Donika Pentcheva is pleased to announce that her research involving intellectual property law has been cited in In RE: Industrial Print Technologies, LLC, Patent Litigation, a case pending before the Northern District of Texas.
Before the Court were seven identical Motions for Leave to Amend the Pleadings to Add Acacia Research Group, LLC (“ARG”) as a Counter-defendant filed by Defendants/Counter-claimants in each of the individual cases involved in this multidistrict patent litigation (“MDL”) matter.
The individual cases involved in this MDL matter were various actions for patent infringement brought by Plaintiff Industrial Print Technologies, LLC (“IPT”) against Defendant Hewlett Packard Company (“HP”) and several HP customers, Defendants Cenveo, Inc., O’Neil Data Systems, Inc., Quad/Graphics, Inc., Vistaprint U.S.A., Inc., and Fort Dearborn Company. The technology covered by the asserted patents relates to industrial printing and provides methods for executing print jobs that incorporate variable data. By its lawsuits, IPT contends that Defendants use, manufacture and/or sell high-speed printing presses that process variable data print jobs using methods that infringe the patented technology. Defendants deny IPT’s allegations and have filed counterclaims against IPT seeking declarations of non-infringement and invalidity of the asserted patents.
IPT alleges that it is the exclusive licensee of the patented technology. According to IPT, all right, title, and interest in the asserted patents is owed by the inventor of the patented technology, Forrest P. Gauthier (“Gauthier”). IPT asserts that prior to the commencement of any of the individual cases, Gauthier exclusively licensed all substantial rights in and to each of the asserted patents to ARG, including the right to assign its license rights to a designated affiliate of ARG. ARG, in turn, is alleged to have transferred and assigned to IPT, as its wholly-owned designated affiliate, all of ARG’s rights, obligations, interests, and liabilities under the license agreement with Gauthier, which IPT assumed. Thus, IPT claims it is the exclusive licensee of all substantial rights under the asserted patents, including the exclusive right to grant sublicenses, to sue for and collect past, present and future damages, and to seek and obtain injunctive and all other relief for infringement of any of the asserted patents.
Defendants contend that IPT is a grossly-undercapitalized shell for ARG to enforce its patent rights against HP and HP’s customers. They argue that IPT is the alter ego of ARG, and/or ARG’s agent to monetize the asserted patents. They further argue that ARG so completely dominates IPT that ARG is the real party in interest in this litigation. Accordingly, Defendants seek to amend their pleadings to add ARG as a permissive counterclaim defendant.
IPT disputes that ARG is a proper party to this litigation.
The asserted patents are U.S. Patent Numbers 5,729,655; 5,937,153; 6,145,946; 6,381,028; 6,493,106; 7,274,479; and 7,333,233.