Walker Digital to Offer at Auction Four Covenants not to Sue Covering Four Important Technology Areas

Mar 23, 2011, 16:43 ET from ICAP Ocean Tomo

NEW YORK, March 23, 2011 /PRNewswire/ -- ICAP Ocean Tomo – the global intellectual property brokerage firm - will be auctioning four "Covenants not to Sue" at its Spring 2011 Live IP Auction event on March 31st in New York City. Each covenant provides a purchaser with the freedom to operate in a specific field. At a time when IP considerations are becoming more important and more complex, a covenant may well be on its way to becoming one of the key instruments in an IP portfolio.

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Offered by specific sellers and covering specific patents and applications, a covenant provides a company with increased freedom to operate in an efficient and expeditious manner without the worry of showing one's hand when negotiating with a Licensor, either directly or through a proxy, and avoids potential patent infringement claims, damages and attorneys' fees.  

The patents and pending applications have been developed by Walker Digital. Founded in 1994, Walker Digital is a research and development lab that has made fundamental contributions to many areas of technology and commerce. Walker Digital chairman Jay S. Walker, founder of Priceline.com and numerous other successful companies, is the lead inventor on each of the patents and applications that are the subject of the four freedom to operate agreements.  Mr. Walker has been recognized nationally and internationally as one of the world's leading entrepreneurs—Forbes magazine describes him as an "Edison for a New Age" and favorably compares Walker Digital to Thomas Edison's invention factory and BusinessWeek selected him as one of the 25 Internet pioneers most responsible for "changing the competitive landscape of almost every industry in the world."  

"A number of great companies, including Priceline, can trace their genesis to technology that was first developed at Walker Digital in the mid-late 1990's.  We are proud of our inventions and the number of innovative businesses and activities founded on these inventions.  These businesses have not only changed the way people around the world live, work, travel and interact socially and commercially, but also have given rise to numerous American jobs," said Walker.  

Each covenant available at auction covers one of the following individual technology areas:

  • Single Use Transaction Codes: This lot discloses an invention that enables consumers to make credit and debit card transactions without disclosing their private information.  This lot includes four issued patents, a '97 priority date and is still open with six pending patent applications. The lot includes 239 claims, 148 forward citations, and 284 references.
  • Driving Direction with Visual Cues: This lot discloses a technology that enables a Navigation System to provide images on a given route in addition to driving directions. This lot includes 93 forward citations and 24 references.
  • Certified Audio Vault: This lot discloses an invention that cryptographically records and stores audio communications. This lot includes three issued United States patents, has a '97 priority date and the family is still open with one pending application. The lot has 68 claims, 66 references, and 40 forward citations.
  • Automatically Captured Images: This lot discloses an invention that allows the creation of pre-established rules to capture, upload and store images upon certain conditions. Instructions are created and when these conditions are met, the pre-established action is triggered. This lot includes a recently allowed patent and the family is still open for continuation and has international counterparts.

Each of the four covenants available at auction is applicable to a subset of the buying community, and provides potential purchasers with a quick and effortless means to obtain freedom to operate with respect to the applicable patents and applications. For additional information on this opportunity please contact Dean Becker at +1-561-309-0011.

"We are working with ICAP Ocean Tomo on this sale as we are being advised by IP Navigation Group to develop an intelligent intellectual property strategy for our portfolio. ICAP Ocean Tomo comes highly recommended as the leader in its field," said Jon Ellenthal, President of Walker Digital, LLC. "The auction is an excellent and innovative opportunity for interested parties to easily acquire freedom to operate in a very efficient manner on fundamental patents that may be important to them."

The ICAP Ocean Tomo Spring 2011 Live IP Auction will be held Thursday, March 31st at Capitale.  The auction will begin at 1PM.  There will be two preliminary events – a reception and dinner at Cipriani's on Wednesday night with featured speaker Malcolm Gladwell. There will also be a networking lunch at Capitale on Thursday at 11:30 just before the auction. Registration for this event is online at http://www.regonline.com/ICAPOceanTomoSpring2011

Registration fee is $495 and includes all events.

To learn more about the assets available for sale in this portfolio:

Contact Dean Becker of ICAP Ocean Tomo at Dean.Becker@us.icap.com

About ICAP Ocean Tomo LLC

ICAP Ocean Tomo is the intellectual property brokerage division of ICAP and the world's premier patent auction firm.

About ICAP

ICAP is the world's premier interdealer broker and provider of post trade services. The Group matches buyers and sellers in the wholesale markets in interest rates, credit, commodities, foreign exchange, emerging markets, equities and equity derivatives through voice and electronic networks. ICAP plc was added to the FTSE 100 Index on 30 June 2006. For more information go to www.icap.com.