Yahoo Assigns 2648 Patents to Mystery Excalibur IP, LLC Group

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Google is possibly most well known for the patenting of an algorithm that sorted and ordered search results based upon a metric known as PageRank, named after Google Co-Founder Lawrence Page, while he was a student at Stanford University. Yahoo started as a Web Directory, which became a Search Engine, and the patent it might be most well known for is one that it purchased from Overture (Originally Goto.com), and successfully sued Google with (winning a settlement out of the litigation) which describes paid search. That patent appears to have been assigned by Yahoo, along with many other patents last month.

A couple of weeks ago, an article on Yahoo’s patent portfolio ran and provided some insights into what value those patents might hold. The article, Yahoo Has a Strong Patent Portfolio, But Reported Valuation is Too High gives us some ideas regarding how much the Search Engine’s patents might be worth (4 Billion?), and what they’ve been doing with them. Has Yahoo sold a good amount of those patents not much less than a week after that article? We don’t know for certain. They may have to one of the remaining bidders for the company: Exclusive: Yahoo’s bidder shortlist points to cash deal -sources.

On April 18th, 2016 an assignment was recorded at the United States Patent and Trademark Office (USPTO) on a transaction that appears to have been executed on April 18th, 2016 involving the assignment of 2648 patents from Yahoo! Inc. to Excalibur IP, LLC. The name may be made up to hold the patents temporarily. The address that the assignment indicates is Excalibur’s is “701 FIRST AVENUE SUNNYVALE, CALIFORNIA UNITED STATES OF AMERICA 94089”. A search for that address points to the headquarters of Yahoo! as we see in the knowledge panel below, so the actual purchaser appears unknown.

The transaction includes a patent that was at the heart of litigation between Yahoo! and Google, after Yahoo! had purchased Overture, which had patented Paid search, and Yahoo! sued Google for adopting a paid search model that was said to be similar. In August of 2004, Yahoo! and Google settled the case between them. In the article Yahoo! and Google Resolve Disputes, we are told about the settlement between the two companies:

“Under the terms of the settlement agreement, Google will take a license to U.S. Patent No. 6,269,361 and several related patents, held by Yahoo!’s wholly-owned subsidiary, Overture, and Yahoo! dismissed its patent lawsuit against Google. The two parties have also resolved a dispute regarding shares issuable to Yahoo! according to a warrant to purchase Google shares in connection with a 2000 services agreement.”

The patent is:

System and Method For Influencing a Position on a Search Result List Generated by a Computer Network Search Engine
Inventors: Thomas A. Soulanille, James B. Gallinatti JR., DARREN J. DAVIS, MATTHEW DERER, JOHANN GARCIA, LARRY GRECO, TOD E. KURT, THOMAS KWONG, JONATHAN C. LEE, KA LUK LEE, PRESTON PFARNER, STEVE SKOVRAN
US Patent 6269361
Filed: May 28, 1999
Granted: Jul 31, 2001

We don’t know what the financial terms of this transaction might be, or who the ultimate parties may be as well. The USPTO site search tells us that there are 2179 granted Yahoo! patents listed there and there are 3151 pending Yahoo! patent applications. In the assignment, in addition to many patents involving paid search, there is also a number that involves web search, semantic search, image search, and a wide range of software applications. Have they been transferred to a new owner already, or are they now being held by a holding company? The patent behind the paid search is included in that patent portfolio. We will see who it ends up going to.

Added June 22, 2016, It appears that these patents have been reassigned to Yahoo! in an assignment recorded on May 31, and executed on June 1, 2016. Yahoo! has not been sold yet, but rumors have it that it will be within a couple of weeks.

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23 thoughts on “Yahoo Assigns 2648 Patents to Mystery Excalibur IP, LLC Group”

  1. Hi Aiswarya,

    Yahoo is really entering uncharted waters with their potential sale, and they do have some very valuable intellectual property. We will see what happens with it now that it is out there in what appears to be a holding company’s hands.

  2. Hi Gregoire,

    Those reviews are interesting; and relation to my post and its topic were unintended but it will be interesting how Yahoo may operate in the future, after its likely sale.

  3. Hi Mike

    There is some value there. Yahoo did have some of the brightest search engineers in the world working for them, and they created some Intellectual Property with a lot of value to it.

  4. I am so thrilled I found your weblog, I really found you by mistake, while I was researching on Google for something else, regardless. I am here now and would just like to say thank you for a tremendous blog post and all round thrilling blog (I also love the theme), I don’t have time to browse it all on time, but I have bookmarked it and also added your RSS feeds, so when I have time I will be back to read a great deal more.

  5. Hi Mr. Slepkow,

    Yahoo is a few steps behind Google in terms of popularity and traffic. Yahoo has had some talented search engineers working for them over the years and together with Google and Bing, provided search results for many millions of people a year. There are patents in Yahoo’s patent portfolio that are on the same or a very close level to those from Google. One article I linked to in the post estimated the value of Yahoo’s patent portfolio at $ 4 Billion, which is a significant amount.

  6. Hi Bill, another well researched blog of great interest. I personally would see it as a great loss should Yahoo fail completely as a search engine. I have been around long enough to see the ebb and flow of so many once large dot com’s that have disappeared into obscurity. You are right in pointing out that once they had some great search engineers working for them, and it shows by the intellectual copyright that they have in terms of patents, but how fickle the internet users can be, what is in favour one week can be out of favour the next. Thoroughly enjoying your well researched and thought provoking articles Bill. Keep writing.

  7. Hi Bill,

    I think the key question is the one you posed at the end “Have they been transferred to a new owner already, or are they now being held by a holding company?”

    From an outsider perspective, many thousands of miles away across the sea, this has the hallmarks of a ring-fencing exercise.

    It’s not beyond the realms of possibility that these assets are being parceled together to protect the company from something it sees approaching on the horizon. The last rumour was that the Daily Mail in the UK were looking to buy it, something that couldn’t have been imagined at the turn of the century. Perhaps these assets are being set aside so they don’t form part of an agreed sale?

    For those of us who have been in advertising most of our lives, the speed of change in the digital landscape appears truly staggering.

  8. Hi Jonathan,

    It is puzzling whether Yahoo has isolated these patents to separate them from the working search engine. I’ve been waiting it out, to see if they announce a sale, and to see if there is another assignment made at the USPTO website involving these patents. I am expecting one to happen.

  9. Hi Alan,

    It’s difficult to tell from outside of the company whether the people who have been running Yahoo are still engaged in running a search engine; and what kind of value it will hold when someone else takes control. It won’t be the first time that Yahoo has changed leadership in significant ways It will be interesting seeing what is next for Yahoo!

  10. It’s appropriate time to make a few plans for the long run and it’s time to be happy. I have read this submit and if I may just I want to suggest you few attention-grabbing issues or advice. Maybe you could write subsequent articles referring to this article. I want to learn even more issues about it.

  11. It would not be a miraculous first for a business to start out framed to provide and thus brand themself to be thought of for one (or multiple) main products, and years later, after 2 generations have passed, for grandchildren to be unable to imagine the company providing the original products they did as they morphed long ago into a holding company, a dormant shell simply collecting on having been first to market with a nifty idea at the time. No it would not be a first but Yahoo may prove to be the most resistance to change. Hopefully they relent before liquid turns into liquidation.

  12. This is super interesting – why would Yahoo bother hiding this from public view? Does anyone know if more has been discovered since the original post?

  13. Hi Scott,

    I’ve just found a followup. I’m adding it to the post right now. Yahoo! hasn’t been sold yet, but that is rumored to happen sometime soon.

  14. This is really interesting but makes me wonder what the patents are all about.

    System and Method for Influencing a Position on a List? At first, it sounds like this patent might be about SEO, but when I read more, it then seems more about search engine ads.

    If these patents are good enough to cost billions, wouldn’t Yahoo search be more successful because of them?

  15. Apple? Amazon? Facebook? It may be fascinating to find out… especially if it’s one of these folks 🙂
    *I sort of feel sorry for Yahoo though, it’s like watching your long-time neighbors have that dreaded ‘must sell everything’ garage sale.

  16. An “update” to your update: On June 3rd, the patents were again assigned to Excalibur (the assignment involved a larger number of patents/pending applications, so perhaps the original list was updated). The assignment back to Yahoo! that you found was likely to “un-do” the first assignment, followed by a “re-do” of the correct listing of patent assets (a presumption on my part)

  17. Thank you Wendy,

    I saw that there was some activity at the Patent Office regarding the Yahoo patents. I didn’t compare the lists of patents to see if the same ones were covered by there were 2700 patents involved. Excaliber does seem like it is a shell company, so It’s difficult to tell why Yahoo made these transactions. I’ve been keeping an eye out in case an auction takes place, and isn’t revealed to the public in any way other than by patent filing (I suspect Yahoo’s purchaser will be revealed, but it’s possible that announcement could possibly be delayed. I don’t watch patent assignments too closely, but this is the first time that I’ve seen activity like this. Yes, sometimes mistakes happen, and corrections are made to assignments. Maybe we’ll be informed of what happened after the sale of Yahoo!

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