Patent Business: Deals, Acquisitions & Licenses July 2012
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
Follow Gene on Twitter @IPWatchdog
Posted: Jul 20, 2012 @ 12:35 pm
Below is summary of some of the patent deals from the last several weeks that caught my eye. If you have any “patent business” or “patent deal” news you would like to share please send me a message using our contact form.
IV Announces Silicon Labs as Newest Licensee
Silicon Laboratories, Inc. (NASDAQ: SLAB) joins Intellectual Ventures’ more than 30 industry-leading customers around the world as a licensee of Intellectual Ventures. On Monday, July 2, 2012, IV and Silicon Labs, an innovator in the semiconductor space, announced that they entered into an intellectual property license agreement providing Silicon Labs with access to the majority of IV’s extensive patent portfolio. Although not specified by number of patents licensed, the IV portfolio consists of nearly 40,000 patents in more than 50 different technology areas.
“Intellectual Ventures’ license gives Silicon Labs ready access to invention rights for a broad set of technologies,” said Roy Maharaj, head of IV’s semiconductor licensing program. “We look forward to a long and mutually beneficial relationship with Silicon Labs.”
Preventia, Inc. Announces License Agreement with Private Trading Systems
Preventia, Inc. (OTCBB: PVTA) announced on July 9, 2012, that it entered into a license agreement with Private Trading Systems PLC (“PTS UK”) granting Preventia, Inc. a worldwide and exclusive license. Preventia can use, sub-license, enforce, and otherwise exploit, PTS UK‘s proprietary trading system designed to facilitate the trading of instruments, investments, securities and assets between buyers and sellers in a trading environment (the “System”) and all intellectual property incorporated therein and related thereto (collectively, the “System IP”), which includes, but is not limited to, U.S. Patent No. 8,165,952 for “Electronic Trading System” and all improvements thereof and thereupon.
Acacia Subsidiary Acquires 4 Patent Portfolios from a Major Technology Company
Acacia Research Corporation (Nasdaq: ACTG) announced on July 6, 2012, that a subsidiary has acquired 4 patent portfolios with 48 U.S. and International patents covering technologies relating to online collaboration, data networking, cellular communications and digital cameras.
“Acacia is rapidly becoming the leader in technology licensing and we continue to grow our base of future revenues by adding new patent portfolios,” commented Paul Ryan, Acacia CEO and President.
Ziptronix Licenses its Direct Bond Technology for Mobile Handsets
Ziptronix Inc., the leading developer of direct bonding technology for advanced semiconductor applications, today announced on July 9, 2012, that it has licensed its technology for a cell phone handset application. The high-volume consumer application underscores again the broad applicability of Ziptronix’s patented technology beyond image sensors.
“Device manufacturers recognize the value of this technology for a growing range of applications beyond image sensors,” said Daniel Donabedian, CEO of Ziptronix. “We are in licensing discussions with companies around the world for a variety of applications, including next-generation 3D memory stacking and advanced imagers that target true 3D IC integration.”
Acacia Subsidiary Enters into License and Settlement Agreement with AssetPoint, LLC
Acacia Research Corporation (Nasdaq: ACTG) announced on July 10, 2012, that its Automated Facilities Management Corporation subsidiary has entered into a license and settlement agreement with AssetPoint, LLC. The agreement resolves litigation that was pending in the United States District Court for the District of South Carolina.
ACCESS, Acacia Affiliate and HP Expand Patent License Agreement
On July 13, 2012, it was announced that ACCESS CO., LTD., Smartphone Technologies LLC, an affiliate of Acacia Research Corporation (Nasdaq: ACTG), and HP have expanded an existing patent license agreement, extending HP’s license across ACCESS’ and Smartphone Technologies’ entire patent portfolios.
GSK to acquire Human Genome Sciences for US$14.25 per share in cash
GlaxoSmithKline plc (LSE: GSK) and Human Genome Sciences (NASDAQ: HGSI) announced on July 16, 2012, that the companies have entered into a definitive agreement under which GSK will acquire HGS for US$14.25 per share in cash. The transaction values HGS at approximately US$3.6 billion on an equity basis, or approximately US$3 billion net of cash and debt, and represents a premium of 99% to the HGS closing price of US$7.17 per share on 18 April 2012, the last day of trading before HGS publicly disclosed GSK’s initial private offer. The Boards of Directors of both companies have approved the transaction.
This deal will give GSK exclusive rights to BENLYSTA, which is a human monoclonal antibody that inhibits B-cell activating factor (BAFF) approved for treatment of systemic lupus erythematosus. It is believed that BENLYSTA has blockbuster potential. According to Human Genome Sciences, the principle patents covering BENLYSTA will generally expire between 2016 and 2023 in the United States and between 2016 and 2021 in the rest of the world. For 2011 sales of BENYLYSTA were approximately $52 million, but there is great optimism that the drug will become a blockbuster as it continues to gain market share and as it may ultimately be approved for treatment of other autoimmune diseases.
DriveCam and SmartDrive Settle Intellectual Property Dispute
DriveCam, Inc. and SmartDrive Systems, Inc. have agreed to resolve all outstanding patent litigation and trade secret claims between the companies concerning their respective products. As part of the settlement, DriveCam and SmartDrive also have agreed to cross-license patents. All other terms of the settlement will remain confidential but will allow each party to serve their client’s needs without any legal conflict interfering with a client’s choice of the best product and services to meet its needs, according to DriveCam CEO Brandon Nixon.
Digital Domain Media Group and Prime Focus World Settle Patent Infringement
On July 18, 2012, Digital Domain Media Group (NYSE: DDMG) and Prime Focus World NV announced that they signed an agreement whereby Digital Domain Media Group (DDMG) will license its 3D conversion technology to Prime Focus World. The agreement settles the patent infringement litigation action filed by DDMG against Prime Focus World in 2011. Under the agreement DDMG and Prime Focus World will collaborate on visual effects and 2D-to-3D conversion services work for feature films.
“Ultimately this was a lawsuit between two companies that enjoy working together, so we’re happy to put it behind us and resume our prior relationship with Prime Focus – one of performing high-quality VFX work collaboratively,” said John Textor, CEO and Chairman of DDMG. “We understand that Prime Focus has its own significant 3D technology and we are pleased to report, as this license suggests, that they respect ours as we respect theirs.”
“Prime Focus is dedicated to delivering the highest level of conversion to its clients. The technology that we’ve licensed from Digital Domain Media Group enhances our own robust proprietary processes and increases our efficiency for our customers. We look forward to continuing our work with DDMG on their most important VFX projects,” said Namit Malhotra, CEO and Chairman of Prime Focus World.
Through the Digital Domain Stereo Group, DDMG owns the six U.S. patents that represent the original commercially feasible computerized process for converting 2-dimensional filmed imagery into 3-dimensional stereoscopic imagery. The DDSG patents provide coverage of modern conversion processes that involve rotoscoping (i.e., computerized, semi-automatic and semi-automatic conversion with roto), and relate to conversion processes that include horizontal image displacement/transform. Prime Focus joins Samsung Electronics Co., Ltd., which licensed DDMG’s technology in 2011 for use in its consumer electronics, components, services and software businesses.
OPKO Health Announces License for Topically Active Formulation of Ranibizumab
OPKO Health, Inc. (NYSE: OPK) announced on July 18, 2012 that it signed a research and license agreement with a prominent Mexican professor of ophthalmology for a topically active formulation of the anti-VEGF antibody, ranibizumab, utilizing OPKO proprietary drug delivery technology. The technology will initially target the development of the ranibizumab product to treat diabetic macular edema (DME), but the delivery system will also be studied with other pharmaceutical products to treat DME and other eye diseases.
Presently, ranibizumab is only approved for delivery by intra-vitreal injection,” noted Dr. Frost, M.D., Chairman and Chief Executive Officer, of OPKO. “We believe the development of a topical VEGF antibody formulation would result in substantial benefits to patients.”
DT Announces Spin-Off of Patent and Licensing Subsidiary
IDT Corporation (NYSE: IDT) announced on July 19, 2012, its intention to spin-off its patent and licensing subsidiary, Innovative Communications Technologies, Inc. (ICTI) to its shareholders. ICTI’s intellectual property portfolio includes patents that principally relate to communications over computer networks.
“We have carefully compared the opportunities and limitations of continuing the effort to monetize ICTI’s patent portfolio within the IDT corporate structure versus alternative strategies,” said Jeff Ballabon, Chief Executive Officer of ICTI. “After a year of due diligence and market research, it has become evident that separating ICTI completely from IDT is the optimal way to maximize the value in this portfolio.”
Completion of the spinoff is subject to various conditions and contingencies, and is subject to changes in the marketplace and the other assumptions underlying the decision.
Vringo Also Announces Results of Annual Meeting of Stockholders
Vringo, Inc. (NYSE MKT: VRNG), a provider of software platforms for mobile social and video applications, today announced the completion of its merger with Innovate/Protect, Inc., a company that seeks to maximize the value of intellectual property and technology assets.
The combined entity, which trades on the NYSE MKT under the symbol “VRNG,” is managed by an executive team led by Chief Executive Officer Andrew Perlman and supported by the board of directors, which consists of directors from the previous Vringo and Innovate/Protect boards.
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.