Sixteen years of one idea: a machine that holds a conversation with a person over a network.
In 2010 Michael Castellano and a small team in Silicon Valley filed the first application on a system that lets a person interact with pre-built rich media — video, audio, text, images — as if it were a conversation, and scores the engagement. This page is the complete, sourced record of what was filed, what was granted, what was lost, who owns it, and what it is worth.
Executive summary
Five things a reader should know before anything else.
One issued US patent, clean title.
US 10,956,965 B1, "Providing webpages used to configure interactive marketing presentations over a network," issued 23 March 2021 with 22 claims. Inventors Castellano, Murthy and Lourdu assigned every right — including continuations — to Engajer, Inc. by instruments recorded at the USPTO in 2013 and 2014. It lapsed for a missed maintenance fee in April 2025 and was reinstated 8 July 2025; it expires 27 February 2035.
The original 2010 invention was never granted.
The v-Pitch / Engajer "Interaction Management System" family — provisional Dec 2010, applications 13/316,411 → 14/664,892 → 16/057,476 — was rejected repeatedly under §101 (abstract idea) and §103, appealed, abandoned into continuations, and last received a final rejection on 18 May 2021. Prosecution activity continued into January 2026. Its present status must be confirmed in USPTO Patent Center; it was filed with a non-publication request, so it is invisible to public databases.
Engajer sued Microsoft, OpenAI, Meta and Soul Machines — pro se.
Filed 12 March 2025 in the Southern District of Florida (9:25-cv-80339). Because a corporation cannot appear without a lawyer, the case was dismissed without prejudice on 14 May 2025; the court said nothing about the merits. Engajer may refile with counsel. Litigation funders Burford Capital and Curiam Capital signed NDAs in April 2025.
Both ENGAJER registrations were cancelled in 2026.
Reg. 4,775,259 (Class 42) was cancelled 6 Feb 2026 and Reg. 4,842,165 (Class 41) on 8 May 2026 because ten-year renewals were not filed. A new ENGAJER application (SN 99683325) was filed in March 2026 — by American Eagle Ventures LLC, not Engajer, Inc. — and has an Office Action response due about 10 October 2026.
Fair value today is in the hundreds of thousands; prepared properly, low millions; enforcement is an option, not a floor.
Against 2024 brokered-market medians (US-issued software patents sold for a median of $141K; asked $286K), a single US-only patent with ~8.4 years left and a business-method examination history sits at $150K–$500K as-is. With confirmed status of the pending case, evidence-of-use charts, counsel, and encumbrances documented, $0.5M–$2M is defensible. The enforcement lens produces a probability-weighted net of roughly $0.6M (base) to $3.7M (high) after funder, counsel and the 2023 revenue-share overhang. None of this is a USPAP appraisal; the model is published below so any number can be challenged.
The idea, in plain language
What was actually invented, what the claims actually cover, and why the distinction matters.
The thesis (2010)
A human on one end of a network; on the other, not a person but a system. The system holds pre-recorded or generated rich-media segments — 30-second video "bursts," audio, text, images — arranged as a decision tree. The person chooses; the system responds with the next segment; the path taken, time spent, and buttons pressed are recorded and scored 0–100 as "engagement." The content owner sees who was most engaged and how they got there. In 2013 the founder described it to the USPTO as "emulat[ing] a human-to-human interaction using video technology."
Source: Castellano Declaration under 37 C.F.R. §1.132 in 14/664,892; abstract of 13/316,411 as circulated 22 Oct 2012; PR Newswire, 13 Jun and 16 Jul 2013.
What the granted claims cover
The '965 patent does not claim "conversation with a computer" in the abstract. It claims a specific architecture: a web server serves a configuration webpage to a selling entity; the page renders UI components with which the seller builds an Interactive Marketing Presentation and sees a visual representation of how the segments link; a viewer later sees segments in that order in response to input, without ever seeing the graph; the configuration is sent back over the network and stored. Dependent claims add branching via buttons, media types (video, animation, graph, table, image, audio), viewing-time and click tracking, AJAX/web-socket delivery, and mobile/desktop devices.
Source: US 10,956,965 B1 claims 1–22; Examiner's Reasons for Allowance, 9 Feb 2021.
Asset register
Every item of intellectual property connected to the Engajer thesis, with status as of 30 September 2026.
| Asset | Identifier | Dates | Status | Record owner |
|---|---|---|---|---|
| Provisional (Family A) "Supplying an Interactive Marketing Campaign to Customers Over a Network" (VPI-001-PROV) | 61/459,333 | Filed 10 Dec 2010 | Expired (converted) | v-Pitch, Inc. → Engajer, Inc. |
| Application (Family A) "Providing an Interactive Marketing Presentation Using an Interaction Management System"; inventors Castellano, Chen; non-publication request | 13/316,411 | Filed 9 Dec 2011 · first OA 24 Sep 2014 | Abandoned Mar 2015 → continuation | Engajer, Inc. (by name change) |
| Continuation (Family A) ENG-001-1C; Examiner A. Gurski, AU 3623; §1.132 declaration; appealed | 14/664,892 | Filed 22 Mar 2015 · final OA Jul 2017 · Examiner's Answer Jul 2018 | Abandoned Aug 2018 → continuation | Engajer, Inc. |
| Continuation (Family A) ENG-001-1C-1C; claims 26–28 (decision-tree of rich-media segments, path tracking, engagement ranking) | 16/057,476 | Filed 7 Aug 2018 · final rejection 18 May 2021 · interview 16 May 2022 · amendment Feb 2023 · claim redraft Jan 2026 | Status unconfirmed — verify in Patent Center | Engajer, Inc. (not publicly viewable) |
| Provisional (Family B) ENG-002-PROV; inventors Castellano, Murthy, Lourdu | 61/757,060 | Filed 25 Jan 2013 | Expired (converted) | Engajer, Inc. — R/F 029708/0309 |
| Application (Family B) ENG-002; Examiner M. Macasiano, AU 3688; final rejection Aug 2016; P3 conference Jan 2017 | 14/164,085 | Filed 24 Jan 2014 | Abandoned Jan 2017 → continuation | Engajer, Inc. — R/F 032045/0273 |
| US Patent (Family B) "Providing webpages used to configure interactive marketing presentations over a network"; 22 claims | 15/424,763 → US 10,956,965 B1 | Filed 3 Feb 2017 · allowed 9 Feb 2021 · issued 23 Mar 2021 · expires 27 Feb 2035 | Active — reinstated 8 Jul 2025 | Engajer, Inc. (by continuation language in 2014 assignment) |
| Trademark ENGAJER (Cl. 42, SaaS) | SN 86268301 · Reg. 4,775,259 | Filed 1 May 2014 · reg. 21 Jul 2015 · first use 23 Apr 2012 | Cancelled 6 Feb 2026 (§8/§9 not filed) | Engajer, Inc. |
| Trademark ENGAJER (Cl. 41) | SN 86268320 · Reg. 4,842,165 | Filed 1 May 2014 · reg. 27 Oct 2015 · first use 20 Oct 2010 | Cancelled 8 May 2026 (§8/§9 not filed) | Engajer, Inc. |
| Trademark ENGAJER (Cl. 42, PaaS / AI platform) | SN 99683325 | Filed 4 Mar 2026 (intent-to-use) · non-final OA 10 Jul 2026 | Pending — response due ≈ 10 Oct 2026 | American Eagle Ventures LLC |
| Domain & goodwill | engajer.com · aeye.engajer.com | In continuous use since 2013 (rename from v-pitch.com) | Live | Engajer, Inc. (verify registrar account) |
| Software & know-how Symfony dashboard/player platform (AWS), engagement-scoring model, Salesforce/Marketo integrations, AEye conversational-video system | — | 2010–present | Unregistered (copyright/trade secret) | Engajer, Inc. — confirm developer/contractor IP assignments |
Public-record sources: Google Patents (US10956965B1), USPTO Assignment Center, USPTO TSDR, S.D. Fla. docket 9:25-cv-80339. Non-public items (unpublished applications, office actions) are summarised from Engajer's own prosecution files and counsel correspondence and are not reproduced here.
Timeline, 2008 → 2026
Filter by thread. Every entry is traceable to a USPTO record, a court docket, or dated correspondence with patent counsel.
Founder later tells counsel a working prototype existed in November 2008; competitors noted at the time: HuStream, ClearSlide, SlideRocket.
First convertible-note round on Gunderson Dettmer paper. Team includes Daniel Chen (engineering) and Chris Hubbard.
Amir Adibi and T. Lester Wallace agree to a flat fee of $9–11K per application, deferred until funding. Docket VPI-001.
Small entity; $110 fee. Inventors Michael Christopher Castellano and Daniel S. Chen. Independent claim and drawings iterated with the founder in November; he asks that "aggregating the feedback from multiple 1st entities" and "most common path" analytics be included.
Counsel requests a computer-program listing and prior art; a "path of persuasion" visualisation is discussed as a second invention. Filing of VPI-002-PROV is not confirmed in the record.
Founder confirms 5 employees (small entity) and elects non-publication because no foreign filing was planned. Consequence: this family never appears in Google Patents or public assignment search.
Founder nominated for Ernst & Young Entrepreneur of the Year (2012, 2013).
Barnes & Thornburg (Indianapolis) handles an office action; the application is later abandoned in 2014 in view of an existing "ENGAGER" registrant.
Advisor Daniel Hoffer (CouchSurfing co-founder) asks for patent summaries for the investor deck; counsel supplies the 13/316,411 abstract.
Inventors Castellano, Murthy, Lourdu assign to Engajer, Inc. (Reel/Frame 029708/0309, docket ENG-002-PROV).
Counsel requests the Delaware and California name-change certificates "so that we can show chain of title from v-Pitch to Engajer" on VPI-001.
PR Newswire releases describe "engajers" as 30-second video bursts navigated in any order to "create a virtual, interactive conversation."
Reel/Frame 032045/0273–0274. The instrument conveys "the entire right, title, and interest … and in any and all divisions, reissues, and continuations thereof" to Engajer, Inc., a Delaware corporation at 111 Independence Drive, Menlo Park.
Barnes & Thornburg (Dwight Lueck, Olivia Fleming) with Robert Zeichick coordinating.
Extensions purchased through March 2015.
Customers reported in company materials include CoreLogic, CrossFit, Fujitsu, Gerber, LiftMaster, Pure Storage, SAP, TradeKing, Virgin; >$500K cumulative revenue; ~$1.4M raised in notes.
Founder: "I really want to get this patent and I don't want us to lose anything." Priority to 2010 is preserved through the continuation.
CEO John DiLoreto and the founder approve claims.
Rejections over Mak (US 2008/0162206) and Rao (US 2008/0119132). Examiner interview 7 Sep 2016; the founder files a §1.132 declaration explaining why linear-video prior art does not teach a decision-tree "virtual conversation."
Founder: "Should we be worried?" Post-Prosecution Pilot (P3) request filed Oct 2016; P3 conference 18 Jan 2017.
Neither Engajer nor any inventor exceeded the gross-income ceiling; micro-entity fees are used from here on.
Counsel's reasoning: a new filing ($400) cost less than responding ($450). This continuation becomes the '965 patent.
Imperium accepts Engajer convertible notes for fees; the founder commits to a $50,000 note balance for counsel.
Counsel estimated roughly 40% odds of allowance and filed the continuation at no charge "to assist engajer with their financial challenges." Founder: "For how much longer is this going to go on?"
William Castellano joins to prepare a sale (Jul 2019); Peterson Acquisitions engaged (Aug 2020); patent status shared with brokers.
T. Lester Wallace takes over day-to-day prosecution.
Examiner Macasiano withdraws the §101 rejection: the combination of a configuration UI, a visual link-graph shown to the seller but hidden from the viewer, segment delivery according to that graph, and server-side storage "provide[s] an improvement in functionality." Issue fee $300 (micro entity).
Assignee on the face: Engajer, Inc., Menlo Park, California. Original letters patent delivered to the founder 31 Dec 2021 with a written warning that maintenance fees fall due at 3.5, 7.5 and 11.5 years and that counsel will not docket them.
Barnes & Thornburg withdraws (29 Mar 2021), writes off open invoices, and sends a schedule of renewal deadlines.
Examiner Gurski: §112(a) written description, §101 ("scoring user interaction with presented marketing materials … a method of organizing human activity"), §103 over Mak + Jain (US 2010/0070876) + McMahon (US 2007/0265918).
Counsel's agenda: identify where McMahon allegedly discloses a graph view that lets the user modify the decision tree.
"We will get started right away" (6 Aug 2023); file wrapper of the unissued application forwarded. No engagement letter or outcome appears in the record.
To counsel: "A 'chatbot' is nothing more than a text-only engajer … All chatbots infringe on our patent." First inquiries to litigation funders.
"Selling entity" → "presenting entity"; "Interactive Marketing Presentation" → "Interactive Presentation." Whether a new application was filed is not confirmed.
One count of direct infringement under §271(a), willfulness alleged, jury demanded; a motion for summary judgment filed the same day. Signed by Michael Castellano as "Authorized Representative." Same day, Magistrate Judge Reinhart orders that a corporation must appear through counsel.
Outreach to Burford Capital, Curiam Capital, Quinn Emanuel and Baker Botts; Burford NDA executed 23 Apr 2025; damages-expert CV (Peter Gampel, CPA/ABV/CFF) obtained.
"Nothing in this Order should be construed as an indication of the merits of any of Plaintiff's claims." Engajer "may initiate a new action … after it obtains counsel."
Patent reinstated effective 8 Jul 2025; entity status micro. Next window: 8th-year fee, 23 Mar 2028 – 23 Mar 2029 (with surcharge).
Directed-acyclic-graph data structure of node and edge objects, HTTP request/response rendering cycle, relational-database logging — an attempt to answer the §101 "generic computer" finding with concrete architecture.
Intent-to-use, Class 42 (platform-as-a-service for AI applications). ARQON SN 99722457 filed 24 Mar 2026 by the same applicant.
Statutory response period: three months → approximately 10 October 2026.
US 10,956,965 B1 — the granted patent
"Providing webpages used to configure interactive marketing presentations over a network." Filed 3 Feb 2017 · issued 23 Mar 2021 · priority 25 Jan 2013 · expires 27 Feb 2035.
Bibliographic
- Application 15/424,763 (continuation of 14/164,085; benefit of 61/757,060)
- Inventors: Michael Christopher Castellano, Shruthi Narasimha Murthy, Richard Amrith Lourdu
- Assignee: Engajer, Inc. · Examiner: Marilyn G. Macasiano, Art Unit 3688
- 22 claims — independent claims 1 (method), 14 (system), 19 (CRM), 22 (method)
- CPC: G06Q 30/0641 · G06F 16/22 · G06F 3/0481 · G06F 3/0486 · H04L 65/1063 · H04L 67/02 · H04L 63/083
- No pre-grant publication (B1); no foreign counterparts; US-only
Prior art of record
- WO 2000/042593 — Cybuy, transaction-enabled advertising
- US 8,595,046 — Christian, interactive scheduling/marketing web engine
- US 2011/0246294 — Robb (Beet, Inc.), content management and distribution
- US 2013/0073473 — Heath, social-networking commerce
- Two non-patent papers (2016, 2017) on multi-screen interactive ad delivery and digital marketing
A thin citation record cuts both ways: it suggests the examiner found little close art, and it means a motivated defendant's search has not yet been done.
Maintenance history
- Reminder mailed 11 Nov 2024
- Expired 28 Apr 2025 (4th-year fee unpaid)
- Petition filed 19 May 2025 → dismissed 18 Jun 2025 → refiled → granted 8 Jul 2025; fee + surcharge paid, micro entity
- Reinstated effective 8 Jul 2025
- Next: 8th-year fee window 23 Mar 2028 – 23 Sep 2028; grace with surcharge to 23 Mar 2029
Intervening rights: anyone who began practising the claims between 28 Apr and 8 Jul 2025 may have a limited defence under 35 U.S.C. §41(c)(2). Counsel should evaluate before asserting against any product launched in that window.
Claim 1 (as issued)
Why the examiner allowed it (9 Feb 2021)
The §101 rejection of claims 14–20 was withdrawn after amendment. The examiner found that the recited combination — a database; a web-served document rendering UI components; a visual representation showing how IMP segments link, displayed to the selling entity but not to the end user; presentation of segments in response to user input according to those links; and server-side storage of the configuration — "provide[s] an improvement in functionality and ease of use to the selling entity and also improvement to the functionality to the hosting operator." On §103, Robb (web-served marketing resources for content owners) and Christian (web-engine business coordination) were found not to teach a seller-side link graph hidden from the viewer that governs viewer-side presentation.
Source: Notice of Allowability, Examiner's Statement of Reasons for Allowance, application 15/424,763 (PDF).
Dependent claims that matter for infringement reads
- Claim 3 / 16 / 20 — three segments, two buttons, links from buttons to segments (the branching structure).
- Claim 5 / 18 — content blocks include video, animation, graph, table, image or audio clip.
- Claim 6 / 15 — UI element list including a poll, form, text box, real-time messaging box, external video object.
- Claim 7 — a video URL supplied by the seller and shown to the purchaser.
- Claim 9 — the server stores viewing time and click data and reports it to the seller (engagement analytics).
- Claims 11–13 — asynchronous HTTP, button-triggered HTTP, or web-socket transport.
- Claim 10 — configuring from a mobile handset, laptop or desktop.
Term and remaining life
Twenty years from the earliest non-provisional filing (24 Jan 2014) is 24 Jan 2034; Google Patents reports an adjusted expiration of 27 Feb 2035, reflecting patent-term adjustment for USPTO delay. Remaining life on the valuation date is about 8.4 years. There is no terminal disclaimer of record.
Download the patent (USPTO PDF) · Google Patents · USPTO Patent Public Search
The 2010 family — the patent that was not awarded
Three applications, one specification, fifteen years of examination by the same art unit. This is the broader invention: the Interaction Management System that tracks a viewer's path through a decision tree of rich media and ranks engagement.
What it claimed
As last amended (Feb 2021, claims 26–28): an application server stores an interactive presentation decision tree of nodes (each a rich-media segment with at least one selectable option) and branches; supplies segments to a first and a second viewer's browser; records each viewer's path; computes a ranking value of engagement for each; and supplies that ranking, with HTML for rendering, to a third party's browser. Dependent claims add interaction duration and a graph view that lets the owner modify the tree.
In January 2026 the founder proposed recasting the claim around a directed-acyclic-graph data structure, an explicit HTTP request/response rendering loop, and relational-database logging.
Why it kept failing
- §101 (abstract idea). The examiner characterised the claims as "scoring user interaction with presented marketing materials," a "method of organizing human activity," implemented on generic servers and browsers, citing Versata and OIP Techs. She wrote: "Decision trees are a type of workflow and not a type of technology."
- §103 (obviousness). Mak (rich-media ad interaction tracking) + Jain + McMahon; the applicant argued none shows a graph view of a decision tree that the user can modify — the 2022 interview turned on that point.
- §112(a). The term "user selectable option" was found not to be supported as a discrete feature.
- Money and time. Twice the applicant chose a fresh continuation over paying to continue a fight (2015, 2018); the 2018 appeal was abandoned at the forwarding-fee stage.
Sources: Final Office Action mailed 18 May 2021 (application 16/057,476, Examiner Amanda Gurski, AU 3623); Castellano §1.132 Declaration (14/664,892); correspondence with Imperium Patent Works 2010–2026. The office action itself concerns an unpublished application and is not reproduced here.
Enforcement and monetisation record
What has actually been attempted, by whom, and where it stands.
| When | Counterparty | What happened | Outcome |
|---|---|---|---|
| 2014–2015 | Rohit Chhabra (thelawfirm.io) | Advice on "standing on the patents" during sale discussions | Informational |
| Jul 2019 – Oct 2020 | Business brokers (Peterson Acquisitions; Link Business; Generational Equity call Apr 2021) | Company-sale process; patent status supplied as diligence material | No sale |
| Jul–Sep 2023 | Fabricant LLP (New York) | Review of the '965 patent and the unissued application; file wrapper provided | No engagement or opinion in the record |
| Oct 2023 | Photon Legal (India), inbound | IP-monetisation solicitation | Not pursued |
| 12 Mar 2025 | Microsoft, OpenAI, Soul Machines, Meta, Does 1–10 | Pro se complaint, S.D. Fla. 9:25-cv-80339; one count §271(a); willfulness; jury demand; simultaneous MSJ | Dismissed without prejudice 14 May 2025 — corporate party without counsel; no merits ruling |
| Apr 2025 | Burford Capital · Curiam Capital | Litigation-finance evaluation; NDAs executed; founder supplied a preliminary §101 eligibility memo | No funding commitment in the record |
| Apr 2025 | Quinn Emanuel · Baker Botts | Patent information and file wrapper provided | No engagement in the record |
| Mar 2026 | Menlo Law (J. Hagan) · G. Davis, Esq. | Introductions for monetisation strategy | Open |
What a refiled case needs that the 2025 case lacked
Counsel and capacity
A corporation must appear through a member of the bar (Palazzo v. Gulf Oil, 764 F.2d 1381 (11th Cir. 1985)). Engajer must also be in good standing in Delaware; a suspended or void corporation can lack capacity to sue.
Claim charts, not theories
Element-by-element evidence for each accused product — specifically a seller-side visual link graph that governs viewer-side presentation. The 2025 complaint identified no product and mis-titled the patent ("Interactive System for Generating and Presenting Personalized Video Content … B2").
Damages foundation
Six-year look-back (§286) but, absent product marking, pre-suit damages run only from actual notice (§287). Counsel's 2021 letter warned of this. Documenting when each defendant received notice — including whether the 2025 complaint was served — sets the damages start date.
Complaint (ECF 1) · Order of dismissal (ECF 17) · Docket on CourtListener
Trademarks and brand
The ENGAJER name has been in commerce since October 2010. Its federal registrations have not survived.
What happened
- 2014: Barnes & Thornburg files ENGAJER in Classes 41 and 42 after an earlier 2012 application is abandoned over an existing ENGAGER mark.
- 2015: both register (4,775,259 on 21 Jul; 4,842,165 on 27 Oct).
- Mar 2021: sixth-year Section 8 declarations filed pro se and accepted (22 Jul 2021). B&T withdraws and sends the renewal calendar.
- 2024–2025: the ten-year Section 8 & 9 combined renewals fall due (windows Jul 2024–Jul 2025 and Oct 2024–Oct 2025, plus six-month grace). USPTO courtesy e-mails went out 21 Jul 2024 and 28 Oct 2024. No renewal was filed.
- 6 Feb 2026 and 8 May 2026: both registrations cancelled.
- Mar 2026: ENGAJER (SN 99683325) and ARQON (SN 99722457) filed as intent-to-use applications by American Eagle Ventures LLC. Non-final Office Actions issued 9–10 Jul 2026; responses due about 9–10 Oct 2026.
What it means
- Engajer, Inc. retains common-law rights in ENGAJER from continuous use since 2010, but has lost the presumptions, nationwide priority and incontestability that came with registration.
- The new application was filed by a different legal entity than the one that has used the mark. An intent-to-use application filed by someone other than the mark's owner can be void; either AEV must genuinely be the owner (with Engajer's use inuring to it under licence) or the application should be assigned or refiled in Engajer, Inc.'s name. This needs trademark counsel before the October response.
- Solicitations: the 2016 "Brand Registration Office" invoice in the company files, and the 2026 text messages from "Trademark Hawk" about a "Federal Officer" and "Combined Section Charges," match well-documented USPTO-impersonation patterns. The USPTO does not schedule telephone calls with "federal officers" and does not collect "combined section charges" through third parties. Verify every deadline directly in TSDR.
Legal synopsis: who owns what — Michael Castellano vs. Engajer, Inc.
Prepared from the recorded instruments and the prosecution correspondence. This is analysis for discussion with counsel, not a title opinion.
1. The '965 patent (Family B)
- Chain of title. Castellano, Murthy and Lourdu → Engajer, Inc.: (i) assignment of provisional 61/757,060, executed and recorded 25 Jan 2013, Reel/Frame 029708/0309; (ii) assignment of application 14/164,085, executed 21–23 Jan 2014, recorded 24 Jan 2014, Reel/Frame 032045/0273. The 2014 instrument expressly conveys "any and all divisions, reissues, and continuations thereof," so 15/424,763 and the patent that issued from it are covered without a further recordation. The face of the patent names Engajer, Inc. as assignee.
- No co-owner problem. Both co-inventors assigned. Had either not, each would hold an undivided interest, could license freely without accounting to Engajer, and could refuse to join a suit — a common, fatal defect that does not exist here.
- Recordation. Both instruments were recorded well within the three-month window of 35 U.S.C. §261, so they prevail over any later purchaser or mortgagee.
- Consideration. Employee/founder assignments for nominal consideration are routine and enforceable. The 2014 instrument recites "good and valuable consideration, the receipt of which is hereby acknowledged."
- Standing to sue. Engajer, Inc. alone has standing. Michael cannot sue in his own name, and — as the 2025 case showed — cannot appear for the corporation without a lawyer.
2. The 2010 family (Family A)
- Application 13/316,411 was assigned to v-Pitch, Inc.; in 2013 counsel obtained the Delaware and California name-change certificates and recorded the change of name so the record shows Engajer, Inc. The 2016 declaration is captioned "Assignee: engajer, Inc."
- Because the family is unpublished, its assignment records are not publicly searchable. Action: obtain the recorded reel/frame numbers (or the executed assignments, including co-inventor Daniel S. Chen's) from Imperium's file. If Mr. Chen never executed an assignment, he is a co-owner of anything that issues from this family.
3. Encumbrances and claims on proceeds
- Patent counsel. Imperium Patent Works accepted Engajer convertible notes for fees (founder committed to a $50,000 note balance in July 2017) and has an outstanding 2026 invoice. Nothing in the record grants counsel a lien or security interest in the patents; confirm the note instruments say the same.
- Convertible noteholders. The 2010/2012 note series is, per company materials, unsecured (2.5% interest, 20% discount, no cap). Confirm no security agreement or UCC-1 covers general intangibles.
- 2023 revenue-share advances. Purchase and Sale Agreements (Nov 2023) entitle investors to a pro-rata 22% of "future revenue generated by Engajer" until 10× their advance is repaid. Licensing royalties and litigation settlements are arguably "revenue"; this overhang should be disclosed to any funder or buyer and, ideally, settled or converted.
- No recorded security interest, licence or lien appears against the patent in the USPTO Assignment Center as of 30 Sep 2026.
4. Corporate capacity and housekeeping
- Engajer, Inc. is a Delaware corporation (registered-agent renewal invoiced Jan 2025; FinCEN BOI report filed Oct 2024). Company files also hold a California Franchise Tax Board notice of suspension from the company's California period. Action: obtain a Delaware good-standing certificate before any filing, licence or sale.
- Correct the office address of record with the USPTO (patent face still shows Menlo Park; current address is West Palm Beach) and confirm the maintenance-fee entity status (micro) remains accurate — a false micro-entity certification can render fees underpaid.
- Software written by employees and contractors from 2010 onward should be covered by written IP assignments; the record shows restricted-stock agreements but no inventory of developer assignments.
5. Related-party alignment
- The founder's other ventures (AEye / "AI People," Stay/Ember, VIMS, Hummingbird) build on the same thesis. Each should hold a written licence from Engajer, Inc. if it practises the '965 claims; otherwise Engajer's investors and noteholders hold a claim that value is leaking to affiliates.
- The ENGAJER trademark application filed by American Eagle Ventures LLC should be reconciled with Engajer, Inc.'s 16-year use of the mark — by assignment to Engajer, Inc., or by a documented licence that makes AEV the owner and Engajer the licensee. Splitting the brand from the patent across two entities complicates any sale.
Authorities: 35 U.S.C. §§101, 116, 261, 262, 286, 287, 41(c); 37 C.F.R. §1.132; Palazzo v. Gulf Oil Corp., 764 F.2d 1381 (11th Cir. 1985); Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456 (Fed. Cir. 1998) (unassigned co-inventor defeats suit). USPTO Assignment Center records cited above.
A fair appraisal
Three independent lenses, every assumption exposed, and a conclusion stated as a range. The model is a 140-line Python file in the repository (model/appraisal.py); change an input and the numbers change.
What single patents actually sell for
Richardson Oliver's 2025 report (2024 transactions): median asking price per US-issued patent $286,000; median price of assets that actually sold, $141,000 per US-issued patent and $158,000 per family; closing discounts of 0–75%; packages with evidence-of-use charts priced 32–108% higher and sell more often; long-run sale rates of 30–40%.
Relief from royalty, risk-adjusted
Present value of royalties a licensee would pay over the remaining 8.4 years, multiplied by the probability the claims survive challenge. Base case: $400M/yr US revenue in products with seller-side visual branching builders, 1% royalty, 20% provable and collectible, 45% survival, 30% discount rate, 10% growth. Low and high cases bracket every input.
Probability-weighted litigation value
Targets × settlement per target × probability of surviving §101, IPR and reaching payment, less funder and contingency-counsel share (40–50%) and the 22% revenue-share overhang. Base: 6 targets, $750K each, 30% success. Full patent litigation costs $1M–$4M+ (AIPLA surveys), which a funder would carry.
Conclusion
Fair market value of the IP bundle — patent, pending application (option value $25K–$250K only if still pending), domain, common-law brand, code and know-how — as it stands today:
Prepared — pending status confirmed, evidence-of-use charts on five or more products, Delaware good standing, encumbrances documented, counsel engaged:
Central estimate: about $1,000,000 for the prepared bundle, with enforcement upside carried as a separate option worth roughly $0.6M (base) to $3.7M (high) in expected net proceeds. These figures value the intellectual property alone. They are not a valuation of Engajer, Inc., whose Series A materials price the operating business — team, product, customer history, data and the AI-agent roadmap — at a $75M post-money; that number rests on the business plan, not on the patent.
What moves the number
Up
- Confirmation that 16/057,476 is pending — a live 2010 priority chain is worth more than the '965 patent to a buyer building an AI-conversation portfolio.
- Claim charts showing a visual branching builder in a large vendor's product (bot builders, interactive-video tools, guided-selling platforms) — the single biggest price lever in the brokered market.
- A written opinion of counsel on §101 eligibility of claims 1, 14, 19 and 22 in light of the 2021 Reasons for Allowance.
- A funded, counselled refiling against a properly charted defendant; even a first settlement re-rates the asset.
- New filings on agent-era subject matter that cite and extend the '965 disclosure.
Down
- Abandonment of 16/057,476 — the 2010 disclosure becomes prior art and the family is closed.
- An IPR or §101 motion by a well-resourced defendant; the sibling application's §101 history will be Exhibit A for any challenger.
- Marking and notice gaps that push the damages start date to the date of a new complaint.
- The 22% revenue-share overhang and unsecured notes, which reduce what a funder or acquirer will pay to Engajer's equity.
- Brand fragmentation (trademark in AEV, patent in Engajer) and any lapse in Delaware standing.
Methodology note: the market lens uses published medians for the appropriate asset class; the income lens is a relief-from-royalty discounted-cash-flow with explicit probability weights; the enforcement lens is an expected-value calculation. This is not an appraisal under USPAP or IVS and should not be relied on for tax, transaction or litigation purposes without review by a credentialed valuation professional (CPA/ABV, ASA or CVA) and patent counsel.
Open items, in order of urgency
- ≈ 10 Oct 2026 — Respond to the non-final Office Action on ENGAJER SN 99683325 (and ARQON SN 99722457, ≈ 9 Oct) or the applications abandon. Decide the owner question (AEV vs. Engajer, Inc.) first. Ignore third-party "federal officer" calls.
- This week — Confirm the status of application 16/057,476 in Patent Center (or with T. Lester Wallace) and settle Imperium invoice 4473. If pending, calendar the next response date; if abandoned, evaluate petition to revive (unintentional delay) immediately — revival is time-sensitive.
- This month — Obtain a Delaware good-standing certificate for Engajer, Inc.; update the USPTO correspondence address; confirm micro-entity eligibility for future fees.
- This month — Pull Imperium's assignment file for the 2010 family (including Daniel S. Chen) and record anything unrecorded.
- Before any funder or buyer conversation — Commission claim charts on 5–10 candidate products; obtain a written §101 opinion; assemble a data room (file wrappers, maintenance receipts, assignments, docket, note and revenue-share instruments).
- 2028 — 8th-year maintenance fee window opens 23 Mar 2028; docket it in two independent systems.
- Ongoing — Paper intercompany licences for any affiliate practising the claims; reconcile the ENGAJER brand under one owner.
Sources and documents
Public records
- US 10,956,965 B1 — Google Patents (claims, citations, legal events)
- US 10,956,965 B1 — USPTO PDF
- Notice of Allowance and Reasons for Allowance, 15/424,763
- Assignment Reel/Frame 029708/0309 (2013)
- Assignment Reel/Frame 032045/0273 (2014)
- Complaint, S.D. Fla. 9:25-cv-80339 (ECF 1)
- Order dismissing without prejudice (ECF 17)
- Docket — CourtListener
- TSDR — Reg. 4,775,259 · Reg. 4,842,165 · SN 99683325
- PR Newswire, 13 Jun 2013 · 16 Jul 2013
- Richardson Oliver, 2025 Patent Market Report (market benchmarks)
Company records relied on (not reproduced)
- Imperium Patent Works correspondence, Sept 2010 – May 2026 (dockets VPI-001, VPI-002, ENG-001, ENG-001-1C, ENG-001-1C-1C, ENG-002, ENG-002-PROV, ENG-002-1C)
- Final Office Action, 16/057,476, mailed 18 May 2021
- Declaration of Michael Castellano under 37 C.F.R. §1.132, 14/664,892
- Imperium transmittal of letters patent, 31 Dec 2021
- Barnes & Thornburg trademark correspondence 2013–2021 and withdrawal letter 29 Mar 2021
- Litigation-finance NDAs (Burford Capital, Curiam Capital), Apr 2025; Fireflies meeting summary 23 Apr 2025
- Purchase and Sale Agreements (revenue-share advances), Nov 2023
- Engajer Series A business plan and deck (Sept 2026)
Where a fact could not be verified in a public record it is marked as unconfirmed above. Nothing on this page is legal, tax or investment advice.