United States Patent No. 6,587,441 ("the '441 patent"), which was published by theUnited States Patent and Trademark Office (the "PTO") on July 3, 2003, is directed to a methodand apparatus for data transfer over various wireless networks. ('441 patent, Abstract) The '441patent claims priority to a provisional application filed on January 2, 1999, which named sixinventors: Jeffrey Urban, Jeffrey Barhorst, Christopher
Solomon, Herbert Edwards, ChrisOltrogge, and
Albert (collectively, the "Named Inventors"). ('441 patent) The '441 patentidentifies Technology Alternatives, Inc. ("Technology Alternatives") as the assignee.
TheNamed Inventors allegedly assigned the '441 patent application to their employer, Gooitech, Inc.("Gooitech").Z (D.I. 19, Exs. D
E) James Solomon acted as CEO
Ex. G)Before the application for the '441 patent was filed, Hinsdale Bank
Trust Company("Hinsdale") extended financing to Gooitech and took a security interest in Gooitech's assetspursuant to a security agreement dated May 20, 1998. (D.I. 19, Ex. N) The security agreement,which purportedly covered all existing and after-acquired assets, includes as collateral "generalintangibles" that may be "hereafter acquired," but does not specifically refer to the application forthe '441 patent, which had not yet been filed.
Gooitech subsequently defaulted on its loan,and the company dissolved.
P) Hinsdale foreclosed
Gooitech's assets,including the application for the '441 patent.
Ex. G) Hinsdale then purchased Gooitech's
the Named Inventors consistently maintains that they assigned theirrights in the '441 patent application to Gooitech, documentation
these assignments is limitedto the unconditional written assignments made by Jeffrey Urban and Christopher Solomon toGooitech in 2001 and 2005, respectively. (D.I. 19, Exs. D
The exact date
Gooitech's dissolution is uncertain due to inconsistencies in the2
Case 1:11-cv-00772-SLR-SRF Document 40 Filed 08/30/13 Page 2 of 24 PageID #: 628