U.S. Patent and Trademark Office Deputy Director Russell Slifer, who is locked in a dispute over a patent assignment agreement signed in 2008 with a Cantor Fitzgerald unit over its failure to pay him about $250,000 for 8 gaming patents, said materials produced by Cantor show evidence of bad faith, which may help him take back the patents and make Cantor liable for his attorneys fees.
Slifer filed the complaint against CG Technology, the Cantor unit, in U.S. District Court in Manhattan on Dec. 8, 2014.
Slifer alleges that the former Cantor Gaming, now known as CG Technology, reneged on paying him all the money he was entitled to under the contract they signed. He claims CG Technology was contractually obligated to pay him $50,000 plus 10% of the net income it received from licensing the patents. He also claims he was entitled to a maximum of $250,000 and a minimum of $250,000, or the return of the patents if after 5 years he had only been paid $100,000.
At the time of the patent assignment agreement, Slifer was chief patent counsel at Micron Technology, where he worked from March 2006 to June 2014. He has been with the PTO since July 2014 and deputy director since March 2015.
CG Technology, which cut Slifer a check for $50,000 at the end of the five-years, has asserted that it was contractually obligated to pay Slifer only the $100,000 it paid.
CG Technology has been fighting Silfer’s attempts to get copies of documents linked to its internal discussions about the patent assignment agreement, saying they were protected by attorney client privilege.
Magistrate Judge Sarah Newborn disagreed and ordered CG Technology to comply, which it now has done.
“Based on our review of the new materials, it is apparent that Cantor’s previous assertions about its understanding of the patent assignment agreement were made in bad faith,” said Brian Brook, a partner with Clark Brook and Peed in New York, who represents Slifer.
“We are currently researching precedents to determine the most appropriate course of action at this point, considering trial is scheduled to begin in three months. If we determine that a pre-trial motion is appropriate, we will file the necessary request for a pre-motion conference as soon as practicable.”
In an interview, Brook said if Slifer can prove bad faith it may help him take back the patents and make Cantor liable for his attorneys fees.
He said that the minimum the dispute is worth is $250,000 plus 9% statutory prejudgment interest to Slifer.
He said, however, that Slifer may have much more to gain by taking the patents back, collecting damages against Cantor for its wrongful retention of the patents for the last three years, and then taking over the enforcement actions already filed by CG Technology.
David Paul, an attorney with Cantor, declined to comment.
CG Technology and Cantor may lose much more than $250,000 if they lose control of the patents.
The company waited until April of this year to begin filing enforcement actions in U.S. District Court in Las Vegas against seven sports betting and gaming companies including DraftKings Inc., FanDuel Inc. and Zynga. The enforcement actions also name Double Down Interactive, 888 Holdings, Big Fish Games and Bwin.Party Digital Entertainment PLC.
The patents are U.S. Patent No. RE39,818, entitled personalized wireless video game system; 6,899,628, entitled system and method for providing game event management to user of gaming application; 9,111,417 and 8,342,924, both entitled system and method for providing enhanced services to user of a gaming application; 8,641,511, entitled real time wagering on event outcome; 7,029,394, entitled system and method for generating statistics for a user of a gaming application; 6,884,166 entitled system and method for establishing a wager for a gaming application; and 7,534,169, system and method for wireless gaming system with user profiles).
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