
3% Ag
Siemens
Xerox Corporation
3%
3%
Seiko Epson Corporation
3%
Ricoh Company,ltd.
International Business
Machines Corp.
17%
Microsoft Corporation
13%
3%
Panasonic Corporation
3%
Nokia Corporation
3%
Nec Corporation
3%
Hewlett-packard Company
3%
Google Inc.
3%
Autodesk, Inc.
10%
Changetools Inc
3%
Canon Inc.
3%
Blackberry Limited
3%
Alcatel-lucent
3%
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Technicolor S.a.
7%
Sony Corporation
7%
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2. Appendix A: Company Profiles
2.1. TAEUS Corporation
Colorado Springs, Colorado
http://www.taeus.com/about-taeus/
The modern professional has an array of tools at his disposal, most of which are well known and understood: portfolio mining,
prior art research, technical investigations, IP brokering and licensing. For over twenty years, TAEUS has been supplying all of
these services and more. TAEUS supplies IP analysis, defence, litigation support, and brokering services that have made them
established experts in these fields. TAEUS continues to create ground-breaking business processes aimed at changing the face of
intellectual property.
Providing Insight
The core of TAEUS unique strength lies in the vast wealth of technical and engineering experience. For two decades, TAEUS has
led the industry in applying engineering principles to patents, and helping clients make business decisions based on this
knowledge. This ability to understand the unique nature of a patent and how to precisely identify the simplest way of
demonstrating its use within a myriad of devices has made their technical expertise a sought-after commodity in the industry.
TAEUS expert patent reviews provide a thorough understanding of the merits and limitations of every patent in a portfolio.
TAEUS also assists companies with identifying and executing licensing, litigation, and sales of their IP assets to increase revenue
or generate a new income stream.
TAEUS patent brokering methods have created a new standard of presentation and market exposure that professionals expect
when considering purchasing IP. TAEUS analyzes patent strength and market impact prior to preparing a patent for sale, and
present each offering with evidence-of-use information or comprehensive claim chart analysis. This information allows buyers to
make informed decisions, and gives sellers confidence in the strength of their technology.
Creating the Future
TAEUS has been involved in every imaginable IP business scenario. Through that experience, they make life easier for our clients,
and help create a more efficient future for the intellectual property community. TAEUS developed the first and most
TM
comprehensive method of contextually analysing patents from a business perspective. Our TAEUSworks Patent Evaluations
have been used to predict the price of patents at auction, judge the strength of patents in litigation, and as an assessment for
how patents should be written in the future.
TM
TAEUS also pioneered the concept of PatentBooks , which facilitates cost-effective patent licenses between patent holders and
manufacturers by aggregating patents pertinent to a product, offering manufacturers a single price to license all the aggregated
patents, and distributing the licensing income to patent owners relative to the quality of their aggregated patents.
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2.2. Global IP Law Group
Chicago, Illinois
http://www.giplg.com/index.php?option=com_content&view=article&id=2&Itemid=2
Since their founding, Global IP Law Group, LLC has sold more patents for more money than any other entity. We have also
secured over 100 licenses to our clients’ patented technologies through conventional licensing and litigation. With offices in the
United States, Europe, and Asia, Global IP offers services, insight, and global resources to large and small companies,
independent inventors, and universities seeking value for their intellectual property assets. The firm’s key characteristics include:
▶
Unparalleled Success. We achieved the largest patent sale in history – the sale of the Nortel Networks patent portfolio
for $4.5 billion (US). We have sold other portfolios for nine and eight figure sums, as well as many in the seven figures.
▶
Extensive Industry Connections. Based on our success and prominence in the patent field, Global IP has high-level
business and legal contacts in many different industries and at all major patent aggregators and licensing companies. As
a result, we get potential buyers, licensees, and defendants to focus on our clients’ patent matters.
▶
Experience with Wide Arrays of Patent Portfolios and Monetization Strategies. We have analyzed patent portfolios as
small as a single patent and as large as 6,000. These patents pertain to a multitude of industries and levels of technical
complexity.
▶
Preeminent Patent-Monetization Expertise in the Bankruptcy Arena. In addition to the Nortel Networks patent sale out
of bankruptcy, Global IP has closed multiple other bankruptcy-related transactions, and is currently engaged in the
Kodak bankruptcy process. We have particular expertise in this area.
▶
Global Reach. Our team has access to global resources that dramatically expands access to the markets in which client IP
can be monetized. Our clients reflect this reach, and we have successfully sold patents for European and Asian
companies, as well as those from the Americas.
▶
Value Enhancement through Prosecution and Claim Charting. Global IP includes patent attorneys with extensive
experience, securing through prosecution the most valuable claims a specification will permit. Global IP often increases
the value of portfolios by counselling clients on market-informed prosecution strategy. Further, we develop extensive
and detailed claim charts to demonstrate the value of issued and pending claims.
▶
Non-Hourly Billing. Global IP offers flexible billing options, and including contingency, fixed-fee, and hourly
arrangements to meet client needs.
▶
Few Conflicts. Although we represent Fortune 500 companies, smaller companies, and individual inventors, we remain a
small firm. As a result, Global IP avoids extensive conflict-of-interest issues found at larger firms.
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2.3. RGL Forensics
Denver, Colorado
http://www.rgl.com/aboutus/xprCallOut.aspx?xpST=AboutUs
Overview
When it is essential to accurately discover and define financial value, you can rely on the global services of RGL Forensics.
Since RGL is completely focused on financial forensics, we provide our clients with independent and objective investigations
while avoiding any question of conflict of interest.
Often considered detectives of the financial world, forensic accountants are trained to follow the money trail left by economic
transactions and reporting events – even when that trail may have been concealed. We use cutting-edge methods and tools to
uncover financial evidence that will stand up in court or in any other contested circumstance.
Professionals who rely on RGL to discover and define financial value include:
▶ Insurance professionals - for claims made under commercial property and liability insurance policies.
▶ Legal professionals - for corporate transactions as well as civil and criminal disputes.
▶ Corporate professionals - for assets involved in the formation, finance, operation and dissolution of business entities –
and when investigating fraud.
▶ Public sector professionals - for matters pertaining to economic losses, internal compliance, regulatory oversight – and
when investigating fraud.
In 23 offices on five continents, RGL combines the skills and experience of its professionals with the financial models,
methodologies and technologies that meet or exceed global standards for evidence. We also provide expert witness testimony.
Many of our professionals hold multiple qualifications, such as certified public or chartered accountants, valuation specialists and
fraud examiners. This in-depth training and expertise enables RGL to look behind the numbers to identify market and economic
conditions, business transactions and trends, and patterns of human behavior that can shed light on a financial issue.
Our engagements are often supported by our forensic technology group: computer specialists who can quickly secure, search,
recover and classify vast amounts of electronic records.
Each forensic financial investigation is unique. When insurance, legal, corporate and public sector professionals must establish
the true facts and the correct figures in the course of a deal or a dispute… they rely on RGL Forensics.
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3. Appendix B: Legal Team
Elizabeth Koehn
Partner, Global IP Law Group
Ms. Koehn is a partner in the Chicago office of Global IP Law Group. She joined Global IP in 2010 as an associate. Ms. Koehn’s
practice concentrates at the intersection of law, technology, and finance. She has worked on several patent portfolio
transactions at Global IP, including the sale of Nortel Networks’ patent portfolio for $4.5 billion, and the sale of a wireless
communications patent portfolio for $75 million to Intel Corporation. Ms. Koehn also acted as an IP advisor to the Unsecured
Creditors’ Committee in Eastman Kodak’s bankruptcy proceeding, including acting as an advisor in the sale of its Digital Imaging
patent portfolio for $525 million. Ms. Koehn’s practice also focuses in part on portfolio evaluations and strategy. Ms. Koehn
provided Alcatel Lucent with a valuation of its 45,000 asset patent portfolio, which was used to support its debt financing in
excess of $2.6 billion (US). She has provided several portfolio evaluations for entities in the digital music market, e-commerce
market, mobile health market, as well as valuations for portfolios covering wireless handsets, wireless infrastructure, cloud, and
related markets. Ms. Koehn also provided a valuation of RIM’s patent portfolio in connection with a potential acquisition of that
company.
Prior to joining Global IP, Ms. Koehn was an associate with Hogan Lovells US, LLP (previously Lovells, LLP). While at Hogan Lovells,
Ms. Koehn handled matters with the Intellectual Property Media Technology, Litigation, and International Arbitration groups. In
addition to litigating in U.S. Federal District Court, Ms. Koehn was selected from Hogan Lovells’s U.S. offices to work as part of
the firm’s international arbitration team at its headquarters in London. While in London, she litigated claims in bilingual
proceedings before the London Court of International Arbitration valued at more than $50 million, representing clients from
Japan, Greece, Mexico, and Canada. During the course of these representations, Ms. Koehn developed an expertise in reasonable
patent royalty rates related to 3G technology and other cellular technology. In addition to her litigation experience, Ms. Koehn
has worked on an extensive licensing campaign for a patent portfolio involving GPS navigation technology, which resulted in a
sale of the entire portfolio.
Ms. Koehn holds J.D. (cum laude) from Chicago-Kent College of Law, where she was admitted and attended as a Dean’s
Scholarship student. She holds degrees in Economics and Spanish from the University of Illinois, where she graduated with
honors.
Ms. Koehn is licensed to practice law within the state of Illinois. She was published in Practicing Law Institute’s Ethics Programs,
summer 2010, and more recently in the Chicago Daily Law Bulletin (Oct. 2012). Ms. Koehn’s legal activities outside of the office
include acting for the Young Professionals Board for the Domestic Violence Legal Clinic in Chicago.
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Graham Gerst
Partner, Global IP Law Group
Graham is a recognized authority in the patent field, having been invited to testify before Congress and speak before the U.S.
Justice Department and Federal Trade Commission on patent issues. In both 2014 and 2013, IAM Magazine included him on its
list of the world's 300 leading IP strategists. He has been named one of the Top 100 Lawyers in Illinois and, for the last three
years, designated as a Super Lawyer.
Graham works on all aspects of clients’ efforts to monetize patents, including sales, licensing, and litigation. He is experienced
with many technologies, including telecommunications, consumer electronics, digital imaging, data networking, optical
transmission, computer architecture, circuits and semiconductors, software, and biotechnology. One of Graham’s notable
achievements was the successful sale in 2012 of two patent portfolios on behalf of his client, Aware, Inc., for a combined $91
million. Aware's market capitalization immediately prior to the announcement of these transactions was just $77 million.
Immediately before joining Global IP, Graham served as Senior Counsel to the Deputy Attorney General at the U.S. Department
of Justice. In that position, he vice-chaired the Justice Department’s Task Force on Intellectual Property and was appointed
Deputy U.S. Coordinator for International Intellectual Property Enforcement. He also managed a portfolio of technology-related
and national-security issues for the Deputy Attorney General, including computer forensics, information sharing, biometric data
collection and management, and the Department’s participation in the Committee on Foreign Investment in the U.S. (CFIUS), the
body that reviews foreign acquisitions of U.S. technology for national-security concerns. Graham held the U.S. government's
highest level of security clearance. Finally, during his tenure, Graham was appointed Special Assistant U.S. Attorney in the District
of Columbia and was lead counsel on multiple successful criminal jury trials.
Before that experience, Graham spent nine years in the Intellectual Property group at Kirkland & Ellis LLP, where he was a
partner specializing in patent litigation.
Graham received a J.D., cum laude, from the University of Chicago law school, where he was an editor on the University of
Chicago Law Review. After law school, he clerked for Judge E. Grady Jolly on the U.S. Court of Appeals for the Fifth Circuit.
Graham received his B.A., with honors and cum laude, from Williams College.
Mr. Gerst’s legal activities outside of the office include serving on the Board of Governors of the Seventh Circuit Bar Association
and on the Advisory Board of the Center for Intellectual Property Law & Information Technology at DePaul University Law School.
He is a frequent speaker, both at conferences and in the press, on IP issues, and he also taught trial advocacy at the University of
Chicago Law School. In his non-legal capacity, he serves on the Board of Directors of the Chicago Foundation for Education
(former Chair) and is a member of the Economic Club of Chicago. He is a past Chair of the Metro Board of Metropolitan Family
Services.
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4. Appendix C: Financial Team
Matthew D. Moyers ASA
Director, RGL Forensics
Matt Moyers is an intellectual property, business enterprise and equity valuation advisor. He leverages more than 12 years of
international experience and an affinity for the rapidly evolving IP industry to support both public and private clients in
maximizing the value of IP assets.
By employing the full spectrum of research, analysis, and valuation services, Matt is able to recommend top-tier strategies that
help clients identify and monetize underutilized intellectual property, as well as acquire new intellectual property assets. His
versatile skill set includes financial valuations of tangible and intangible assets, debt instruments, capital raising, and complex
securities analysis for M&A transactions.
Education
▶
Bachelor of Science - Business Administration, 1999
Professional Credentials
▶
Accredited Senior Appraiser, American Society of Appraisers
▶
Member, American Society of Appraisers
▶
Member, Association of Insolvency & Restructuring Advisors
▶
Member, Licensing Executive Society of USA and Canada
Professional History
▶
2014—Present
RGL Forensics, Denver, CO
▶
2011—2014
Ocean Tomo LLC, Chicago, IL
▶
2003—2011
PwC LLP, Chicago, IL
▶
2002—2003
DoveBid Valuation Services, Riverwoods, IL
▶
1999—2001
Robert W. Baird & Company, Chicago, IL
Court Experience
Matt has been the lead project manager on a number of valuation related court cases and advisory projects including, but not
limited to the following:
▶
Cengage Learnings, Inc – Lead valuation advisor with the debtors in the valuation of certain copyrights that represented
a meaningful portion of the Company’s owned copyright portfolio and impacted the recovery of all creditor classes
▶
Nortel Networks – Lead valuation and allocation advisor in the allocation of proceeds amongst the Company’s creditors
▶
Mosaid Technologies, Inc – Intellectual property valuation advisors for a take private transaction
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5. Appendix D: Technical Team
James Adams, Ph.D.
Chief Technology Officer, TAEUS Corporation
Dr. Adams joined TAEUS Corp. in 1993. He has over thirty years of experience in managing the definition, development, and
transfer of new products and technologies. Dr. Adams has held senior engineering and management positions with Sandia
National Laboratories, INMOS, Monolithic Memories, United Technologies, and TAEUS and has served as an expert witness in
copyright, trade secret, and patent infringement cases. His expertise includes strategic planning and program management,
patent evaluation and analysis, forensic engineering, process integration, device physics, microelectronic reliability and failure
analysis, electronic materials, semiconductor memories and microprocessors, software, management of quality, and radiation
effects in microelectronics. Dr. Adams holds three patents in integrated circuit technology.
He is listed in Who’s Who in Technology Today, 1984-1995 and has received the TOBIE Award for most significant R&D
accomplishment in electronics in a U.K. company. Dr. Adams has published over 26 papers in such technical journals as IEEE
Transactions on Nuclear Science and Surface Science, and he has given over 16 presentations at technical conferences including
the Government Microcircuits Applications Conference (GOMAC) and the NASA Symposium on VLSI Design, and has been an
Adjunct Professor at the University of Colorado (Colorado Springs) in the area of optoelectronics. Dr. Adams received his B.S.,
M.S., and Ph.D. from the University of Nebraska; his Ph.D. with a concentration in optoelectronics. While completing his Ph.D. he
received the distinguished honor of being part of the Sandia National Laboratories Doctoral Study Program in 1973.
As an undergraduate, Dr. Adams was a research assistant in optical properties and materials. In addition, Dr. Adams has over
1,000 hours in Continuing Education. Dr. Adams is a Senior Member of IEEE and a member of the Electrochemical Society, the
American Management Association, and the Licensing Executives Society.
Ray Armstrong
Program/Technical Manager, TAEUS Corporation
Raymond Armstrong is an Engineering Program Manager for TAEUS specializing in Intellectual Property Project Management. Mr.
Armstrong manages IP-based projects for original equipment manufacturers, businesses, individual inventors, and law firms. Ray
has 10 years of electronics experience and 11 years of intellectual property experience in litigation support, patent analysis, and
product reverse engineering. His background consists of semiconductor engineering in line yield enhancement, and technical
roles at electronic equipment manufacturing companies. He worked in the semiconductor engineering field for eight years and
earned various yield enhancement and process improvement awards resulting in increased product yield and process cost
reduction.
Ray’s expertise is centered on problem solving and hardware analysis including hardware reverse engineering and circuit
extraction. He has written numerous patent analysis reports, claim charts, and other technical reports dealing with hardware and
patent analysis. Ray studied Electronic Engineering at Colorado Technical University and has a Bachelor of Science in Project
Management.
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Rick Mintle
Director of Program Management, TAEUS Corporation
Rick is a senior technical executive who has managed the technical investigations of hundred of complex telecommunications,
consumer electronics, semiconductor and software products during his seven years managing engineering projects for TAEUS,
Rick brings engineering, operations, marketing, and sales managerial expertise to his clients.
Rick received his BSEE from the University of New Mexico, and his MBA from the Florida Institute of Technology.
Art Nutter
Founder and Chairman, TAEUS Corporation
Art Nutter founded TAEUS International Corporation in 1992 as world’s first engineering company dedicated exclusively to
intellectual property. TAEUS helps patent owners to receive optimum value for their property in the world’s market for
innovation.
TAEUS assists clients with all aspects of patent ownership, including determining which patents are valuable, proving
competitors’ use of patents by forensic engineering analysis (reverse engineering), supporting clients with patent licensing
negotiations, patent brokering, prior art research and expert witness services in IP litigation, and auditing license agreements.
TAEUS and its international subsidiaries’ technical expertise encompasses all areas of technology: from high technology to
healthcare, from undersea to space. TAEUS is headquartered in Colorado Springs, Colorado, with offices worldwide.
Mr. Nutter defined the TAEUSworks
TM
business method for evaluating patents for licensing purposes. He has filed for a number
of patents of his own. He helped to create the TAEUS Global Patent Syndicate (www.taeus-gps.com), connecting the world’s
patent owners with patent seekers.
Mr. Nutter lectures and writes on IP management, and served as trustee, High-Tech Sector chair, and international delegate on
many committees for the Licensing Executives Society (USA & Canada), Inc (LES). He also served as LES International
Communications chair.
He holds a BSME from the University of Akron (Ohio) and an MBA from the University of Phoenix.
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6. Exhibit E: Validation Evaluation Flow
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