Calif.-based IpVenture sues FedEx over second tracking patent

By Jessica M. Karmasek | Nov 6, 2014

SAN FRANCISCO (Legal Newsline) - A California-based company this week filed a lawsuit against FedEx, claiming the global delivery service courier is infringing on another one of its tracking patents.


Plaintiff IpVenture Inc. filed its seven-page complaint in the U.S. District Court for the Northern District of California Tuesday. FedEx Corporation and Federal Express Corporation are both named in the suit.


IpVenture, based in Los Altos, Calif., claims it is the owner of U.S. Patent No. 8,725,165 entitled, “Method And System For Providing Shipment Tracking and Notifications.” The patent, it says, was issued to it in May.


According to its website, the non-practicing entity partners with inventors and entrepreneurs to turn ideas into “groundbreaking patented technologies.”


“IpVenture licenses and sells these exciting patented technologies to partner companies that build products, reducing their research and development costs, and enabling them to concentrate on their core competencies,” its website states.


The company takes issue with FedEx’s SenseAware products and services, which were introduced in 2009.


The technology is designed to provide customers with near real-time shipping information about their packages.


More specifically, SenseAware includes a small multi-sensor monitoring device and information sharing services that are integrated into a web-based application allowing customers to stay connected with their shipments.


A SenseAware device can be placed into a shipment to gauge and transmit shipment data, including the shipment’s location, temperature, light exposure, relative humidity and barometric pressure. Customers then can view information and receive alerts concerning the package during shipment.


According to IpVenture’s complaint, the ‘165 patent is a continuation of another patent, No. 7,212,829.


IpVenture claims that it approached FedEx in July 2011 to discuss a license to its ‘829 patent. At the time, the company explained to FedEx that the courier was using IpVenture’s patented inventions in its SenseAware.


IpVenture claims that over the next three months it tried to meet and negotiate license terms with FedEx, but FedEx failed to meet with the company or even provide a “substantive response” to its infringement claim.


“Despite IpVenture’s good faith efforts to negotiate a business solution, FedEx has failed to license IpVenture’s patent and continues to use IpVenture’s intellectual property without authority,” the complaint states.


In November 2011, IpVenture asserted a patent infringement action against FedEx -- also in the Northern District of California -- for its infringement of the ‘829 patent.


In April 2012, the federal court stayed the litigation pending reexamination of the ‘829 patent. That reexamination is currently pending in the U.S. Patent and Trademark Office.


Meanwhile, the ‘165 patent was issued on May 13.


“FedEx has been aware of the ‘165 patent at least since May 30, 2014, when it filed a Petition For Inter Partes Review of the ‘165 patent in the United States Patent and Trademark Office,” IpVenture wrote in its complaint.


IpVenture seeks damages “adequate” to compensate it for FedEx’s past infringement and any continuing or future infringement of the ‘165 patent; a judgment that FedEx’s infringement of the ‘165 patent has been willful and a trebling of all damages; attorneys’ fees, costs and expenses; and a preliminary and permanent injunction preventing FedEx from infringing on the ‘165 patent.


The company also is asking the federal court for a judgment requiring that, in the event a permanent injunction preventing future acts of infringement is not granted, it be awarded a compulsory ongoing licensing fee.


IpVenture also seeks a jury trial.


San Francisco law firm Black & Hamill LLP is representing IpVenture.


“We do not believe there is any merit to the allegations and we will vigorously defend the lawsuit,” FedEx said in a statement Thursday.

The courier said it would be “inappropriate” to provide any additional comment due to the pending litigation.


From Legal Newsline: Reach Jessica Karmasek by email at patents@legalnewsline.com.

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