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Patent Business: Deals, Settlements, Licenses – January 2013

Written by:
Gene Quinn (left) Patent Attorney & Founder, IPWatchdog
Angel Krippner (right), Executive Assistant, IPWatchdog
Posted: January 31, 2013 @ 10:30 am

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The month of January started off quite busy, which in all likelihood was as the result of deals and announcements either held over or that simply couldn’t get done in the run up to closing out the year. There was a noticeable lull in news and announcements with respect to patent deals, settlements and litigation announcements, and then things picked up a bit toward the end of the month.

This month some of the highlights included (1) an exclusive option to license drugs targeting Parkinson’s disease; (2) potential patent problems on the horizon for Facebook; (3) additional settlements in the Forest Laboratory’s BYSTOLIC® patent litigation; (4) the inevitable news from Acacia Research; plus more.

For those specifically interested in the business of the pharmaceutical industry please also take a look at out monthly roundup of news written by Pharmalot founder Ed Silverman. See Pharma Law and Business: A Monthly Roundup for January 2013.

If you have patent news that you want us to know send us a message.


Tessera and STATS ChipPAC Enter Into Five-Year Patent Licensing Agreement

Tessera Technologies, Inc. (NASDAQ: TSRA) announced January 29th, that its Tessera, Inc. subsidiary entered into a new five-year patent license agreement with STATS ChipPAC Ltd.

“We are delighted that STATS ChipPAC joined us in moving beyond litigation,” said Bernard “Barney” Cassidy, president, Tessera Intellectual Property Corp. “STATS ChipPAC is a leading semiconductor assembly and test company and they now have freedom of operation under more than 800 Tessera, Inc. patents and patent applications.

The companies did not disclose the specific financial terms of the agreements. Tessera, Inc. and STATS ChipPAC also agreed to dismiss claims and counterclaims between the two parties relating to Tessera, Inc.’s patent infringement claims pending in the United States District Court, Northern District of California. The Company is not providing additional financial guidance in connection with this license.


Patriot Scientific Settles with Charles Moore over MMP Portfolio™

On January 29, 2013, Patriot Scientific Corporation (OTCBB: PTSC) announced the settlement of all litigation between Charles H. Moore , co-inventor of the Moore Microprocessor Patent (MMP) Portfolio™, and The TPL Group, co-owners with PTSC of the MMP Portfolio. The dispute with Moore seems to date back at least a decade. In 2004 Patriot issued this press release explaining that they believed they would be able to prove that Moore was not a co-inventor of one of the critical patents of the MMP Portfolio™.

The MMP Portfolio patents, filed by The TPL Group in the 1980s, include seven US patents as well as their European and Japanese counterparts, cover techniques that enable higher performance and lower cost designs essential to consumer and commercial digital systems ranging from PCs, cell phones and portable music players to communications infrastructure, medical equipment and automobiles.

In October 2011, Patriot and TPL settled their own litigation relating to their joint venture to commercialize the MMP Portfolio™, but questions remained with respect to whether Patriot was the sole owner of the MMP Portfolio™.  On April 12, 2010, Patriot had filed suit in the Superior Court of the State of California, County of San Diego against TPL alleging contractual breach on a $1 million note receivable.


Domain Therapeutics Grants Prexton Therapeutics Exclusive Option to License mGluR4 PAMs for Parkinson’s disease

Domain Therapeutics S.A. announced on January 22, 2013, that Domain Therapeutics grants Prexton Therapeutics (Geneva, Switzerland) an exclusive option to license and develop metabotropic glutamate receptor 4 (mGluR4) Positive Allosteric Modulator (PAM) drugs targeting Parkinson’s disease.

The chemical series was previously developed through a licensing and collaboration agreement signed between Domain and Merck Serono, a division of Merck (Darmstadt, Germany) in January 2011. This agreement between Domain Therapeutics and Prexton Therapeutics – a spin-off company of Merck Serono formed around its R&D portfolio in the field of Parkinson’s disease – follows a strategic decision from Merck Serono to focus its research efforts on certain diseases such as multiple sclerosis, cancer and immune-mediated diseases.

Under the terms of the agreement signed between Domain and Prexton, Prexton will benefit from an exclusive license option to progress the mGluR4 PAM drug candidates into clinical development.

“We are pleased to sign this agreement with former seasoned scientists of Merck Serono, who had been involved in this mGluR4 PAM project within Merck Serono,” said Pascal Neuville, chief executive officer, Domain Therapeutics. “We are very confident that this newly founded company with a unique focus on mGluRs for neurodegenerative diseases will be the best partner to drive the project to an Investigational New Drug (IND) stage and then ensure its clinical development.”

“I had the opportunity to follow Domain’s mGluR4 PAM compounds and I am very glad that we can benefit from the collaborative work led by Domain and Merck Serono,” said François Conquet, chief executive officer, Prexton Therapeutics. “This license option agreement clearly strengthens Prexton’s franchise in the business of mGluR drugs.”


Facebook Notified of Patents Directed to Streaming Media

Single Touch Systems Inc., a technology based mobile media solutions provider that enables businesses, advertisers and brands to connect with customers, by and through its wholly owned subsidiary, Single Touch Interactive R&D IP, Inc., issued a “Letter of Notification” to Facebook, Inc. (NASDAQ: FB). The purpose of the letter was to inform Facebook of several Single Touch’s issued U.S. patents directed to streaming and routing media.  The patents include U.S. Patent Nos. 7,054,9497,191,2447,689,706 and 8,015,307, but also mention U.S. Patent Publication 2004/0025186.

For more on this please see Patent Problem on the Horizon for Facebook?


Forest Laboratories, Inc. Announces Additional Settlement Agreement in BYSTOLIC® Patent Litigation

Forest Laboratories, Inc. (NYSE: FRX) and Forest Laboratories Holdings, Ltd. announced on January 3rd that they have entered into a settlement agreement with Glenmark Generics Inc., USA, Glenmark Generics Ltd., and Glenmark Pharmaceuticals Ltd. (collectively, “Glenmark”) in patent infringement litigation brought by Forest in response to Glenmark’s abbreviated new drug application (ANDA) seeking approval to market generic versions of Forest’s BYSTOLIC® (nebivolol) tablets. This settlement agreement is in addition to the previously announced BYSTOLIC® patent infringement settlement agreements with Hetero Labs Ltd., Alkem Laboratories, Ltd., Indchemie Health Specialties Pvt. Ltd., and Torrent Pharmaceuticals Ltd.

Specifically, under the terms of the settlement agreement and subject to review of the settlement terms by the U.S. Federal Trade Commission, Forest will provide a license to Glenmark that will permit it to launch its generic versions of BYSTOLIC® as of the date that is the later of (a) three calendar months prior to the expiration of U.S. Patent No. 6,545,040, including any extensions and/or pediatric exclusivities or (b) the date Glenmark receives final FDA approval of its ANDA, or earlier in certain circumstances. Similar patent infringement litigation brought by Forest against Amerigen Pharmaceuticals Ltd. and Watson Pharmaceuticals Inc., and related companies and subsidiaries thereof, remains pending in a multidistrict litigation established in the U.S. District Court for the Northern District of Illinois.


Acacia Subsidiary Enters into License and Settlement Agreement with Avid Life Media, Inc.

Acacia Research Corporation (Nasdaq: ACTG) announced on January 3rd that its Unified Messaging Solutions, LLC subsidiary has entered into a license and settlement agreement with Avid Life Media, Inc. This agreement resolves patent litigation that was pending in the United States District Court for the Northern District of Illinois.


Acacia Subsidiary Enters into License and Settlement Agreement with Planon Corporation

Acacia Research Corporation (Nasdaq: ACTG) announced on January 3rd that its Automated Facilities Management Corporation subsidiary has entered into a license and settlement agreement with Planon Corporation. This agreement resolves patent litigation that was pending in the United States District Court for the District of Massachusetts.


ZShield Files Patent Infringement Lawsuit Against Harland Clarke

EZShield, a leading provider of identity management solutions, announced on January 3, 2013, that it filed a patent infringement lawsuit against Harland Clarke, wholly owned by M&F Worldwide Corp., in the United States District Court for the District of Maryland, Northern Division. The company is seeking monetary damages against Harland Clarke for its infringement of EZShield’s patent in its Check Fraud Protection Program.

“Harland Clarke knowingly infringed EZShield’s long standing intellectual property,” said Dale Dabbs, CEO of EZShield. “While fair competition in the marketplace is part of doing business, we are disappointed that Harland Clarke, a longtime EZShield partner, ignored EZShield’s rights and copied its Check Fraud Protection Program. This lawsuit seeks appropriate remedies for Harland Clarke’s infringement.”


Tessera and hynix Enter Into Eight-Year Patent Licensing Agreements

Tessera Technologies, Inc. (NASDAQ: TSRA) announced on January 2, 2013, that its Tessera, Inc. and Invensas Corporation subsidiaries each entered into new eight-year patent license agreements with SK hynix Inc.

“We are delighted that these new and broader agreements build on our long-standing and positive relationship with SK hynix, which has become the first DRAM manufacturer to reach agreements that give it access to both our Tessera, Inc. and our Invensas Corporation patent portfolios,” said Robert A. Young, chief executive officer and president, Tessera Technologies, Inc. “Multi-year agreements like these benefit our customers with secure pricing and provide us with running royalties that fund new innovations.”

The companies did not disclose the specific financial terms of the agreements, under which SK hynix will make a one-time payment and pay running royalties. The agreement will result in an increase in the Company’s recurring royalty revenues from SK hynix beginning in Q2 2013 because the Company reports royalties one quarter in arrears. The Company and SK hynix also agreed to dismiss the antitrust lawsuit pending in California state court. The Company is neither updating its financial guidance nor providing additional financial guidance in connection with this milestone.

“Our business is connecting patented ideas to manufacturers, like SK hynix,” said Young. “SK hynix now can make optimal decisions for its customers with the benefit of licenses to more than 1,200 issued patents in the Tessera, Inc. and Invensas Corporation portfolios.”


Acacia Subsidiary Enters into License and Settlement Agreement with Avalanche, LLC

Acacia Research Corporation (Nasdaq: ACTG) announced January 2,2013 that its Unified Messaging Solutions LLC subsidiary has entered into a license and settlement agreement with Avalanche, LLC. This agreement resolves patent litigation that was pending in the United States District Court for the Southern District of Florida and the United States District Court for the Eastern District of Illinois.


InterDigital and Research In Motion Extend Patent License and Include 4G

InterDigital, Inc. (NASDAQ: IDCC) January 2, 2013 announced that its patent holding subsidiaries have entered into an agreement which extends the term of their worldwide, non-exclusive, royalty-bearing patent license agreement with Research In Motion Limited (“RIM”). In addition to extending the patent license agreement for a multi-year period consistent with InterDigital’s licensing program, the parties agreed to amend the patent license to add coverage for 4G products, including LTE and LTE-Advanced products.

“This agreement, which extends the term of our patent license with RIM and includes 4G product coverage, continues the strong validation of InterDigital’s patent portfolio and our patent licensing program,” said Lawrence F. Shay, President of InterDigital’s patent holding subsidiaries. “We continue to experience very good progress in our 4G licensing program and look forward to adding additional 4G licensees.”


ACI Acquires IDL Solutions, Inc.

CACI International Inc (NYSE: CACI) announced January 2, 2013, that it has acquired IDL Solutions, Inc., a leading provider of information technology solutions, applications, and mission-critical systems support to healthcare IT clients and other civilian agencies. This acquisition expands CACI’s presence in the $33.5 billion addressable healthcare market and the federal health insurance area in particular, and complements its November 2012 acquisition of healthcare IT provider Emergint Technologies, Inc.


LMK Technologies and Perma-Liner Industries Reach Settlement in Patent Litigation

It was announced on December 31, 2012, that LMK Technologies and Perma-Liner Industries reached a settlement agreement in their outstanding patent infringement litigation, which took place in the United States District Court for the Middle District of Florida. LMK and Perma-Liner are North America’s two leading providers of trenchless lateral renewal and rehabilitation, via cured-in-place-pipe (“CIPP”) for municipalities, homeowners and contractors.

This agreement amicably resolved all differences between the companies. Details were not disclosed and remain confidential under the terms of the agreement. However, as a result of the settlement, Perma-Liner has agreed to enter into a license agreement with LMK for future use of certain LMK patents and technology, including LMK’s patented technology for lining through a clean out.

About the Authors

Gene Quinn is a US Patent Attorney, law professor and the founder of 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 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.

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