The Mapping Wars Heat Up
Geo tagging is the process of adding geographical information to various media, including websites. It sounds relatively harmless, unless you spell it GeoTag, Inc., the proud owner of U.S. Patent No. 5930474, filed January 31, 1996, and granted July 27, 1999, with a broad, descriptive title “Internet organizer for accessing geographically and topically based information.” Notice I didn’t say proud Papa; GeoTag, Inc. is not the inventor (the inventor is several times removed). Florian Mueller’s research has uncovered in 2009 “one entity paid another ‘an aggregate consideration of nearly $119M for the '474 Patent and some other intellectual property.’” The new owner set up a subsidiary to which it assigned the patent, and that subsidiary is now GeoTag, Inc.
That’s quite a sum. But remember, a key “value driver of IP is the ability or willingness of the IP owner to defend the IP in the market against attack. If a company owns a patent but it does not pursue infringers aggressively, for example, or they lack the necessary resources, then the patent may be worth less because infringers are less likely to pay royalties and/or halt their usurpation.” (Pellegrino) A company willing to pay $119M for a patent will clearly have the wherewithal and drive to defend it, and defend it they have.
GeoTag, Inc. has brought at least 10 suits in the past eight months, charging nearly 400 entities with infringement of 5930474, presumably resulting from their use of Google Maps or Bing Maps to provide store location services or similar navigation aids. The suits were nondiscriminatory in terms of defendants, from fashion icons (Coach, Christian Dior), to non-profits (Christus Health Foundation); from large companies (Penske Corp. and LabCorp) to giants (Caterpillar) to (that’s right) Jim’s Formal Wear.
Fast food was in the cross-hairs: Starbucks, Wendy’s, Pizza Hut, Dunkin Donuts, Dominos, Burger King, as were car rental agencies: Hertz, Enterprise Rent A Car, Alamo.
Retailers Sports Authority, Toys R Us, Victoria’s Secret, Zales, Cartier, Radio Shack, GAP, Home Depot, and Safeway are on the list, as is Yellow Book USA.
Many of the defendants are asking that Google and Microsoft make this problem go away. A week ago, white hats affixed, Google and Microsoft became co-plaintiffs in a lawsuit filed in Delaware federal court which seeks declaratory judgment on the invalidity of the GeoTags, Inc. patent, based on prior art. (The patent was filed at the beginning of 1996, and the Internet didn’t reach availability to the masses until 1992, so there isn’t a long span to search.) Such a declaratory judgment would most likely render meaningless the underlying theory in most of the GeoTag, Inc. infringement lawsuits.
Valuators should watch this case. (GeoTags, Inc.’s response is due the 23rdof March.) We already have one indication of investment value of the patent. Now, it is reported GeoTags, Inc. has filed with the SEC for an IPO, really based on what they deem to be the earning potential of 5930474.
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Some Modest Proposals 4.0: A Conference About Pouring Academic Ideas into Legislative Bottles
Cardozo Law School's IP and Information Program invites academics known for advocating thoughtful ways to improve intellectual property, technology, and information law to present ideas in the form of statutory, regulatory, or treaty language. Each proposal receives scholarly and political commentary in a discussion among professors, current and former Capitol Hill staff, administration officials, and Washington activists. Participants include Michael A. Carrier, Rutgers; Peter Jaszi, American University; Aaron Cooper, Senate Judiciary Committee; Katherine Jo Strandburg, New York University; Clarisa Long, Columbia University; Chris Hansen, American Civil Liberties Union; Stephen J. Schultze, Center for Information and Technology Policy; Neil Fried, House Commerce Committee (invited); William McGeveran, Minnesota; Christal Sheppard, House Judiciary Committee.Friday, April 8, 2011 10 am – 5 pm
Cardozo Law School 55 Fifth Avenue New York, NY 10003
Email ipprogram@yu.edu for more information or to RSVP.