• IPR Declaration and Expert Witness Assistance

    August 26, 2019 edwin IPR, Patents, USPTO

    What is an IPR?

    IPR is an intellectual property process called “Inter-Parties Review” or IPR. This process includes a “Petitioner,” a company filing a petition,  and a “Patent Owner” that owns a disputed patent.

    The “Petitioner” files this petition because it believes a “Patent Owner” (PO) owns an invalid patent, and decides to challenge its validity, not as part of a jury trial, but in front of the “Patent Trial and Appeals Board” (PTAB).   The PTAB was created as part of American Invents Act (AIA), but has suffered numerous criticisms from patent owners as it is been known to kill many patents usually in favor of petitioners.  However, recent statistics indicate that:

    Out of 4,139 decisions made by the PTAB, 2,512 (61%) didn’t touch a single challenged claim.  9

    The IPR process can be filed, in some cases with evidence using other patents and prior-art, that Petitioner seems to think invalidates the claims in a patent.

    Many inventors face challenges and criticize that some reviews are overly broad and many times, PTAB’s judges extend greatly sometimes with not sufficient clarity of how broad a claim is interpreted, and some may dare to say that this is still an unpredictable outcome.

    After filing a petition, this process may take a total of 12 months to complete. First a Petitioner files a brief or what’s called “Petition” that contains the patent to be be invalidated and an expert declaration made by a Person of Ordinary Skill in the Arts (POSA).

    The grounds for the petition filed by a “Petitioner” must be based under 35 U.S.C. §§ 102 or 103. 

    The USPTO presents the following timeline from filing to other steps.

    How can I help you as an Expert?

    You will definitely need an expert witness to assist you in filing and filing a reply brief.  I can help you drafting a declaration and review what is being filed with assistance of your patent attorneys.

    if you are a petitioner filing, you will need an expert declaration that is attached to your petition, if you are a “Patent Owner” your response must also include an Expert Witness declaration.

    The expert declaration will include technical background on why the prior-art covers the patent being challenged or doesn’t cover it, if you are the patent owner.

    As a Patent Owner (PO), you may receive a notification that a petition is file and a reply is due at a certain date. You will then have two options:

    • First, respond in great detail with your best arguments and obtain a denial of the IPR being instituted,
    • or Second, respond superficially and don’t disclose all your arguments and let the IPR be instituted, then file a declaration and obligate petitioner to disclose all their arguments.

    Once petitioner has disclose all these arguments, those cannot be changed. In fact, there could be estoppel consequences in US Federal court if a case is in trial, for those cases you may contact your patent attorney.

    In general, the challenges filed by a Petitioner in an IPR trial, are very similar to what you will find in “Invalidity Contentions” or an Invalidity Report in an infringement matter.

    Personally, I have assisted Citrix, Multimedia Content Management, LLC, and others in their IPR proceedings. I am an experience expert and can assist you in other patent matters.

    Usually, I will work together with your patent attorney,  Your patent attorney will  will draft the response, attach my declaration,  and other exhibits that supplement that declaration that ultimately give a strong foundations to the technical arguments that are being disputed.

    These arguments need to be carefully crafted to ensure prior matters, including other claim constructions or invalidity contentions are  sound and not contradicting with each other.  I as a witness may also be deposed by the Petitioner or the Patent Owner.

    Feel free to reach me and I will help you with your needs.

    751 Park of Commerce Dr. Suite 128,
    Boca Raton, FL, 33487     561.306.4996
    edwin@edwinhernandez.com

    What to write in a declaration?

    The declaration must be able to detect offensive and defensive arguments. Offensive is that a POSA would have known how to combine a patent or use prior-art available to re-create the invention.

    Defensively, you must know exactly if there are missing components and whether nor not a POSA would have been inclined to combine what a petitioner argues.  Many times, there are words chosen or similar capabilities are forced by a petitioner to make their arguments infant of the PTAB board.

    My declaration will have as a final objective:

    • Teach the PTAB board, how far-fetched a Petitioner arguments may be, can they be combined, are disclosures sufficient and how similar,
    • Teach the PTAB board how close Petitioner or a POSA would combine art and generate the patent claim, meaning is that claim disclosed in one or several combinations of prior art?

    In general, my job as an expert is to sit the foundation that your attorney will use to craft legal arguments and persuade a positive outcome to your case.

    If you need an Expert for IPR, contact me!

    If my area of expertise is not sufficient, or I may be busy in other cases I  can find you the right person for the job, contact me asap to study your case and what options you may have.

    Declaration Cost

    An expert may cost between $375 to $575 per hour with retainers ranging from $5,000 to $10,000.  Additional fees for depositions or additional declarations.  Contact me for pricing and what kind of arrangement can I make for you.


    For more information, rates, and references contact us at:

  • Cloud to Cable TV Patent Issued Today.

    US Patent 10,123,074

    Today, the US Pat 10,123,074 issued for Cloud to Cable, after a provisional was filed December 2014. This patent covers the currently commercialized Cloud to Cable TV system.  The process was not that long, considering that the initial firm, NOVAK DRUCE was disbanded and I had to transfer the case to Greg Nelson and Fox & Rothschild, LLP in West Palm Beach, FL.The patent issued  is titled: Method, system, and apparatus for multimedia content delivery to cable TV and satellite operators 
    A patent continuation was filed in October to cover other aspects of the invention, as shown in the picture the patent generates video with an MPEG Transport Stream that is compatible with a Cable TV system.

    What is Cloud to Cable?

    The main aspects and novelty of the invention include but are not limited to the following items:
    • Integration of web-elements, web pages, or HTML5-related content with rendering of this content on OTT, IPTV, and most importantly, Cable TV systems.
    • Virtualization and use of containers in the distribution of music and TV content to cable operators, by provision at virtual machine or docker container with the web page plus content for rendering purposes.
    • Essentially, the patent covers music and TV distribution to cable operators and systems for broadcasting.
    • Over-the-Top, IPTV systems, or Cable TV operators can now integrate novel ReactJS, Javascript, and all advanced mechanisms for designing user interfaces into their video feeds.
    • Audio and music channels can be integrated and created by just connecting to the web-based content provider.
    • Fault-tolerance and high-reliability is presented in the disclosure.
    In many ways, the invention covers a device, system, and methods to accomplish media distribution with ease, reducing costs, and implementing a novel mechanism that replaces satellite delivery, hardware encoders, and many other devices,

    Cloud to Cable Video

    A video can be found at EGLA’s Youtube Channel:
    https://www.youtube.com/watch?v=80G-rh6Dlns

  • Music Choice Patent Axed Partially by PTAB

      

    Late September and early October total of two judgments have been filed thus far by the Patent Trial and Appeal Board (PTAB) in the case against Music Choice’s patent. As indicated in the rulings for IPR2017-00888 and IPR2017-01191, partial axing fo the patents have been granted to Stingray or against Music Choice’s interest.  Interesting findings that enforce the value of our cloud to cable TV patents.The final written decisions are available herein:As Law360 points out:
    ” The case split the PTAB panel, with each of the three judges filing opinions. The majority ruling by Judge Mitchell Weatherly held that eight of the patent’s 20 claims are invalid because Stingray showed that a person skilled in the art would be motivated to combine the earlier inventions to arrive at Music Choice’s invention, which includes both a playlist and on-demand playback. Source: https://www.law360.com/media/articles/1091845/ptab-partly-axes-music-choice-patent-in-row-with-rival “
    This goes in accordance to the prediction made by myself back when this issue was discussed initially, specially in the article where I analyzed the acquisition of Music Choice by Stingray digital.

    Infringement and Damages Model

    As expected Music Choice should be more interested not so much on the “Video on Demand” revenues which is what these two patents cover, but more so in the patent covering the method and system for broadcasting to Cable TV which is the main source of revenues for both companies. The patent in dispute will be resolved this Friday October 19th, 2018, and the patent 8,769,062 as well as the original applications from 2001-08-28 which is claimed as priority date.It is my opinion that a similar outcome may result from the PTAB panel.Hence, what would the damages be for Music Choice? Well, I don’t have access to any information but what is found online, and in a letter from 2014, Music Choice was claimed to have 56M homes, or 57M listeners per month.  Source: https://www.justice.gov/sites/default/files/atr/legacy/2014/08/18/307851.pdf ‘In this document, Music Choice indicates that their Multi-Video Programming Distributors (MVPD) constitutes a main source of income for the company. Additionally, in a marketing material VOD distribution is said to have 72M subscribers as of Music Choice’s 2016 PDF :http://corporate.musicchoice.com/files/2214/6228/4671/2016_Music_Choice_Media_Kit.pdfIn a similar filing, Music Choice makes a case with a rebuttal testimony by Gregory S. Crawford, PhD https://www.crb.gov/rate/16-CRB-0001-SR-PSSR-SDARSIII/rebuttals/2-21-17-music-choice.pdf Hence, assuming a price point of let’s say 0.05c to 0.25c/subscriber and recalling what Mr. Boyko said in a prior-conference call, Music Choice should have revenues could be:
    • 0.05c per subscriber @ 50M subs = $30M/year
    • 0.25c per subscriber @ 50M subs = $150M/year
    Assuming now that, Stingray has landed $8M/quarter with an increase of 102.2% or 23.5% o the total revenues, from the 4th Quarter Report available online
    ” … or the quarter, Canadian revenues decreased 2.6% to $13.6 million (41.3% of total revenues) due to decrease in non-recurring revenues related to digital signage, United States revenues increased 102.2% to $7.8 million (23.5% of total revenues), whereas revenues in Other Countries increased by 34.4% to $11.6 million (35.2% of total revenues). (CNBC source: https://www.cnbc.com/2018/06/07/globe-newswire-stingray-reports-fourth-quarter-2018-results.html) “
    What this means is that somehow per year $32M/year o revenues were eroded from Music Choice’s pie, or since 2014 when the lawsuit was said to have had some issues with Stingray, then the total loss could be $32×4=$120M on damages.  Which, it seems to have been the offering made by Stingray digital to Music Choice for a full acquisition.The question is, what would be the forward revenues would be for a Georgia-Pacific model that a damages expert would have done for pricing moving forward and how Stingray Digital would have to pay for any future earnings to Music Choice. The information collected indices a 35% tax by Stingray on royalties and potentially another 20-30% which in turn would make operations in the United States at no profit or even at a loss.

    Conclusion

    It is very hard to compute a damages calculation, assuming that infringement takes place in the surviving claims of the patents in dispute. Hence, if damages were to be computed should be in the range of 8-9 digits with upside to the future, not including potential treble damages which could account for more money to be paid.Alternatively, Cloud to Cable TV  is the best technological platform for monetization with Cable TV and works using the most recent advancements in Cloud computing, Web technologies, and in combination with standard DVB Systems.  A unified patented technology for Cable TV distribution!
    https://eglacomm.net/cloud-to-cable-tv/
    Cloud to Cable TV  – US Patent 10,123,074
  • Music for Cable Re-Launch

    Music for Cable and CLOUD TO CABLE

    Sites Relaunched: cloudtocable.com, cloudforcable.com, musicforcable.com and ubiquicast.com

    Cloud to Cable enables a music or video streaming service to be delivered to CABSAT systems. Our platform can cover 10, 50, 100+ music or radio channels that are directly obtained using your HTML5 web interface and sent directly to a Cable TV System and to subscriber’s set top boxes.

    A “MediaPlug” server appliance is provisioned with our cloud-based VM with our proprietary software, connecting to a streaming service. As an example we have created  “MEVIA & Mediamplify Music” a Cable TV offering also available for Cable/Satellite systems. Read more

    Music for Cable TV is then as quickly as signing a partnership agreement with EGLA COMMUNICATIONS and creating a selection of stations for CABSAT. Licensing should be fast an easy to obtain directly from SoundExchange, BMI, ASCAP and other providers.

    We will power your music streaming service and protect all your content with appropriate Digital Rights Management (DRM) as suggested by the industry using encrypted and authenticated secured lines to our cloud or yours directly. Read more

    [spiderpowa-pdf src=”http://edwinhernandez.com/wp-content/uploads/2017/07/Music-for-Cable.pdf”]Music for Cable

    Cloud to Cable

    Sites:

    [spiderpowa-pdf src=”http://edwinhernandez.com/wp-content/uploads/2017/07/Mevia-Cloud-to-Cable-Music-TV-for-Cable.pdf”]Mevia – Cloud to Cable – Music, TV for Cable
  • Music Choice vs Stingray Digital – Case 2:16-cv-586-JRG-RSP

    Music Choice vs Stingray Digital – Case 2:16-cv-586-JRG-RSP

     vs. 

    We will discuss in the article, the judge’s order (Judge Roy Payne) and memorandum regarding all the claims terms and its construction. As expected, the judge went for:

    “[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he specification ‘is always highly relevant to the claim construction analysis.

    As in many cases, this was also the case as well, here the order/memorandum available online:

    [spiderpowa-pdf src=”http://edwinhernandez.com/wp-content/uploads/2017/07/Music_Choice_v_Stingray_Digital_Group_Inc__txedce-16-00586__0145.0.pdf”]Music_Choice_v_Stingray_Digital_Group_Inc__txedce-16-00586__0145.0

    As shown, in all cases where Music Choice made a simple term definition, Judge Payne went for the simplest and more appropriate meaning to the words. Music Choice won pretty much all terms in their favor and in all “indefinite” arguments did not move an inch in favor of Stingray. Hence the judge also sided with Music Choice’s arguments and claim construction. For instance:

    • What was the goal on trying to interpret a Cable TV system as it if was not a digital system? I don’t really understand why Greenberg did not agree to this simple term?  And the judge sided with Music Choice: “Accordingly, the Court rejects Defendants’ proposed “not a digital network” and “signal” limitations and determines the transmission-system terms have their plain and ordinary meaning without the need for further construction.”   The claim recites a first transmission and a second transmission system,
    • The same thing with “multicast,” this is a well-known term in all Cable TV systems, where multicasting is used to transmit all Linear TV signals. “Accordingly, the Court rejects Defendants’ proposed “not a digital network” and “signal” limitations and determines the transmission-system terms have their plain and ordinary meaning without the need for further construction.”
    • A very similar analysis is found with the term “trigger message” where the judge sided with the same simple meaning as follows:” Accordingly, the Court construes “trigger message” as follows: “trigger message” means “message configured to initiate an action”
    • And you can find a very similar argument for most of the terms in dispute.

    All the evidence is sealed and there is no way to see exactly how these terms match the device in dispute, however, Music Choice’s attorneys should be prepared and if those terms were favorable to them, now one can asume that their evidence to match these terms is solid.

    We will keep track on this case and how this develops, on a different note, Music Choice also got hit by Stingray with several IPRs:

    Music Choice then has to defend the following IPR cases filed by Stingray Digital regarding this particular case:

    • Trial Number – IPR2017-01450
      Filing Date – 5/18/2017
      Patent # – 9,414,121
      Title – SYSTEMS AND METHODS FOR PROVIDING AN ON-DEMAND ENTERTAINMENT SERVICE
      Patent Owner –  MUSIC CHOICE
      Petitioner – Stingray Digital Group Inc.
      Tech Center – 2400
    • Trial Number – IPR2017-01192
      Filing Date – 3/31/2017
      Patent # – 8,769,602
      Title – SYSTEM AND METHOD FOR PROVIDING AN INTERACTIVE, VISUAL COMPLEMENT TO AN AUDIO PROGRAM
      Patent Owner –  MUSIC CHOICE
      Petitioner – Stingray Digital Group Inc.
      Tech Center – 2400
    • Trial Number – IPR2017-01191
      Filing Date – 3/30/2017
      Patent # – 9,351,045
      Title – SYSTEMS AND METHODS FOR PROVIDING A BROADCAST ENTERTAINMENT SERVICE AND AN ON-DEMAND ENTERTAINMENT SERVICE
      Patent Owner –  MUSIC CHOICE
      Petitioner – Stingray Digital Group Inc.
      Tech Center – 2400
    • And maybe others http://www.gbpatent.com/content/uploads/IPR.pdf

    For example we found:  http://ptolitigationcenter.com/2017/05/pto-litigation-report-may-19-2017/

     


    Disclosure: EGLA, which I own, provided a platform for DMX for digital music distribution. Stingray acquired DMX Music but not our technology and kept its own music delivery system, the infringing system now. However, EGLA owns a patented technology that is called “CLOUD to CABLE TV“ that enables delivery of linear music channels to Cable TV subscribers in a more clever, fault-tolerant, and efficient way than these patents disputed here. Source: http://edwinhernandez.com/2016/08/01/platform-nternet-tv-music/

     

    https://www.slideshare.net/edwinhm/egla-communications-cloud-to-cable-tv-licensing-proposal?qid=9a8ef586-78a7-45a5-b02f-fc6ad1e0a95a&v=&b=&from_search=1

    and,

     

     


    Patent for MediaPlug  for the Cloud to Cable TV – WIPO Format

    EGLA CORP has a patented technology, superior to all the patented technologies out there, that brings the Cloud -based systems and generated images for music and TV channels that can be overlapped.  The Cloud to Cable TV system provides:

    • A system to convert HTML5 to Video, MPEG-4 or MPEG2Video, or H.265
    • A fault-tolerant system for MVPD and MSO’s – Cable TV Systems
    • Streaming for M3U8, HTTP Streaming, and compatible with other technologies
    • Virtualized TV in a box system with Cloud

    The device is called MediaPlug and also contains other Management APIs, as well as a good implementation tested with:

    • Cisco
    • Ericsson
    • Huawei
    • and Many other multi-plexers

     

    Advantages over all other systems

    There is no dependency into any Set Top Box or DOCSIS 2.0, DOCSIS 3.0, or other MPEG frames or dependencies in changes to STB.

    All the systems, are fault-tolerant and enable great reliability and remote management system for all distribution devices

    Uses standard DSL/Cable Modem technologies with the system to deliver 50, 100, 200 music channels, and 10-20 HD/SD/4K TV Channels.

    Many more advantages that are benefit DRM security, provisioning, and tracking for media playback.

     


    [spiderpowa-pdf src=”http://edwinhernandez.com/wp-content/uploads/2017/07/WO2016106360.pdf”]WO2016106360, however the right set of sighted is attached and is corrected in the US/Europe and other applications.
    Cloud to Cable TV White paper [spiderpowa-pdf src=”http://edwinhernandez.com/wp-content/uploads/2017/07/cloudtocable_whitepaperl.pdf”]cloudtocable_whitepaperl

  • American Innovation Cycle: Challenges and Phases (IPR era)

    American Innovation Cycle : Challenges and Phases / IPR Era

    An Inventor’s Perspective

    The new American Innovation Cycle has changed how Innovation is produced and will be created in America. It takes brains, sweat, and tears to innovate, specially technology when you count with limited resources and advanced technological innovations. Inventions do not come easy as many would think and the amount of work and sacrifice to create an new idea is only achieved by a combination of persistence, talent, and creativity. After all this effort, the United States Patent Office (USPTO) may grant that inventor exclusive rights to that intellectual capital in the forms of a patent. Moreover, in this new era of IPRs/PTAB, the  innovation cycle is more challenging and what the inventor thought it was of his  exclusive right, could be taken away by a group of individuals without a jury.

    It’s clear that besides intelligence or necessity,  the innovation process requires a great amount of research, many hours of testing, and solving problems that may have never been solved before. and then as a result, the creation of a clever solution or a technological breakthrough  that may leads to a brand new product, gadget, or drug.

    ∴   “The cure for Apple is not cost-cutting. The cure for Apple is to innovate its way out of its current predicament.”” — Steve Jobs

    Technological Innovations are things  that has never been done or invented before, and there is where the challenge relies, fighting with the unknown. Some innovators work alone, while some others work as a team and it all depends on the field of the invention.  Notwithstanding, the thought process, experimentation, and brain capacity required to change the world is significant. As a consequence, innovators put their own reputation on the line when thoughts, ideas, or breakthroughs challenge current trends or ways of doing things.

    In my personal experience and many others, their discoveries were a product of a PhD dissertation, after academic research or a Post-Doc position. Clearly, graduate school involves a ton of effort and your peers generally offer a great amount of scrutiny to your findings, creating the perfect environment for innovation, patents, and the creation of intellectual property (IP) wealth.

     “The National Science Foundation keeps the US on the cutting edge of discovery. This government agency funds science and engineering research and education programs. ” — NSF Website

    One of the organizations financing research is the NSF (National Science Foundation), in some other cases  private grants fund and help graduate school research.

    However,  when you are a private inventor or a small business, this innovation process is even more challenging.  Small businesses enter mercy waters as risk intensifies when the inventor’s own savings are on the line.

    An inventor, thru his small business, or an entrepreneur with limited resources may account with an income of 100–200K/year. I would bet the average inventor  would allocate an R&D budget of 10–20% of that capital, so his/her idea can materialize. In other words, 10-30k may be required for a private inventor or entrepreneur to conceive an idea to practice. Obviously, these amounts are far less smaller than many R&D budgets of mid-size enterprises, and may be insignificant for a corporation such as Apple or Google.

    ∴ “Google’s R&D spending will rise 16% in 2016 to $14.3 billion, BMO Capital Markets estimates” — BMO Capital Report.

    I am an inventor and have personally been involved for the past 20+ years in software and electrical engineering projects and have been awarded with 10 issued patents.  For the last 7 years,  I have also been  immersed into the world of intellectual property as an Expert Witness. Additionally, I have been to the courtroom fighting my own patent battles, licensing my inventions to corporations, and working as an expert witness helping big and small corporations, and other innovators in IP litigation cases.

    Moreover, I have been part of an incubator/accelerator,  and just recently formed my own technology incubator “EGLAVATOR,”.  Hence, I perfectly understand and have personally witnessed passionate inventors and entrepreneurs succeed and fail.  Besides that, I have been advising startups and entrepreneurs with their intellectual property strategies from implementation of software to patents.

    The Phases of the American Innovation Cycle

    I can summarize in the following chart the Innovation Cycle in America, as of 2017, identifying 4 phases:

    • The Prototype : First inventors create an exciting new idea, or prototype, this is first of the “Innovation cycle”,
    • Am I Rich Phase :   Teams are formed, early-stage capita, and people believe in the “American Dream” as Edison, Musk, Larry Page, and others have preceded them,
    • Try Again Phase:  Promoting that  patent or technological product was  full of hurdles, and problems, and,
    • Fighting Phase:   Many times, you may give up as your innovation could have been taken by major corporations. It is tiime to fight back

     

    Phase I: Your Prototype

    Congratulations, you have completed that prototype and  have successfully closed an R&D cycle. All your findings are promising and are able to get some cash to file for a patent. As an inventor, you may be excited to have that prototype built and working with your innovation in your garage, your small office, or even under your 3D-printer. A new functional product may require additional effort to perfect, but the core of your minimally viable product has been completed.

    MobileCAD Parts – Prototype GSM

    Now it is time to get your investment back and hopefully some additional return to your time, ingenuity, and investment made.

    US 7231330 Patent

    US 7231330 Patent

    In Phase 1 or the initial stage, can be identified when the inventor is excited to find out that after a couple of years of work and waiting for the patent office response, his invention has been granted with a patent. All inventors feel happy, safer, and more confident then to share with others their final product or intellectual property creation.

    The inventor  may even find some additional dollars for a continuation patent or a divisional that your friendly patent attorney has offered for another set of payments.  Then and within this excitement, the inventor believes that his valuable creation can help company A or company B, and Inventors can forecast good faith sales, royalties, or a revenue shared agreements with those companies.  In this phase, the inventor may draft or someone may help him draft a business plan.  This is a very common process in academic and research institutions, where their intellectual property is being commercialized and often needs a business plan attached to it.

    As an example, the University of Florida Research Foundation receives an assignment to the patents created by students or professors while at the university, and many spinoff companies are created from many inventions and intellectual property created in Gainesville.

    As time progresses, the inventor is almost sure that relinquishing 60% to 80% of the value of his IP, in exchange for business help has certain value, obviously when you multiply $yM by 60%, is still a much larger number than a 100K+ salary.

    In this initial stage of his invention, the now nascent entrepreneur has a “startup” venture. However, an inventor should be aware that 1 out of 200 startups may succeed, and no PhD will suffice or exclude you from the probability.

    Phase 2: Am I rich Phase?

    During a second phase, that we call Phase 2, inventors believe that their invention is worth millions and why not billions, and in order to get paid, the world needs to know about it and licensing deals need to take place.

    In this phase, a process of idea exchange is initiated with the world.  In some cases, inventors may start this phase even without a patent issued, but with a patent filed or “patent pending” status.  As this stage, Inventors believe that they are protected by their patent or multiple patents, some even may use an NDA to cover their IP a bit more. Inventors and entrepreneurs start sharing “decks” with their IP with others.

    Some companies may proceed with more due diligence steps, after an initial presentation, which may take a few weeks that may  include the disclosure of your finances, a term sheet prepared to license, partner, or sell the IP with a major player, your new customer.   As such, term sheets may include 5%, 0.5%, or even 0.05% may represent 10x to 1000x what the inventor invested or what a 401K would contain after 30 years of savings.

    At this stage, some inventors may think about Kearns and Ford’s case with the windshield wiper, or more recently Home Depot vs Powell patent win, or in some cases a multimillion dollar settlement between Carnegie Mellon and Marvell, Inc.

    Personally, I have met many engineers at trade shows, conferences, meetings, and in general when I worked for corporate America, many engineers and directors would say phrases like “We can do that ourselves, why do we need them?,” or “We did that already, isn’t that we had in a prototype before?”. That mentality is not conducive to licensing deals, in fact, many engineers would think they are not infringing that idea or may indeed have done a similar thing without filing for a patent.

    Obviously. the AIA (American Innovation Act) is not at play here, it is a fair game and inventors in good faith exchange the ins and outs of their technology, and probably more than they actually have protected with their patent and their claims.  AIA changes the rules to who filed first, and that may benefit the inventor, but not for long.

    At this stage, you cannot guarantee any NDA or outcome from sharing your invention, prototype, and trade secrets to third parties.  Your potential payout has maybe, inadvertently zeroed, as you have shared details to a corporation that had no desire to pay a penny to begin with.

    Obviously, if you were convincing enough or had a 1 a billion invention, you might hit the jackpot, at 1/10th of the value or even at 1/100th of the value perceived by you. Good for you!!! You don’t have to go thru Phase 3 and 4.

     

    Phase 3: Try Again

    After weeks or months of “marketing” and sales, there are no more responses to that presentation, and the excitement is gone, and you try it again with another party.  In some cases, a corporation may say “Send your claim chart,” “if you think I am infringing your invention, say that clearly.” In many cases, these are tactics designed to defuse your value, and get that idea or innovation for free without paying.

    The inventor and his parties are now part of the “Try Again” phase, and very few corporations will actually pay or offer to pay a fair deal to the inventor or the entrepreneur.  May corporations understand that a fair deal is 0% royalty for them or a rev share that will make them billions and thousands to the inventor, they think they may even try to hire the inventor to work for them.  Obviously, not that many inventors had a father like Donald Trump with a $1M dollar loan, in many cases inventors are using their time and own capital to fund their dream, many even quit their jobs, and are sacrificing their families so they can move out of their garages or co-working spaces.

    This is where when the nightmare starts, as you have disclosed to Corporation A, Corporation B, and C your deepest secrets. You assume that your NDA (that could be just downloaded form a free site) will cover you, and the answers is no. Sounds like bad news? Maybe you are better of working under the radar or move to the “Try Again” phase.

    Instead, don’t feel discourage and be prepared to gain some market share from Corporate A, B, and C and get leverage, gain momentum for your product, get customers and generate revenue. In many cases, this may not be even possible and if that is not an option, this is the perfect time to think about selling or auctioning your IP.

    It is also possible that as you contact more companies, maybe no phone calls are returned and you might get emails stating things like “We moved in a different direction….” Or “We will get back to you in the future,” or “If you think we are infringing say so.”  In other words, the “little guy” just wasted months of his/her time waiting and sharing all their knowledge, training for free several groups of engineers.

    ” It could be also a communication problem, hire a good sales person. Inventors might confuse and use too much jargon, confusing a potential buyer”

    Maybe if you are in this situation, and you are planning to file a lawsuit, stop right here and think. If nobody wants to pay for your invention or innovation,  or offers little to pay for your invention, there are two reasons:

    • Your invention is not valuable as you think it is, or
    • Your invention is very valuable and they think you cannot fight back

    Get some validation from the marketplace and  offer some licenses at reasonable prices, get paid small amounts. Assuming,  you can reach two or three licensing agreements, you may use some of the funds to move into Phase 4.

    ‘Good artists copy; great artists steal’ – Steve Jobs

    Phase 4: Give up or Fighting Back Phase

     

    At this point , you have decided to continue the fight and that’s what I will call the “Fighting back” phase, in this phase you have :

    • Legal or Litigation
    • Compete in the marketplace, go on offense

    We wil address the first option as the second option is more than obvious.  if you choose to fight back legally, it is going to cost money and a ton of effort.

    In my experience, corporations are banking on a simple fact:

    “you are poor and cannot afford to fight back.”

    An inventor will run out of money and will not be able to afford a firm like  “Foley and Lardner,” or “Fish & Richardson,” Instead, most inventors, hire a John Smith, P.A,, a guy at the co-working space that will settle a licensing deal for a 25K offer because he can make easy ½ of that without inventing a thing.

    Many other inventors won’t give up that easy, and after the past 2-3 years of efforts and, after dumping 300k – 1M of their own capital that will not make your 401k anymore decide to act on a different strategy, sell the asset.  Maybe at this point the cost of opportunity is not that high, and the inventor has not given up entirely for all these stories to become part of another “Thanksgiving dinner chatter” story.

    It is advisable that inventors find an intellectual property investor and sell their assets to them, after all that hard work, maybe someone can make some money. Many of these patent acquisition firms are called as “Patent Trolls” and will likely review your case and take a risk by enforcing your intellectual property.

    The last group of inventors and entrepreneurs, the lucky set in Phase 4.  have most likely no family to worry about, or have a wife with a 7-digit salary, and in general have a cushion of cash that has kept them afloat.

    Even these few inventors have to face retainers from boutique firms requiring $300k for an IPR defense. IPR stands for Inter-partiers Review which is a technique/trial coined as part of the AIA and used by the PTAB or “Patent Trial and Appeal Board.” to determine grounds of unpatentability or obviousness of a patent.  This process and all  other litigation require  thousands of dollars to retain experts at $300-$700/hr in the fields of damages, telecom, electronics, and computer engineering. Some may say that a patent lawsuit needs a budget of $1M to $3M to be safe.

    Once you are at this stage, you may have to have a wealthy business partner, where your business plan is your intellectual property, and your strategy is to take them to court as you have no other option left.

    At this stage, the inventor has no choice but to create a corporation that carries out one function and one only purpose, litigate your patents with some leverage to fight back, the same leverage your infringers will have. The inventor is unfortunately now facing another cut in his IP value, 30-50% perhaps plus the attorney’s fees.

    Corporations like Unified Patents and others are in the business of invalidating patents, they claim that they are looking after “startups” when we know that “Trolls” or patent investors don’t waste their time with startups that can barely make payroll.  Unified Patents is in the business of protecting the big donors and their big corporate members, as an example I wrote an article in my blog https://edwinhernandez.com/2016/03/05/unified-patents-ipr-for-8886308-patent/

    At this stage, the fight is not easy and after meeting maybe 20 to 100 law firms, you may find a match, and have an investor to cover your patent and IPR litigation costs, and there you go, your first litigation.

    Be were that IPRs are very hard to win, and the PTAB is invalidating patents using the “broadest interpretation of the claims” which I still don’t know what broad means, and what aspects of innovation are hence decided by a board of people that will obviously make mistakes. It is much easier to kill a patent than say why it is valid.  In fact, 90% of the patents will be invalidated in an IPR.

    Conclusions

    Obviously, if your IP is invalid and non-enforceable, you have no need to worry, don’t try to play a patent stunt. If you have not invested time and money with reputable attorneys, you will fail, you cannot fool the system, you need a strong patent with good “claims.” Hire a good Patent Attorney to handle this for you.

    On the other hand, the US Government must create an environment and laws, or extend the current laws to protect the many inventors that are facing gigantic multi-billion dollar corporations that are not interested in fostering innovation and paying their fair share to private inventors but instead are greedy and rather make their attorneys richer.

    Current invalidation processes and all the litigation roadblocks that are placed to protect corporations from “Patent Trolls” are simply unjust and unfair. The invention is not the victimizer, it is the victim. The current process incites and motivates large companies to simply steal and take the inventors to the cleaners via an IPR or just take IP with the agreement “see you in court.” Corporations are abusing the system and avoiding fair payment to small and independent inventors, this simply hinders innovation and halts private research made by small corporations, which brings to add as one of the “American Innovation Cycle” phases described in this articled.

    In my opinion, corporations should be penalized and award the total amount of fees paid to their attorneys plus what is paid to the inventor’s attorneys, if in fact and in bad faith an invention was taken. Specially, after fishing valuable information from the inventor. A recent case lost by Huawei shows how major corporation would not allow even a picture taken of one of their assets (T-Mobile vs Huawei – $4.8M Award)  Maybe, this will discourage illegal use of Intellectual Property (IP).

    An inventor has to remember that most corporations will pay millions to law firms and will offer thousands to the inventor, even if that invention is valuable. Hence, my recommendation is:

    • Create a business model and substantiate your invention, be prepared with enough cash to protect your IP wisely and very well,
    • Don’t save in attorney’s fees and look for attorneys that their patents have not been invalidated,
    • Keep your options open and file a continuation, even if you have your patent issued.
    • Be ready to fight back, send a letter to your congressman,
    • Talk to other inventors, inventors are often shy and hermits, speak up
    • If one of your inventions was stolen, well you are a creative kind, learn and create a new one!!!

    Obviously, inventors are move vulnerable at trade show as many do not understand or don’t know what the consequences of an email badly written, or whey they act emotionally sending a threatening letter or triggering a “Docket” action, meaning a lawsuit filed against them. Be careful and think before you act!

    What worries me is that innovation is getting monopolized by big corporations that can afford a litigation system. Any major corporation, specially those that you contacted and signed NDAs with yo, would rather hire a law-firm than pay you a dime. A major corporation with deep pockets will not be hesitant to allocate and pay to any law-firm $3M to $6M to defend their business form you. The corporation will try to find a a way to invalidate your patents, and fight the inventor that is perceived as the “little guy,” after all, you are just an annoying thing going on in their radar. The sad part is that. a corporation and its management team  will not even offer the inventor a low-ball 7 to 8-digit licensing deal even when you presented your invention or technology in good faith and in a non-threatening way.

    My company EGLA has its own intellectual property and we manage a technology incubator (“EGLA INCUBATOR”). At my company, we represent innovative ideas and  we want to meet corporations with interest in helping themselves and help innovators with our patents and software.

    Part of our IP can be found here:

    https://www.slideshare.net/edwinhm/eglas-patent-and-intellectual-property-portfoilio-licensing

    Disclaimer: Nothing here represents a legal advice, I am not an attorney and if you need one contact, your yellow pages or a friend may be your best referral. I bet there is a good IP/Patent attorney nearby. Hence,  you have to make your own decisions about any intellectual property matters.

     

  • A Cloud to Cable TV™ Platform for Music, Internet TV, and Video

    A Cloud to Cable TV™ Platform for Music, TV, and Video

    Dr. Edwin A. Hernandez
    Chief Technology Officer – EGLA COMMUNICATIONS

    EGLACOMM-logoMediamplify® is the one stop shop multi-platform media distribution for web, mobile, and Cable TV systems. Mediamplify® enables a cloud-based infrastructure to be connected with Cable TV head ends or Multi-System Operators (MSOs), just as Comcast, AT&T, CLARO, TIGO Home, among thousands of Cable/Satellite systems around the world with over 1 Billion viewers.

    As such, EGLA’s has coined the term “Cloud to Cable™” which means that content available in that cloud platform can also be broadcasted to Cable TV as well seamlessly and with minimum Cable TV content can also be available in the cloud and to any connected device, all in one unified platform, Mediamplify®.

    Mediamplify® is the platform that merges the cloud and Cable TV facilitating the offering of TV and Video Cable TV content in mobile devices and any other connected platforms as well as delivering Music, Video, and TV content commonly available in connected devices and mobile to Cable TV systems.

    What is Cloud to Cable™?

    Cloud to Cable™ is a patent-pending technology that brings HTML5 generated content to a cable operator head end in the format and reliability required in a traditional MSO.  Hence, any HTML5 website or service with video, TV, social media, can be broadcasted to a Cable Operator without major technological challenges.

    The content is created in a HTML or HTML5 compatible webpage that can include Javascript or any other web-enabled technology.

    DMX2GO Web  Web HTML

    [embedyt] http://www.youtube.com/watch?v=80G-rh6Dlns[/embedyt]

    How Cloud to Cable™ Music Works?

    The Cloud to Cable™ Music Platform uses the power of the cloud to scale and create server instances that handle music/audio playlist management, music encoding, playlist, Digital Rights Management (DRM), while delivering audio with the highest quality assurance. Additionally, metadata and Application Programing Interfaces (APIs) assist with the development of mobile applications to stream music from multiple music genres that are mastered by a DJ, a machine learning algorithm, or created by end users.

    Broadcasting to Cable TV™

    Our Cloud to Cable TV™ technology includes a cloud storage platform and all the required software and intelligence to broadcast content from the cloud to any cable TV operator. Once content, playlists, and music are available in our cloud the music is delivered to the Cable TV headed to our edge servers co-located in the cable operator premises.

    CloudtoCable Arrows

    Streaming to Web, Mobile, and Connected Devices (Internet TV)

    The music available in Medianplify® can be streamed to mobile devices, web, tablets, Smart TVs and any connected devices such as the Chromecast® and Apple TV®. Internet TV is a reality with Mediamplify.

    The same music selection is also available in any of our mobile applications: MEVIA (iOS and Android) that includes TV/Video, and Safety, or Mediamplify Music™. On the web, music playlists are used to create a web interface with HTML5 content that can also be injected into a Cable TV broadcast.

    Mediamplify® can also be integrated to third party applications using a  JSON / REST API interface. As examples of third party developers, we can mention SKY TUNES and DMX2GO.

    SKYTunes SampleDMX2GO Sample

    Mobile Applications for Music

    The music application reference implementation of iPhone is customizable providing a great User Interface (UI), Bluetooth Audio, Metadata Integration, as well as social support. Our mobile software is flexible and portable.

    APP1  APP0  APP2  APP3

    MEVIA : Internet TV with a Mobile Application for TV, Video, and Safety

     

    MEVIA brings together video, music, and safety all in one mobile experience.   MEVIA connects to our MEDIAMPLIFY® Platform and provides a rich multimedia experience designed for: Education and Learning, Corporate Branding and Image, Cable TV broadcasting, and more.

    Mevia logo with Phone

    Our patented technologies are unique having our target markets in Latin America and the United States.

    MEVIA Music

    MEVIA Music brings over 1000+ music channels without commercials or with commercials with casting capability for Chromecast® and AirPlay® devices. The Music is available thru a rich menu experience for Android and iPhone. Ads can be programmed and injected, we also have a solution for buildings, corporations, and organizations with WiFi or their own Cable TV network. The same music can also be licensed to Cable TV in packages of 50, 100, 200, or more music channels in DVB format, this is all connected with our MEDIAMPLIFY Platform, bring effective Cloud to Cable TV™ experience.

    collage-EGLA-slide-877x259

    Music Content Available for Cable TV, Mobile, Web

    We classified our music content in over 200 different music channels and more than 2400 playlists available without commercial or with advertisement insertion when requested by the customer.  Some of the sample music genres:

    • Latin Music
    • Electronic
    • Jazz
    • Rock/Classic Rock
    • Merengue
    • Salsa
    • Classic
    • Blues
    • National / Particular country
    • Tango
    • Rancheras/Mexican
    • Lounge
    • Instrumental
    • Country
    • Piano
    • Alternative
    • TOP 40
    • Christian Music
    • 70s’, 80’s, 90’s, POP2K

    [embedyt] http://www.youtube.com/watch?v=vW_sjBjECjM[/embedyt]

    MEVIA Video

    MEVIA video provides over 1000+ TV Channels of Internet TV, Movies, Educational Content, and more.  Ads can also be injected as part of this offering, additionally Custom TV network (Internet TV or Cable TV or both) can be created and casted in buildings, boats, and any other organization. APIs are also available for Video Streaming and 3rd party apps thru our MEDIAMPLIFY® Platform.

    Video Content available for Cable TV, Mobile, and Web

    We have access to over 1000+  TV channels in SD/HD from different countries and genres around the world that include:  Al-Jazeera America, Russian Times,  AFP, EdgeSports, MED TV,  TV5 France, EuroNews, PressTV, Voice of America, BBC.  There are also thousands of videos from several providers that can be packaged and resold, including BBC Documentaries, Independent movies, and FILMON Movies, this source provides content to iTunes and others.

    [embedyt] http://www.youtube.com/watch?v=csrlydZACNc[/embedyt]

    MEVIA Safety

    We are incorporating for LATAM and US markets, the security function that enables sending emergency messages to a loved one. This functionality is very helpful for LATAM markets where robberies and theft of mobile devices is prevalent. Hence your multimedia experience will be covered by the MEVIA Safety feature.

    MEVIA Safety is triggered with the power button on device or using the Bluetooth Low Energy device.

    Additionally, corporate customers of MEVIA Music or MEVIA Video will be able to enjoy of this particular functionality.

    Benefits of MEVIA and MEDIAMPLIFY

    The integration of MEVIA with MEDIAMPLIFY and all Cloud to Cable capabilities makes MEVIA a unique value proposition for consumers.

    Hence, MEVIA is a better offering over Spotify, Pandora, Hulu, and Netflix; assuming you were able to license their platforms,  a comparative analysis of MEVIA is shown in this chart:

    Mevia Analysis Comparison

    Integrated MEVIA and Cloud to Cable TV™

    As mentioned early, MEVIA also offers all MEDIAMPLIFY® capabilities including Cloud to Cable, delivering all the content available in Music/Video to any Cable Operator. Hence all MEVIA music, TV, and video content can be broadcasted to a Cable TV MSO all over the world.

    TV with remoteBenefits to Broadcasters and Media Companies

    Our platform enables broadcasters to sell direct to MSOs bypassing all distribution channels and creating a-la-carte alternative packages for Cable TV subscribers while at the same time offering mobile and casting options as Chromecast® and Apple TV®.

    In summary:

    • Tap into a market of millions of consumers worldwide on Cable TV systems
    • Tap into consumers with mobile, web and connected devices
    • Decrease costs for end-customers and increase revenues
    • Bundle content from our existing repertoire with yours, creating a better offering to consumers.
    • Provide additional features to your offering, music, videos, and casting.

    Benefits to Cable Operators and Telcos

    Cable operators in the US can partner with COMCAST and TV Everywhere ® services to allow mobile broadcast to mobile.  MEDIAMPLIFY® is a similar offering with a greater selection of services for operators.  The MEVIA App uses Encryption Media Extension services (EME) and also supports other Digital Rights Management (DRM) that facilitate the access to live and pre-recorded contents.   In the rest of the world, cable operators may partner with MEVIA to handle the delivery of TV and Music content to all their subscribers.  MEVIA sill protect all DRM content and facilitate viewership in any device.

    Telco’s and Operators that are still in transition to digital can integrate MEVIA as a mobile “play” and bring all the content in cable plus all the additional content from our wide range of TV offerings.

    Benefits to Universities and Training

    Universities usually own a TV channel or series of TV channels and are offering e-Learning content to their students and communities. MEVIA and MEDIAMPLIFY are hence great tools to enhance e-Learning. MEDIAMPLIFY truly amplify your reach to all potential e-learners.

    Bing music, video, news, some sports, and choose what your students and faculty may have access to.  Universities and training academies may bundle content to their audiences with TV, Music, and other relevant content in addition to training and educational videos, as such these bundles can offer great avenues for revenues to Universities, Technical Institutes, and any other educational system.

    Benefits to Small Businesses and Brands

    Small businesses and brands can truly amplify their reach with consumers. Brand association is then done with MEVIA, MEVIA brings video, TV, music, and safety to consumers in small business.  MEVIA Amplify your reach with multiMEVIA experiences.

     


    For more details the full white paper: