Envision IP is a boutique law firm specializing in patent research. They provide patent holders, law firms, and patent buyers and investors with in-depth patent validity, valuation and transaction support services.
Earlier this week, BlackBerry filed a patent infringement suit against Facebook, Instagram, and WhatsApp over a number of patents it owns. There has been much speculation in recent years surrounding BlackBerry’s patent monetization strategy, and questions lingered around whether the company would start to aggressively assert its patent portfolio to drive revenue.
In a report published by PatentVue last February, BlackBerry’s 44,000+ worldwide patent portfolio appeared ripe for litigation and licensing, in part due to their relative strength based on reverse citations. In light of the recent complaint against Facebook et al., Envision IP analyzed the seven patents asserted by BlackBerry to determine the merits of the case, as well to determine if other third-parties could potentially be future targets of these patents.
US 7,372,961, entitled “Method of public key generation”, was acquired by BlackBerry in 2016 from its purchase of Certicom. Certicom is a leading software security firm which pioneered elliptical curve cryptography. The patent has a priority date of 2000. The ‘944 patent claims are directed to generating public and private keys for cryptographically securing data. The claims are not specific to messaging and communications, so there may be potential assertion value across various industries here where key-based encryption is used, such as in the finance, e-commerce, and enterprise information technology sectors.
In addition, the claims recite generating a seed and performing a hash function on the seed. Such language appears very relevant to blockchain-based encryption, and specifically for storing and securing cryptocurrency wallets which can rely on a seed that is hashed. As such, the ‘944 patent may have additional monetization value across various industries.
The ‘961 patent was asserted by BlackBerry once before against Avaya, Inc. on July 27, 2016 (Blackberry Limited et al v. Avaya Inc., 3:16-cv-02185). Interestingly, this was the same date that BlackBerry acquired the patent based on the USPTO assignment record. The case against Avaya was terminated on February 23, 2018 pursuant to a joint stipulation of dismissal filed by the parties.
US 8,279,173, entitled “User interface for selecting a photo tag”, appears to have broad claims around tagging photographs. Claim 1, for example, recites:
“A method of selecting a photo tag for a tagged photo, comprising: displaying a tag list including tags from one or more tag sources matching a search string; displaying a tag type indicator for each tag appearing in the tag list, said tag type being indicative of a tag source associated with the tag.”
Figs. 3-4 of the ‘173 patent are all related to Facebook’s tagging feature, as shown below:
The claims appear broad enough to read on various social platforms that incorporate photo/content tagging. The ‘173 patent and its claims appear to have been crafted specifically with Facebook in mind, potentially as an infringement or licensing target. Other social networking platforms with photo-and content tagging features, such as Snapchat, Twitter, Pinterest, Houzz, and others, could be potential future targets of the ‘173 patent.
US 8,209,634, entitled “Previewing a new event on a small screen device”, has claims more specific to messaging, and which relate to providing a visual indication of the number of pending/received messages, as shown in Fig. 5 below. The ‘634 patent has a 2003 priority date. These claims could potentially read on third-parties applications that, for example, provide an email, message, calendar item, or voicemail count next to a corresponding icon on a smartphone display. One well known example is Apple’s iOS that provides an e-mail message indicator as shown below, as well as various iOS applications also offer similar bubble-type indicators:
US 8,301,713, entitled “Handheld electronic device and associated method providing time data in a messaging environment”, has claims related to providing a timestamp in a message. An embodiment of the invention is shown in Fig. 5 below. The timestamp is generated based on a duration of inactivity. The ‘713 patent has a 2003 priority date. These claims could potentially read on third-party applications with a wall or stream-like message feed showing a time-stamped conversation, such as Apple’s iMessage:
US 8,429,236, entitled “Transmission of status updates responsive to status of recipient application”, appears to have relatively broad claims (based solely on the number of elements in the claims) related to transmitting messages based on a status of the receiving device. Without reviewing in more detail it is difficult to determine if there is potential third-party infringement in the marketplace currently. The ‘236 patent has a 2009 priority date.
US 8,677,250, entitled “System and method for switching between an instant messaging conversation and a game in progress”, has claims related to providing notifications in an instant-messaging interface, where the notifications are specific to gameplay, as shown in Fig. 5B below. There may be third-party applications for online gambling and multi-player games which may read on these claims. However, this patent may not likely read on non-gaming application, such as general messaging platforms, as all of the independent claims specifically recite game play. The ‘250 patent has a 2006 priority date.
US 9,349,120, entitled “System and method for silencing notifications for a message thread” is also messaging related, and has claims covering silencing and activating message threads. These claims (based solely on the number of elements in the claims) appear to be the narrowest of the patents in suit. The ‘120 patent has a 2009 priority date.
In summary, it certainly appears that the patents asserted against Facebook et al. may have further assertion potential. US 8,279,173, US 8,209,634, and US 8,301,713 appear to be the most interesting in terms of potential current third-party infringement. It is important to note that this assessment is based solely on a face reading of the claims, and without any review of the file history or determination of actual infringement or a claim construction analysis.
Besides US 7,372,961, none of the asserted patents have been involved in an post-grant proceedings or litigation, so it is not immediately clear how strong these patents are from a prior art standpoint. Regarding a Section 101 challenge under patentable subject matter, none of the asserted patents are listed in Class 705, which is the business methods classification at the USPTO. Many of the asserted patents are listed in various software-related classifications however, such as Class 708, 709, and 715.
If BlackBerry can obtain a successful judgement or licensing settlement as a result of this suit, we would not be surprised if the company began to further assert these, and possibly other patents, from its massive portfolio.
With the recent surge in cryptocurrencies, as well as companies in the blockchain ecosystem, Envision IP analyzed the US patent landscape of the industry. We reviewed patenting activity for all aspects of the blockchain industry – digital currency standards, digital currency exchanges, blockchain algorithms and infrastructure, blockchain front- and back-end applications, and blockchain-related enterprise technology.
We identified 1,045 US patents and published, pending applications specifically related to blockchain and distributed ledger technologies. Please note that our analysis does not include general cryptographic or encryption-related patents, such as for security and authorization, which do not involve a distributed ledger or decentralized concurrency methods.
Based on our analysis, the major patent holders in this space are Bank of America, IBM, Mastercard, FMR LLC, World Award Foundation, TD Bank, Coinbase, 402 Technologies, Accenture, and Dell. The list includes entities from the financial services, traditional technology, patent holding and consulting industries.
From the list of major holdings, 402 Technologies S.A., appears to be a patent holding company based in Luxembourg, and World Award Foundation / World Award Academy / AMobilePay, Inc. appears relatively obscure, and it is not clear what the company’s focus is. The various entities co-owning these patents are based in Tiburon, California and Austin, TX, and list an individual named Andy Zhou as their president.
The financial industry dominates the list of the top ten blockchain-related patent holders. For the purposes of this analysis, we grouped patents and published applications together. Leading the list is Bank of America with 43 patents, MasterCard International with 27 patents, FMR LLC (Fidelity) with 14 patents, and TD Bank with 11 patents. Other major financial institutions with blockchain patents include Visa Inc. with 7 patents, American Express with 6 patents, and Nasdaq Inc. with 5 patents.
Interestingly, Nasdaq is not the only exchange which owns blockchain patents, and the Chicago Mercantile Exchange owns two patents in this space. However, these holdings are dwarfed by the leading digital currency exchange Coinbase, Inc., which owns 13 US patents.
Blockchain-related startups and companies dedicated to developing technology, goods, and services in the blockchain and cryptocurrency ecosystem own approximately 59% of the US patents and published applications in this space.
In addition to Coinbase, other blockchain-focused companies and individuals which are leading patent owners include Gideon Samid, the CTO of BitMint, and a member of the IOTA Foundation 8 patents), Monegraph Inc., a content monetization platform (7 patents), Digital Asset Holdings, a provider distributed ledger applications for financial institutions (6 patents), SKUChain, Inc., a blockchain-based supply chain technology company (6 patents), Medici, Inc., a crytpographic-security and distributed ledger developer (5 patents).
The next largest industry group is financial services, which owns approximately 20% of the patents in this space.
Traditional technology firms own approximately 13% of these patents, and a mix of patent holding companies, retail, consulting, and gaming/entertainment companies collectively owning 8% of the remaining patents in this space. The retail companies include Amazon Technologies with 4 patents, eBay with 2 patents, and Wal-Mart with 1 patent.
With respect to traditional technology companies, IBM is an outlier with 27 patents, and is tied for #2 on our list with MasterCard as a major US blockchain-related patent owner. However, Dell and Sony Corporation are the only large diversified technology companies within the top twenty patent holders on our list, with 8 and 5 patents respectively. Surprisingly, companies such as Google, Oracle, Microsoft, eBay, and Facebook, which inherently rely on complex databases, transaction accounting, and payment processing systems, do not appear very active in blockchain-related patenting. It is important to note that US patent applications typically become publicly available 18 months after their earliest filing date, so many companies we have identified in our analysis may have unpublished patent applications that are currently pending.
We expect blockchain-related patent applications filings to continue at a increasing pace, as the technology and related standards gains adoption across multiple industries, and as cryptocurrencies become more mainstream and accepted as payment methods. In addition, as government regulation in this space is expected, this may give blockchain added legitimacy as a tool for secure transaction processing, accounting, and data management. Such regulation may inherently lead to continued filings as organizations looks to develop regulatory-complaint blockchain offerings.
In our continuing coverage of acquisitions and transfers of IBM patents, Envision IP analyzed recent IBM patent assignments from 2016 through 2017. Our previous analysis included IBM patent transfer through 2015. At that time, notable acquirers of IBM patents included Google, Alibaba, Twitter, and Facebook, with the latter three coming off IPOs in recent years.
Over the last two years, IBM has transferred 530 patents to third parties, with a vast majority of these patents being acquired by Snapchat. Other interesting patent transfers include the following:
ServiceNow is a cloud computing company that offers various IT services and products related to cloud management for enterprise. The company owns 347 US patents. The IBM patents account for approximately 40% of the company’s US patent portfolio.
Nearly 50% of the patent assignments over the last two years included patents related to cloud computing and remote data transfer, such as streaming and on-demand video. Of the 530 patents transferred during this time frame, 85% of the patents were transferred to US companies. 13% were transferred to foreign companies, and 2% were transferred to various entities tied to the United States government, such as DARPA, the U.S. Navy, and the U.S. Department of Energy.
Interestingly, IBM does not appear to discriminate between operating companies and non-practicing entities when selling patent assets. Six patents were transferred to Uniloc, a holding company that is well-known for suing technology companies. Uniloc has sued Samsung Electronics America, Inc. and Red Hat in the past, both companies that have recently acquired patents from IBM. Along the lines of acquisitions by holding companies, IBM and Finjan recently announced a new subsidiary which involves the transfer of 25 IBM cybersecurity patents.
The latest patent assignment data indicates that IBM has also transferred patents to organizations of various sizes, from fortune 100 companies, to start-ups such as Utopus Insights, which is an IBM-spin off.
Jawbone, the wearable device company once valued at $3 billion, has ceased operations and begun liquidation proceedings, according to The Information. The company has been involved in a number of high-profile intellectual property disputes in recent years with Fitbit. Envision IP analyzed the patent portfolio of Jawbone’s parent company AliphCom (also known as Aliph) to determine the scope and potential value of its patents.
AliphCom currently owns 251 United States patents. The vast majority of these, 176 patents, were obtained through AliphCom’s purchase of BodyMedia, Inc. in 2013 for over $100 million. Out of the remaining patents, approximately 50 patents were organically filed-for and obtained by AliphCom. The remainder of the portfolio was acquired from various third-parties including Radiient Technologies (speaker technology), Spectros Corporation (bio-sensing and cancer detection technology), University of Maryland (genetic marker technology) , and Sextant Medical Corporation (non-invasive tissue analysis technology).
Regarding the types of patents, 126 are design patents covering various hardware, screen, and interface designs. Interestingly, we identified only 20 patents in the entire portfolio which have claims directed to software and business methods. The remaining 105 patents are directed towards hardware systems and devices.
The average remaining term of the US portfolio is over 11 years, which provides plenty of time for a potential acquirer to monetize the portfolio, either through licensing, commercialization, and/or litigation. With respect to potential acquirers, the major wearable device and smartwatch manufacturers, Apple, Google, Samsung, LG, and of course FitBit may be natural candidates. In addition, Swatch, Nokia (Withings), Sony, Nike and Xiaomi could also find some synergies between their devices and the Jawbone patent portfolio. However, since nearly half of the portfolio is composed of design patents, it is likely that an operating company that obtains the patent portfolio would likely do so along with Jawbone’s product line, and rights to continue commercializing the technology in some fashion.
We do not expect a non-practicing entity to be particularly interested in the portfolio, unless they feel that certain patents have significant litigation strength and value. To this point, we identified US 6,605,038 entitled “System for monitoring health, wellness and fitness”. The patent has almost 1,100 forward citations, and has been asserted by Aliphcom against Fitbit in the Northern District of California. The patent was acquired from Bodymedia, which itself had previously asserted the patent against Basis Science Inc. That case was dismissed pursuant a joint stipulation.
In addition, US 7,020,508, entitled “Apparatus for detecting human physiological and contextual information” has over 700 forward citations. An impressive 10% of the portfolio (27 patents) have more than 100 forward citations, indicating that these patents may be relatively fundamental to the fitness/activity tracking and monitoring industry.
The portfolio is relatively robust, and includes a significant number of patents related to speaker technology, microphone and audio calibration, various fitness and activity tracking features, and physiological monitoring. See for example, US 8,870,766 entitled “Apparatus for providing derived glucose information utilizing non-invasive physiological sensors”, US 8,663,106 entitled “Non-invasive temperature monitoring device”, and US 7,938,783 entitled “Medical body core thermometer”.
In addition, the portfolio includes tissue imaging and genetic marker detection patents, which indicate that Jawbone may have been developing (or planning to develop) wearable devices with such advanced features – possibly for medical device and medical imaging verticals.
Regarding a potential valuation of Jawbone’s patent portfolio, it is difficult to estimate an intrinsic valuation as there are no public financials directly related to the patents. However, based on historical commercial revenue, we estimate the portfolio alone to be roughly worth $25 to $40 million, based on a discounted cash flow analysis. We used a $600 million revenue run rate that was reported by TechCrunch in 2014 as a baseline. Understanding this data point is likely dated, we assumed that a potential acquirer who continued commercialization could potentially achieve 5% of this revenue ($30 mm per year) going forward. We assumed a significant discount based on the distressed nature of the company and liquidation of the assets, as well as a modest 4% compound annual growth rate that we estimate an acquirer may achieve.
It is important to note that the price that a non-practicing entity may be willing to pay could be much lower however, given that such an acquisition would be based on licensing and litigation potential, and not necessarily the commercial potential of the patents.
Lyft received its second United States patent this past June, US 9,679,489, entitled “Ride Chaining”. The patent marks the second issuance for Lyft, and the company currently has two issued patents and four published, pending patent applications.
The ‘489 patent covers a system and method to efficiently utilize driver capacity, where riders with similar starting and ending points and times are matched so that they can share a ride. The patent states that “[i]f two riders request similar rides (e.g., with similar start points and end points) or rides that overlap significantly at points closely in time, the ride can be shared. If both requests are received by the driver dispatch server system within a predetermined window of time, the driver dispatch server system determines that the rides should be shared, determines the correct order of stops (e.g., pick up passenger 1, pick up passenger 2, drop off passenger 2, drop off passenger 1), and provides the route to the driver.” (Col. 2, Lines 54-63).
Fig. 7 of the ‘489 patent below shows a diagram illustrating a chained route for a driver:
The claims of the ‘489 patent appear relatively broad, which is surprising given a recent priority date of 2014 for the patent. Furthermore, a number of earlier filed patents and applications assigned to Uber were cited by the USPTO examiner during prosecution of the ‘489 patent.
In addition to the new issued patent, four patent applications assigned to Lyft were recently published on July 6, 2017:
These applications appear to cover unique aspects of the ride-sharing industry. US 20170193625 entitled “Driver Supply Control” provides a system to inform drivers of when there may an expected surge in demand, and allows drivers to plan work shifts based on the increased rider demand. US 20170193523 entitled “Driver Screening Including Mentoring” is also interesting. The application relates to testing drivers with a mentor prior to approving them to drive; essentially a secondary driving test in addition to a traditional driver’s license test.
We expect to see more patent application continue to publish for Lyft in the coming months and year, as it is clear the company is attempting to protect unique aspects of its ride-sharing platform. Despite the latest additions to its patent portfolio, Uber still continues to dwarf Lyft in terms of patents.
Uber currently has 184 issued US patents, up from 144 US patents from our review this past March. The bulk of these additional patents came from third-pary acquisitions. Uber acquired 24 patents from Hewlett-Packard and 10 patents from Manyworlds, Inc. this past June. The Hewlett-Packard patents related to back-end communication server and architecture technology. Interestingly, the Manyworlds patents relate to people-matching in general using, for example, common interests and location proximity. These patents indicate potential for relationship-based ride matching services:
Snapchat released its first hardware product earlier this week – wearable video-glasses coined “Spectacles”. The announcement caught many analysts by surprise, as the move shows Snapchat extending offerings beyond its traditional smartphone platform. Envision IP reported this past May that Snapchat had acquired a number of patents from IBM recently. The company currently owns 280 US patents, with 245 having been acquired from IBM. Envision IP analyzed Snapchat’s patent portfolio to understand what features the company may have patent protection for as a result of this acquisition, and which technologies the company may incorporate into its platform in the future.
The patented technologies Snapchat acquired from IBM relate to various aspects of messaging, email, and mobile communications. Many of the patents relate to group messaging, the use of avatars, gesture input technology, location-based social detection, and privacy and security controls; technologies which appear to complement Snapchat’s current offering. Other patents relate to increasing mobile bandwidth, pre-caching content, and optimizing data transmission between devices; technologies which improve the user experience. The IBM patents appear very targeted to Snapchat’s core offering, and provide the company patent protection for various aspects of messaging and chat technology. One interesting patent we identified is US 8036950 entitled “Auction management with business-volume discount”, which relates to an auction-type e-commerce system.
The IBM patents have an average remaining term of almost 9 years, and many of the patents have extremely high forward citation counts. For example, US 6012088 entitled “Automatic configuration for internet access device” has over 1,100 forward citations. Snapchat appears to have done an excellent job in mining IBM’s patent portfolio to select very relevant patents to acquire, some with priority dates going back to the late 1990s.
In addition to the patents acquired by IBM, Snapchat acquired 10 patents from Yahoo, and one patent each from Verizon and Bigfoot Internet Ventures. The acquired Yahoo patents relate to similar technologies – instant messaging and sharing of content in a mobile environment. One Yahoo patent stands out however, US 7958156 entitled “Graphical/rich media ads in search results”, which may provide insight on how Snapchat could possibly monetize its platform.
The company has filed-for and organically obtained 23 patents on its own. These patents relate to video integration with social networks and geo-location data, as well as image filters, gallery-like displaying of content, and security features. Snapchat currently also owns 236 pending, published US patent applications, with 17 resulting from its own filings, and the vast majority resulting from its acquisitions (207 from IBM, 10 from Yahoo, and 2 from Bigfoot Internet Ventures).
These patent acquisitions may help Snapchat defend against potential third-party infringement claims from competitors in the space, as Snapchat now has its own arsenal of defensive patents which may be used for counter-suit and cross-licensing purposes. We would not be surprised if Snapchat made further patent-fueled acquisitions in the future, especially around the user-generated video and social sharing aspects of its platform, as well as content monetization, as the company appears to have focused its current patent acquisitions heavily in this space.
Over the last few years, Envision IP has reported on Uber’s patenting efforts, both through its own patent application filings, and acquisitions of patents. Until recently, Uber has dominated the patent landscape in the ride hailing/sharing industry. However, we have begun to see initial patenting activity by Lyft, which until this year, did not own any issued patents or published patent applications.
Last month, Lyft was granted US 9,384,271, entitled “Driver jukebox system”. The technology allows passengers to provide a music preference to a driver when requesting a pickup. The driver’s system then plays music according to the passenger’s preferences during the ride. What is interesting is that the driver’s system starts playing music when the vehicle and the passenger are within a threshold distance, such as when the passenger is within the vehicle or about to be picked up. Thus, the driver can listen to their own music until the pickup is about to commence. The patent states that a commercial music server such as “Spotify, Pandora, Rdio, etc.” can be used to play the passenger’s requested music, suggesting possible collaboration between Lyft and third-party music services, which may lead to co-marketing channels for Lyft.
The patent was filed in March 2015, and claims priority to a provisional patent application filed in 2014. Our previous analysis of patents in the ride hailing/sharing industry indicated that Lyft had not placed much focus in the patenting arena. However, based on its first issued US patent, the company appears to have been filing applications as early as 2014. This patent is also a bit unique as compared to Uber’s current patent portfolio, which is heavily focused on navigation, route optimization, fee-determination, and driver/passenger matching technologies. If Lyft’s patent is any indication, perhaps the company is attempting to gain competitive advantages with proprietary passenger experience technologies.
Interestingly, it appears that Uber and Spotify are offering a feature very similar to Lyft’s patented technology. Spotify’s website states “When you request a car, you’ll be able to choose the music you want to hear on the journey. When your ride arrives, it’ll be your tunes on the car’s speakers.” This music partnership between Uber and Spotify was cited during prosecution of Lyft’s patent, and appears to have launched after the patent’s priority date of March 2014. It will be interesting to see how this patent is used by Lyft – to protect its commercial offerings, defensively in the event it is sued, or offensively in order to extract licensing/damages from potential infringers.
In addition to its issued patent, Lyft also has one published US patent application, US 20160027306, entitled “Ride Chaining”, published on January 28, 2016. The application lists Lyft co-founder and CEO Logan Green as an inventor. The applied-for technology relates to optimizing a driver’s route and pickup schedule for shared rides. After receiving a destination from a passenger, as well as a preference that they would like to be part of a shared ride, the system determines additional ride pickups based on the first passenger’s destination. For example, the patent application states “If two riders request similar rides (e.g., with similar start points and end points) or rides that overlap significantly at points closely in time, the ride can be shared. If both requests are received by the driver dispatch server system within a predetermined window of time, the driver dispatch server system determines that the rides should be shared, determines the correct order of stops (e.g., pick up passenger 1, pick up passenger 2, drop off passenger 2, drop off passenger 1), and provides the route to the driver.” (Para. 0021).
The technology described in Lyft’s patent application is similar to features offered by Uber, and appears consistent with technologies generally being patenting and applied-for by Uber. As with its issued patent, this patent application claims priority to a provisional patent application filed in 2014. The patent application recently received a Final Rejection from the USPTO this past July. The rejection is based in-part on a patent applications assigned to U.S. Xpress Enterprises, Inc. related to optimizing truckload cargo hauls, and another owned by Donald Gantz which relates to a system coined RideNET for connecting potential ride sharing partners. The other rejection is a 35 U.S.C. 101 rejection for being directed towards non-statutory subject matter, where the USPTO cites the Alice Corp. decision.
Our latest count of Uber’s US patent portfolio shows 44 issued patents. We will keep monitoring Lyft’s patenting activity and provide updates as new patents and publications become publicly available, as well as any updates on litigation which may be related to Lyft’s issued patent.
The concept of multi-account electronic credit cards, also known as smart cards or digital credit cards, have garnered much interest over the last several years. A handful of companies have entered this market, but none are currently offering cards which deliver upon this innovative, and practical, concept.
Most recently, Plastc ceased operations earlier this month, and the company may be exploring Chapter 7 Bankruptcy protection. A previous competitor, Coin, was acquired by Fitbit in 2016, and subsequently shut down after the acquisition. Swyp appears to still be in operation, but the company still has a waitlist and has not officially launched its product. The only company that we identified which has actually shipped cards to customers was Stratos, which was acquired by CardLab Innovation ApS in January 2017. CardLab is no longer shipping the Stratos card however.
Envision IP analyzed the US patent portfolios of Plastc, Coin, Swyp, and Stratos to determine how and to what extent these companies have protected their digital credit card technology.
Coin owns five issued US patents related to multi-account payment card technology, with priority dates going back to 2010. Coin’s patents cover reducing the power consumption of digital credit cards during a swipe procedure, utilizing traditional magnetic point-of-sale card readers with “use once” numbers from electronic cards, and data encryption for digital credit cards.
Coin’s patents have the earliest priority dates among the companies we reviewed, and its patents also generally cover structures for multi-payment account cards, as shown in Fig. 2 in US 9,360,536 below. The patent depicts an electronic card having a display 102, wireless communication unit 200, logic unit (i.e., processor) 201, power source 202, and memory 203:
Stratos has four issued US patents and a pending US patent application in this field, with priority dates going back to 2012. The patents cover wirelessly controlling a re-programmable payment card using a mobile device, displaying multiple payment account identifiers on a display on an electronic card (as shown in Fig. 3 of US 9,286,561 below), methods of selecting and transmitting a particular payment account number during a transaction, and controlling a magnetic strip emulator within an electronic card.
Qvivr, Inc., the parent company of Swyp, owns 2 pending, published US patent applications in this field. The Swyp patent applications cover the construction of a multi-layered electronic card with a solenoid coil, display, buttons, wireless system, and a processor, as shown in Fig. 5 of US 20160224879 below), back-end server architecture for processing payments using its electronic card with traditional credit card payment processors, and a system to generate a magnetic field using a card-embedded solenoid coil.
We did not identify any US patents or published, pending US patent applications assigned to Plastc.
Based our analysis of these specific companies, Coin (Fitbit) and Stratos (CardLab) appear to own very relevant patents related to various aspects of digital credit cards. These companies have issued patents generally covering many of the aspects that Qvivr has filed patent applications for. It will be interesting to see how the Coin and Stratos play into the prosecution of the Stratos patents. Ultimately, however, with the earliest priority date of 2010 among the group, there may be relevant pre-existing patents related to credit card magnetic strip emulation, multi-account payment systems using mobile devices, programmable single use cards, and the like, which may serve as prior art to companies operating in this space.
For comparison, the mobile payments industry as a whole has heavily patented its technology, with some patents having priority dates in the late 1990s. The space has patents from various types of organizations, such as technology giants IBM, Apple, Google, and Samsung, payment technology companies Square, PayPal and Boku, financial institutions Mastercard, Visa, Capital One, American Express, Bank of America, and Visa, telecommunications providers AT&T and Verizon, and retailers such as eBay and Walmart. The mobile payments industry as a whole has over 2,500 US patents alone.
With the continuing evolution of smartphones and payment integration, the future of a physical digital credit card may be bleak. For instance, Fitbit may eventually plan to integrate multi-account payment technology within its wearable device platform, and companies such as Apple and Google have already made significant headway with their own proprietary Apple Pay and Android Pay systems that utilize user devices.
While the concept appears very practical, implementation has certainly been a challenge for the companies we analyzed. Aside from efforts of the early pioneers Coin and Stratos, there does not appear to be a heavy focus on patenting in the digital credit card space currently. This may indicate that the technology as a whole is something that may become obsolete before ever becoming mainstream.
In our continued coverage of the ridesharing industry, Envision IP recently analyzed Uber and Lyft’s patent portfolios. Since our last review in December 2015, the company has significantly increased its patent holdings via both acquisitions and organic filings. Uber currently owns 144 US patents, sparked in part by a major acquisition of 66 patents and 10 patent applications from AT&T in January 2017. The USPTO assignment record dated February 8, 2017 for this acquisition can be found here.
The AT&T acquisition gives Uber a trove of patents having priority dates pre-dating the company’s formation in 2009, as well as pre-dating the growth of the ridesharing industry in general. The earliest AT&T patent dates back to 1999, with the majority of these patents having priority dates prior to 2005. The patents cover various technologies related to messaging, call handling, routing network traffic, VoIP, and billing. Five of the AT&T patents are specifically related to ridesharing:
US 7,941,267 and US 7,627,422, both entitled “Methods, systems and computer program products for ride matching based on selection criteria and driver characteristic information”
US 7,191,057 and US 7,082,364, both entitled “Methods, systems and computer program products for ride matching based on current location information”
US 6,925,381 entitled “Methods, systems and computer program products for ride matching based on current location information”. Claim 1 of the ‘381 patent recites:
As seen in Fig. 6, the ‘381 patent is directed at a high-level method of matching passengers with drivers using the location of each party:
Each of these five patents have a priority date of June 24, 2003. The acquisition is notable as it gives Uber significant patent protection not only for various agnostic technologies that are employed by its ridesharing platform (i.e., messaging, networking, status updates, etc.), but also protection on relatively broad aspects of location-based matching of passengers with drivers. While the priority date does not reach back to Sidecar’s US 6356838, which is now owned by General Motors, it does provide Uber with seemingly fundamental patents for its industry.
In addition to the AT&T patents, Uber also recently acquired 11 patents from Apparate International C.V. related to various autonomous vehicle technologies (such as route planning, sensors, drive-by-wire controls, and LIDAR), and 9 patents from Palo Alto Research Center related to rideshare matching, payments, and driver/passenger security monitoring. The Palo Alto Research Center patents all have 2007 priority dates.
In stark contrast, while we reported that Lyft had obtained its first US patent last August, the company does not have any publicly reported patenting activity since then. Based on our analysis, Lyft currently has one issued US patent (related to a driver jukebox system), and two pending, published patent applications.
Uber appears to be doing an excellent job at identifying and acquiring third-party patents and patent portfolios which complement its platform. The company had previously acquired patents from Microsoft and deCarta. The latest patent acquisitions provide Uber with defensive patents that may help the company counter patent infringement attacks from competitors and other operating companies. These patents solidify Uber’s patent dominance against Lyft, and may provide Uber further strategic leverage as the two companies continue to battle for the ridesharing market. It will be interesting to see if Lyft responds with patent acquisitions of its own in the near future, possibly fueled with a new round of potential funding.
Airbnb, the online service that allows people to lease or rent short-term lodging closed a $1 billion funding round earlier this month, valuing the company at a staggering $31 billion. Airbnb has grown, in part, due to a number of acquisitions in recent years, notably, Accoleo, CrashPadder, NabeWise, Localmind, and Tilt. Envision IP analyzed Airbnb’s patent portfolio to understand how the company has protected proprietary aspects of its platform and service, if if its patenting activity has been organic or as a result of acquisitions.
Airbnb currently has one issued US patent, and 13 published, pending US patent applications. Its patent and published applications were all organically filed-for by Airbnb, except for US 20150017616, entitled “Empirical expert determination and question routing system and method”, which was acquired from Localmind. The remaining acquisitions do not appear to have resulted in any patents or patent applications (at least none which are published). The company also acquired US 20130325723, from Tilt entitled, “Group funding platforms and related techniques”, however this application is currently abandoned.
Airbnb’s single issued US patent, US 9288217, is entitled “Identify and trustworthiness verification using online and offline components”. The patent is directed towards a system that allows hosts/property owners to verify the identity of guests using, for example, their date of birth, address, or photograph. Interestingly, the patent also covers ridesharing, where drivers can determine the trustworthiness of potential riders.
The company’s pending applications cover various aspects of its platform, from front-end features related to searching and ranking available inventory, and predictive matching of hosts and guests based on preferences, as well as back-end technologies related to passwords protection and database encryption. Below is a listing of Airbnb’s US patent portfolio:
While the company was started in 2008, Airbnb did not file its first US patent application until 2012. In addition to its US portfolio, Airbnb has 30 pending patent applications spread across Europe, Australia, Korea, China, Singapore, Mexico, and Israel, as well as PCT applications before WIPO.
Airbnb competitor HomeAway, Inc., the vacation rental marketplace owned by Expedia, also has a robust portfolio of US patents and published applications. HomeAway’s brand includes various websites such as VRBO.com, VacationRentals.com, OwnersDirect.co.uk, TripHomes.com, and others. The company has two issued US patents, and 23 pending, published US patent applications. The portfolio is primarily organically filed-for by HomeAway, except for a pending application acquired from Escapia, Inc.
HomeAway’s issued patents relate to creating social graphs from user data (US 9269100), and a method of updating, in real-time, travel arrival times based on the user’s current speed and direction of travel (US 9557185). The company’s pending applications relate to providing customized content to users, such as travel companions and localized activities/events, an auction system for vacation listings, and various social features such as disseminating user feedback, split payments, and owner/user messaging.
The pending application US 20110313798 acquired from Escapia, entitled “Short-term housing rental management system and method”, may potentially prove to be a valuable asset for HomeAway. The application has a priority date on 2006, two years before Airbnb was started. The application has an extensive prosecution history, and is currently in a second request for continued examination (RCE) status. A final rejection was issued on March 23, 2017. It will be interesting to see if HomeAway can push this application through with relatively broad claims; if it can, the company may have a fundamental patent that it may be able to leverage against competitors. Figure 2 of the application is shown below, which depicts a high-level architecture diagram connecting property owners to renters via a short-term housing server and an agency:
Among Airbnb’s other major competitors (Tripping.com, HouseTrip, FlipKey, VayStays, VacayHero, Roomorama, and Wimdu), only FlipKey has a US patenting activity, with two issued patents related to cultivating and providing guest feedback on rental accommodations. The remaining competitors do not have any published US patent applications or issued patents.
Interestingly, we did not identify any patent acquisitions from IBM by any of the companies analyzed above. As PatentVue has reported in the past, IBM has become a major source of patents by many high-growth technology companies, such as Google, Facebook, Twitter, SnapChat, Alibaba, and others. It is clear that the short-term lodging marketplace has many overlapping technologies with reservation systems, online search and directory listings, messaging, ride-sharing, and social networking. We would not be surprised if Airbnb, and others, eventually acquire patents with earlier priority dates to bolster their patent portfolios for defensive purposes.
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