Court Filing: Florida v. Activelight, Activision, Etc.

December 29, 2014 by Dave Haynes

This involves a time investment, but if your company has been wrestling in some way with patent infringement disputes – as a vendor or end-user – the suit filed last Monday in Florida is worth a read.

The allegations are fascinating – suggesting many years of raising money and seeking licensing for technology that didn’t exist, and deals that never were.

Filing # 21850642

STATE OF FLORIDA,

OFFICE OF THE ATTORNEY GENERAL,

DEPARTMENT OF LEGAL AFFAIRS,

Plaintiff,

v.

ACTIVELIGHT, INC. f/k/a ACTIVISION TV, INC., a Delaware corporation,

DAVID GOTHARD, an individual,

AD MEDIA DISPLAYS, INC., a Wyoming corporation,

ACTIVISION DISPLAYS, INC., a Nevada corporation,

LOCKE CONSULTING GROUP, INC., a Nevada corporation,

CONNECT HDTV, INC., a Florida corporation,

ADCO FINANCIAL CORP., a Nevada corporation,

ACTIVELIGHT TV, LLC, a Florida limited liability company,

and DENICE HETKOWSKI, an individual.

It is 85 pages, so pour a drink first, and settle in.

The most relevant passage to the digital signage industry:

V. ACTS COMMON TO ALL COUNTS

A. The AMD Scheme

1. GOTHARD Obtains Intellectual Property

20. Shortly before incorporating AMD, GOTHARD filed a utility patent application (09/132,456) on August 11, 1998 with the United States Patent and Trademark Office entitled “Remote Control Electronic Display System.”

While this application was later abandoned, it is the parent application for the following patents used by the Defendants to entice and defraud investors:

a. U.S. Patent number 6,215,411, entitled “Remote Control Electronic Display System” (patent application filed February 8, 2000; patent awarded April 10, 2001) (hereafter the “’411 Patent”).

b. U.S. Patent number 6,384,736, entitled “Remote Control Electronic Display System” (patent application filed April 21, 1999; patent awarded May 7, 2002) (hereafter the “’736 Patent”).

c. U.S. Patent number 7,369,058 entitled “Remote Control Electronic Display System” (patent application filed June 21, 2004; patent awarded May 6, 2008) (hereafter the “’058 Patent”).

d. U.S. Patent number 8,330,613 entitled “Remote Control Electronic Display System” (patent application filed May 6, 2008; patent awarded December 11, 2012) (hereafter the “’613 Patent”).

21. The ’411 Patent, the ’736 Patent, the ’058 Patent, and the ’613 Patent are hereafter referred to as the “Remote Control Electronic Display System Patents.”

22. The Remote Control Electronic Display System Patents relate to common, ubiquitous business practices described by agents of the Defendants as “generally relate[d] to remote control digital signage technology.”

Defendants have used these patents to demand the payment of monies from businesses across industries, from restaurants, theaters, banks, hotels, even a motorcycle manufacturer.

In one demand letter to a restaurant, agents of the Defendants described the restaurant’s infringement of the Remote Control Electronic Display System Patents as follows:

Activision has learned that [you] … are infringing one or more claims of the Activision Patents by using remotely controlled digital signage products and services that practice the patented solution (the “Accused Instrumentalities”). The Accused Instrumentalities include but are not limited to [your] digital display network digital signs. The Accused Instrumentalities infringe at least claim 1 of the ‘058 Patent by virtue of a combination of features. In particular, for example, the Accused Instrumentalities consist of multiple components which together comprise a display system covered generally by the Activision Patents and specifically, the ‘058 Patent.

In particular, the Accused Instrumentalities consist of generally flat display panels with an outer housing. Further, the Accused Instrumentalities are operated and controlled by a computer running software which controls the content and scheduling of the images via Content Manager software. The computer also runs the Content Player software which displays the images on the Accused Instrumentalities display. Together, these components comprise the patented Remote Control Electronic Display System found in at least claim 1 of the ‘058 Patent. (emphasis added).

23. While the Remote Control Electronic Display System Patents are presumed to be valid under federal patent law, and the validity of these patents is not in question in this proceeding, there is evidence to suggest that GOTHARD based these patents on widely available products in existence before GOTHARD applied for the patents (and as observed by GOTHARD at technology trade shows), and that GOTHARD did not disclose relevant prior art to the patent examiner when he prosecuted the ‘411, ‘736, and ‘058 Patents.

The attorney-general’s office is seeking a trial jury.