Patent Deals, Licenses and Settlements – December 2012
Gene Quinn (left) Patent Attorney & Founder, IPWatchdog
Angel Krippner (right), Executive Assistant, IPWatchdog
Posted: December 30, 2012 @ 6:30 am
Without doubt, the biggest patent deal of the month related to Kodak’s sale of its non-core patent portfolio to Intellectual Ventures, RPX and others for $525 million, which was just enough to qualify Kodak for bankruptcy financing that had been previously secured if and only if that portolio sold for in excess of $500 million. We covered that issue as it happened on December 19, 2012. See Kodak Sells Patents to IV, RPX.
The ARRIS Group acquisition of Motorola Home Business from Motorola Mobility, also announced December 19, 2012, caught our attention for a separate article as well. See ARRIS to Acquire Motorola Home Business for $2.35 Billion.
There were a number of other interesting patent business deals during December that also caught our eye, including: (1) Microsoft and EINS Sign Android Patent Agreement; (2) NIH Awards Contract for Improved Anthrax Vaccine; (3) ARRIS To Acquire Motorola Home Business For $2.35 Billion; (4) Mylan Announces Comtan® Settlement Agreement; (5) Trovagene Licenses Duke University, Novartis; (6) Amgen Finalizes Agreement Resolving Federal Investigations; (7) GE Healthcare, CDI Agree to Sublicense for Cellular Assay Patents; and more. Below is summary of these and other patent deals from the month of December 2012.
If you have any “patent business,” “patent deal” or “patent settlement” news you would like to share please send us a message using our contact form.
Trovagene Licenses Duke University, Novartis
On December 27, 2012, Trovagene, Inc. (NASDAQ: TROV), a developer of transrenal molecular diagnostics, announced it has granted Duke University and Duke University Health Systems a non-exclusive license to incorporate nucleophosmin protein (NPM1) into research and clinical testing services for acute myelogenous leukemia (AML). Earlier in the month, on December 20, 2012, Trovagene announced it had similarly granted Genoptix, Inc. (a Novartis Group Company) a worldwide, non-exclusive license to incorporate nucleophosmin protein (NPM1) into research and clinical testing services for acute myelogenous leukemia (AML).
Trovagene holds an exclusive worldwide license to U.S. patent 8,222,370 and the corresponding group of U.S. and foreign patent applications around NPM1. Terms of the agreement include upfront fees and royalty payments. Additional financial terms were not disclosed.
Within the United States, Trovagene has granted non-exclusive sublicenses to offer mutation analysis of NPM1 as a laboratory service for the diagnosis and monitoring of patients with AML to Quest Diagnostics, LabCorp, Fairview Health Services and Invivoscribe Technologies; internationally, license holders include Münchner Leukamielabor GmbH (MLL) in Munich, Germany and Skyline Labs in the Netherlands. In addition, Trovagene has granted a co-exclusive license to manufacture and sell NPM1 mutation kits to Asuragen, Inc. and Ipsogen S.A.
Mylan Announces Comtan® Settlement Agreement
On December 20, 2012, Mylan Inc. (NASDAQ: MYL) announced that its subsidiary Mylan Pharmaceuticals Inc. entered into a settlement agreement with Orion Corporation that will resolve patent litigation related to Entacapone Tablets, 200 mg. Entacapone Tablets are the generic version of Orion’s Comtan®, indicated as an adjunct to levodopa/carbidopa therapy to treat patients with idiopathic Parkinson’s Disease who experience the signs and symptoms of end-of-dose “wearing-off.”
Under the terms of the settlement agreement, Mylan may launch a generic version of Comtan, 200 mg, on April 1, 2013, at the earliest. Pursuant to the agreement, pending litigation will be dismissed. All other terms and conditions of the settlement are confidential, and the agreement itself is subject to review by the U.S. Department of Justice and the Federal Trade Commission.
Entacapone Tablets, 200 mg, had U.S. sales of approximately $104.9 million for the 12 months ending Sept. 30, 2012, according to IMS Health.
Amgen Finalizes Agreement Resolving Federal Investigations
On December 19, 2012, Amgen (NASDAQ: AMGN) announced it finalized a settlement agreement with the U.S. government, 49 states and the District of Columbia related to previously disclosed investigations.
Amgen will pay approximately $612 million to resolve its civil liability related to certain promotional practices related to the drugs Aranesp® (darbepoetin alfa), EPOGEN® (epoetin alfa), NEUPOGEN®(Filgrastim), Neulasta® (pegfilgrastim), Enbrel® (etanercept) and Sensipar® (cinacalcet) as alleged in the unsealed qui tam complaints and $150 million to resolve its criminal liability relating to the marketing of Aranesp.
“I am pleased a settlement was reached to conclude this matter. With the emphasis and investment we have made in compliance, I am confident about Amgen’s continued adherence to the provisions in this agreement,” said Robert A. Bradway , chief executive officer at Amgen. “Amgen remains dedicated to advancing science to dramatically improve people’s lives. We are committed to meeting the expectations of the government and the healthcare community as we fulfill our mission in serving the needs of patients.”
As part of the agreement, Amgen has pleaded guilty to a single misdemeanor count of misbranding Aranesp by promoting it in a way that was different from the dosages in the label. The plea was entered yesterday in the U.S. District Court for the Eastern District of New York and was accepted today by the same Court.
Shutterfly to License Kodak Imaging Patents
On December 19, 2012, the day that Kodak announced the sale of its imaging patents, Shutterfly, Inc. (NASDAQ:SFLY), a manufacturer and digital retailer of personalized products and services, announced that it entered into an agreement to license 1,100 Kodak imaging patents, as well as other patents that Kodak is keeping as part of its on-going business.
“As the market leader in digital personalized photo products and services, Shutterfly continues to invest in its intellectual property portfolio through licensing and internal innovation, which includes 55 patents granted and more than 50 patent applications in the U.S. and abroad,” said Jeffrey Housenbold, president and chief executive officer at Shutterfly. “We’ve partnered with a consortium of global technology firms to come to an agreement that supports the business objectives of all parties involved.”
This proposed agreement also dismisses current patent-related litigation between Shutterfly and Kodak. It seems this deal must have needed to get done before the consummation of the sale to the IV/RPX group, while Kodak still controlled the portfolio.
GE Healthcare, CDI Agree to Sublicense for Cellular Assay Patents
On December 18, 2012, GE Healthcare Life Sciences, a business unit of GE Healthcare (NYSE: GE) and Cellular Dynamics International (CDI), a commercial producer of human induced pluripotent stem (iPS) cell lines and tissue cells, announced today that GE Healthcare has licensed CDI to develop, manufacture and sell cellular assays and models derived from induced pluripotent stem (iPS) cells for use in drug discovery and toxicity screening. The agreement follows the recent announcement that GE Healthcare has expanded its license with Geron to obtain exclusive global rights to Geron’s intellectual property and know-how for the development and sale of cellular assays derived from iPS cells. Financial terms were not disclosed.
Dr. Amr Abid, General Manager, Cell Technologies, GE Healthcare Life Sciences, said, “We believe it is important that stem cell-based assays are available to researchers so that progress can be made in drug discovery; clarity and freedom to operate is fundamental to advancing the use of such assays. Our recently extended agreement with Geron provided the foundation for the type of agreement we are announcing today. GE Healthcare believes that such agreements are the next step to enabling the wider industry to benefit from the use of this key intellectual property without violating patent rights. We are delighted that Cellular Dynamics International is the first company to work with us to bring greater clarity to the marketplace.”
Bob Palay , CEO of Cellular Dynamics International, added, “CDI’s mission is to provide human cell-based research and drug discovery tools that enhance scientists’ ability to better understand human biology, increase efficiency of the discovery process and ultimately improve human healthcare. The IP space surrounding stem cell technology is complex. With the licensing of the GE-Geron intellectual property portfolio, CDI now has more than 700 licensed or owned patents and patent applications. We have built our IP portfolio intending to ensure broad freedom to operate and to offer customers products that they can use with confidence and the knowledge that their subsequent discoveries are protected by this IP portfolio.”
eTAGZ Inc. Settles with Tom Teasers Turkey Calls
On December 18th, 2012, Tom Teasers Custom Calls, producers of hand-made calls for the avid turkey hunter, reached a settlement with Utah-based eTAGZ, Inc. for use of eTAGZ’s patents allowing for the attachment of digital media such as CDs and DVDs (with content ranging from advertisements, product information and hunting call techniques).
eTAGZ is the owner of U.S. Patent No. 6,298,332 entitled “CD-ROM Product Label Apparatus and Method,” U.S. Patent No. 7,703,686 entitled “Consumer-Computer-Readable Product Label Apparatus and Method,” U.S. Patent No. 7,503,502 entitled “Computer Readable Hang Tag and Product” and the newly awarded U.S. Patent No. 8,249,919 entitled “Computer Readable Medium Product Label Apparatus and Method.”
As you will note from the patents, they do not cover turkey calls, but rather relate to a generic product of any type with an attached computer readable medium distinct from the generic product, which makes these patent claims extremely broad. Essentially, the patents owned by eTAGZ cover the attachment and use of digital media for sales, promotion, and marketing of all types of products.
Tom Walton, owner of Tom Teasers, comments, “We promote turkey calls, and when we come out with a DVD that actually shows how to use the product, it is beneficial to someone who is new to turkey calls. It’s a bonus package for our customers.”
Ed Bruno, eTAGZ President, adds, “The outdoor enthusiast market continues to benefit from digital media attached to product at retail. Consumers clearly desire the media/product combination and hunting brands are realizing the lift in sales to prove it.”
Microsoft and EINS Sign Android Patent Agreement
On December 11, 2012, Microsoft Corp. and EINS SE signed a patent licensing agreement that provides broad coverage under Microsoft’s patent portfolio for EINS devices running the Android platform. EINS manufactures Android tablets under the Cat brand in Germany. While the contents of the agreement have not been disclosed, the parties indicate that Microsoft will receive royalties from EINS SE.
“This agreement with EINS is an important development that reinforces the success of our licensing program in the European market, particularly in Germany,” said Horacio Gutierrez , corporate vice president and deputy general counsel of the Intellectual Property Group at Microsoft. “In the past year, Microsoft has been able to demonstrate the strength of our German patent portfolio and its relevance to Android devices. We’re hopeful this license with EINS leads to additional licenses with European companies.”
Christian Pladwig, CEO of EINS, stated, “We are thrilled to be able to bring high quality Android products to our customers as a result of this agreement with Microsoft. We now have a strong IP foundation that allows us to improve on our product line across Europe.”
U-Tech Media Joins the One-Blue Licensing Program for Blu-ray Disc™
December 6, 2012 One-Blue, LLC, announced that U-Tech Media Corporation has joined the One-Blue Blu-ray Disc™ (BD) product licensing program as a licensee. U-Tech Media signed a BD-ROM Movie Disc and/or Data Disc License Agreement that grants the company access to important patents essential to the Blu-ray Disc™ standard from leading licensors, including CyberLink, Dell, Fujitsu, Hewlett-Packard, Hitachi, JVC Kenwood, LG Electronics, Panasonic, Pioneer, Philips, Samsung, Sharp, Sony, Taiyo Yuden and Yamaha.
In unrelated news, on December 5, 2012, William J. Lenihan, who is Director, IP Licensing of One-Blue, LLC, wrote an op-ed published on IPWatchdog.com titled Patent Pooling is an Effective Tool for IP Monetization.
NIH Awards Contract for Improved Anthrax Vaccine
On December 5, 2012, iBio, Inc. (NYSE: IBIO) announced that the National Institute of Allergy and Infectious Diseases, part of the National Institutes of Health, has awarded a contract to the Company’s research and development collaborator, the Fraunhofer USA Center for Molecular Biotechnology, for a new generation anthrax vaccine to be developed with the iBioLaunch™ Platform under a research license from iBio. The first year of funding will be $1.76 million with a total contract amount of up to $9.9 million, depending on the exercise of contract options.
In October 2012, iBio announced issuance of a U.S. patent covering compositions of matter and methods of producing anthrax vaccines, an expansion of the Company’s portfolio of assets relevant to bio-defense and infectious disease product applications. The Notice of Allowance was mailed October 19, 2012, but the patent has not yet issued. The published application relating to the soon to be issued patent is US Patent Application No. 20110027304. Data previously published in peer-reviewed scientific journals demonstrated the effectiveness of the iBioLaunch platform for development and production of vaccine candidates for both bacterial pathogens, such as plague and anthrax, and viral pathogens such as influenza and human papilloma virus.
iBio’s strategy for development of therapeutic and vaccine product applications of its technology platforms is through commercial collaboration and licensing internationally with corporations and government entities. In September 2012, iBio and GE Healthcare announced the formation of a new global alliance, and the Company’s technology is being used for development of a new recombinant yellow fever vaccine under a commercial license and product development collaboration with Fiocruz/Bio-Manguinhos. Phase 1 clinical trials of influenza vaccine candidates produced via the iBioLaunch platform were funded by the U.S. Department of Defense and the Bill & Melinda Gates Foundations. iBio previously announced success in the use of its platform for the production of a variety of therapeutic protein candidates including monoclonal antibodies and human blood plasma proteins. The Company is currently seeking additional partners for new vaccine candidates and for biotherapeutic products based on its platform technologies.
EnvisionTEC and 3D Systems Settle Patent Dispute
On December 10,2012 EnvisionTEC, Inc., a manufacturer and distributor of patented 3D rapid prototyping and manufacturing solutions, announced the settlement of the patent infringement lawsuit brought by 3D Systems, Inc.
“We are pleased to have resolved this matter amicably and look forward to continuing to develop and provide our customers with innovative and cost-effective rapid prototyping solutions,” said EnvisionTEC CEO Al Siblani.
“We are pleased to have resolved this matter amicably and look forward to continuing to develop and provide our customers with innovative and cost-effective rapid prototyping solutions”
NeoMedia and SpyderLynk Reach Settlement and License Agreement
On December 4, 2012, NeoMedia Technologies, Inc., a company operating in the mobile barcode solutions space, and SpyderLynk, a mobile activation and solution company for marketers, announced that the two companies settled all pending litigation and NeoMedia has granted SpyderLynk a non-exclusive patent license.
As a result of the settlement and patent license NeoMedia and SpyderLynk have agreed to terminate pending litigation brought by NeoMedia against SpyderLynk on Apr. 9, 2012.
ESI Announces Settlement in IP Infringement Litigation
While not technically a December patent deal, this news came out after our last roundup of deals published in November 2012.
On November 29, 2012, Electro Scientific Industries, Inc. (NASDAQ:ESIO), a supplier of laser-based manufacturing solutions for the microtechnology industry, announced that the company reached a settlement agreement with All Ring Tech Co. Ltd. (All Ring) related to ESI’s claim of infringement of one of its patents pertaining to electronic component tester technology. All Ring agreed to pay ESI the sum of TWD 475 million (approx. USD 16.3 million) as settlement and to discontinue selling the infringing products. ESI estimates that the net financial impact of the settlement and related costs will be an increase of approximately $15.8 million to operating income and approximately $10 million to net income after income taxes, for its fiscal 2013 third quarter, which ends December 29, 2012.
“ESI has made significant investments over many years to develop innovations in passive component test technology for our customers”
“ESI has made significant investments over many years to develop innovations in passive component test technology for our customers,” said Sean Phillips, General Manager, ESI Component Test and Inspection Division. “We are pleased that our efforts through the Taiwan court system have been rewarded by reaching a significant monetary award settlement with All Ring. This outcome is the result of ESI’s commitment to vigorously defend itself against those choosing to infringe our Intellectual Property. Our customers depend on ESI for innovative test solutions to meet their challenges in the component test marketplace. Defending our IP enables us to continue investing in solutions for our customers.”
About the Authors
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.
Angel Krippner is an Executive Assistant for IPWatchdog, Inc. In this role she provides administrative assistance, researches articles, coordinates our social media presence, networks with law firms and various other functions. She is the glue that holds everything together behind the scenes.