Dean Becker’s Equitable IP Corp. and Spherix Inc. (SPEX), the patent licensing company run by CEO Anthony Hayes said they are planning two to three new enforcement actions by the end of August as well as additional actions in September.
Bethesda, Maryland-based Spherix and Conshohocken, Pennsylvania-based Equitable IP made the announcement in a statement on Monday, August 8. Details on the planned enforcement actions weren’t disclosed.
The collaboration between Equitable IP and Spherix has already enabled Spherix to file enforcement actions against Level 3 Communications (LVLT), TW Telecom and FairPoint Communications (FRP).
In a statement Monday, August 8, Becker described the patents acquired from the bankruptcy estate of Nortel Networks as “tremendously valuable.”
The company also said it was appealing to the Court of Appeals for the Federal Circuit a decision by the Patent Trial and Appeal Board which invalidated U.S. Patent No. 5,581,599 for obviousness. The ‘599 patent is at issue in Spherix’s enforcement action against Uniden Corp.
The plans for new enforcement actions comes a week after Spherix said it may have to take a material charge because of the agreement with Equitable IP and also raised $2.5 million in an underwritten public offering.
Becker declined to comment for this story.
Shares of Spherix plunged more than 26% after the announcement of the possible charge and the public offering. They currently trade at $1.44 and have traded between $1.37 and $13.11 over the past year.
“The Equitable Agreement may require us to take a loss on sale or transfer of patents or an impairment charge with respect to the intangible assets set forth on our balance sheet, and such loss on sale or transfer of patents or impairment charge may be material,” the company said in a filing with the Securities and Exchange Commission.
Under the agreement with Equitable IP, Spherix is required to give Equitable a significant share of the revenue Spherix received from RPX Corp. (RPXC).
In May, Spherix said it reached a second licensing agreement with RPX for $4.36 million in cash, cancellation of of 381,967 shares of Series H convertible preferred stock. Previously, Spherix granted a license to some of its patents to RPX in return for $5 million in Spherix preferred convertible stock the patent aggregator received when it purchased a portfolio of patents from the Rockstar Consortium for $900 million in January 2015.
Equitable will receive 5% of RPX revenue derived from any license agreement executed by Spherix and RPX after the March 11, 2016 effective date but prior to May 24, 2016 and paid by RPX to Spherix prior to July 1, 2016.
Equitable also will shall receive 50% of all RPX revenue paid to Spherix after July 1, 2016 pursuant to any license agreement between RPX and its members or their subsidiaries beginning on the effective date.
Equitable also receive 50% of all RPX revenue pursuant to any license agreement between RPX and Spherix or its subsidiaries executed on or after May 24, 2016.
Finally, Equitable will receive 50% of all RPX revenue pursuant to any license agreement between RPX Corporation and Parent or its subsidiaries executed on or after the Effective Date due to options related to new RPX members.”
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