Patent Business: Litigation, Deals, Licenses & Settlements
|Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: March 30, 2014 @ 8:00 am
Periodically I stumble across a number of items that catch my attention, so I have occasionally published a monthly column that incorporates various items of possible interest. As I was reviewing the wire I noticed that this past week was particularly busy. Obviously, this is not intended to be an exhaustive summary, but rather interesting items that might be worth knowing about in order to keep your finger on the pulse of the industry.
Without further ado, here are some interesting patent business items from the past week.
Tessera Technologies Ends Litigation Against Qualcomm
On March 28, 2014, Tessera Technologies, Inc. (NASDAQ:TSRA) announced that Tessera’s subsidiary, Tessera, Inc., entered into an agreement with Qualcomm, Incorporated (NASDAQ: QCOM) to dismiss the case of Tessera, Inc. v. Qualcomm, Inc., et al. (Case No. 4:12-CV-00692), which was filed in the United States District Court for the Northern District of California. The agreement also provides that Tessera and Qualcomm Technologies, Inc. will explore potential technical collaborations concerning camera functionality and imaging performance of mobile devices.
“Having resolved this dispute, we look forward to collaborating with Qualcomm in the future. With our companies’ mutual technology capabilities and innovations there is much we can do together to produce value for the industry,” said Tom Lacey, Chief Executive Officer of Tessera Technologies, Inc.
“We are pleased that this dispute is behind us and we look forward to exploring technical collaborations with Tessera including their FotoNation technology,” said Raj Talluri, Senior Vice President of product management for QTI.
Microsoft and Dell Sign Patent Licensing Agreement
On March 26, 2014, Microsoft Corp. (NASDAQ: MSFT) and Dell announced a patent licensing agreement allowing the companies to share technology and build on each other’s innovations. It is the continuation of a nearly 30-year business relationship between Microsoft and Dell to deliver world-class technologies to consumers.
“Our agreement with Dell shows what can be accomplished when companies share intellectual property,” said Horacio Gutierrez, corporate vice president and deputy general counsel of the Innovation and Intellectual Property Group at Microsoft. “We have been partnering with technology manufacturers and vendors for many years to craft licensing deals, instead of litigation strategies.”
“Today’s announcement builds on our history of collaborating to bring new technologies to market. The relationship between Dell and Microsoft continues to help Dell deliver choice and flexibility to customers looking for the best technology to meet their needs,” said Neil Hand, vice president, End User Computing Products at Dell.
Through this arrangement, Microsoft and Dell have agreed to license each company’s applicable intellectual property related to Android and Chrome OS devices and Xbox gaming consoles. Under the terms of the agreement, they agreed on royalties for Dell’s products running the Android or Chrome platforms and on consideration to Dell for a license for Xbox gaming consoles.
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Patent Lawsuits Filed Over 3D Cinema Projection Technology
On March 26, 2014, RealD Inc. (NYSE: RLD) filed separate patent lawsuits in the United States District Court for the Central District of California against MasterImage 3D and Volfoni. The lawsuits RealD, Inc. v. Volfoni, Inc. et. al. (2:14-cv-02303) and RealD, Inc. v. MasterImage 3D, Inc. et. al. (2:14-cv-02304) allege that both the MasterImage 3D MI-Horizon3D products and the Volfoni SmartCrystal Diamond product infringes. The patents asserted in each case are U.S. Patent Nos. 7,857,455, 8,220,934, 7,959,296 and 7,905,602. The lawsuits seek monetary damages as well as preliminary and permanent injunctive relief.
With intellectual property dating back to 2006, the RealD XL Cinema System was introduced in 2008 and today is the world’s most widely used 3D cinema projection technology with more than 15,000 units installed around the world. The XL Cinema System delivers twice the light efficiency of any other 3D cinema projection technology, and as a result, it provides a superior projected 3D image at a lower operating cost.
“Over the years, RealD has invested heavily in research & development to ensure a premium visual experience for our customers, partners and consumers around the world. As a result, we place great value on our intellectual property,” said Michael V. Lewis, Chairman and CEO of RealD.
“RealD has a significant patent position around its XL Cinema System technology in many countries, including the United States, Europe, China, Japan, S. Korea, Australia, Brazil, Canada, India, Mexico and Russia, and we will vigorously enforce intellectual property rights for all of our products. We believe MasterImage3D and Volfoni are infringing RealD’s patents and copy the optical design of the XL Cinema System product line,” added Neil G.J. Mothew, Vice President, Intellectual Property and Legal Affairs.
On March 26, 2014, Acacia Research Corporation (NASDAQ: ACTG) announced that its GT Gaming LLC subsidiary has entered into a settlement and patent license agreement with Big Viking Games, Inc. The agreement resolves litigation that was pending in the United States District Court for the Southern District of California.
Also on March 26, 2014, Acacia announced that its Computer Software Protection LLC subsidiary has entered into a settlement and patent license agreement with Nuance Communications, Inc. The agreement resolves litigation that was pending in the United States District Court for the District of Delaware.
Similarly, on March 26, 2014, Acacia announced that its Super Resolution Technologies LLC subsidiary has entered into a settlement and patent license agreement with GE Healthcare Biosciences Corp. The agreement resolves litigation that was pending in the United States District Court for the Northern District of Texas.
Pitney Bowes and IBM to Collaborate on Hybrid Cloud Location Services
On March 25, 2014, Pitney Bowes Inc. (NYSE: PBI) and IBM (NYSE: IBM) announced a collaboration on IBM’s codename “BlueMix” platform-as-a-service to develop new hybrid cloud location services that help businesses unearth deeper connections between their customers, their geography, and their networks to deliver more personalized services and contextually relevant experiences.
IBM’s BlueMix is a new development environment that helps clients and developers speed the adoption of hybrid clouds. The initiative combines the strength of IBM software, third-party and open technologies. BlueMix provides DevOps in the cloud – an open, integrated development experience that scales to any level. Pitney Bowes is among the first third-party solutions now available to developers and companies on the new IBM BlueMix Platform-as-a-Service (PaaS).
For Pitney Bowes, the partnership provides the opportunity to expose key solutions, such as location-based services, e-commerce fulfillment, Internet postage, and parcel management, through IBM’s API Management to an extended ecosystem of innovators and developers. It also speeds the availability of new services from Pitney Bowes to vast new markets globally.
“Together, IBM and Pitney Bowes are developing a powerful lineup of cloud services around mobile application development and location intelligence,” said Steve Robinson, General Manager, IBM Cloud Platform Services. “This open-platform collaboration will inspire development that accelerates innovation and fosters growth.”
“Companies need tools and expertise to manage and integrate APIs, leverage location intelligence and customer data, and then seamlessly extend their services to reach their customers via the cloud and mobile devices,” said Roger Pilc, Chief Innovation Officer for Pitney Bowes. “We look forward to delivering Pitney Bowes digital commerce solutions on IBM’s BlueMix.”
IBM holds 1,560 cloud patents focused on driving innovation.
More Patents Tossed from Remote Control Patent Dispute
On Monday, March 24, 2014, the district court excised two more Universal Electronics, Inc. patents from their ongoing patent infringement lawsuit against Universal Remote Control, Inc. The patents were disposed of on summary judgment, bringing the total number of patents kicked from the case to three of the four originally in dispute. The district court also permitted many of Universal Remote Control’s patent misuse defenses to proceed to trial, despite Universal Electronics’ attempt to dismiss them on summary judgment.
The litigation started in March 2012 when Universal Electronics accused Universal Remote Control of infringing four of its patents. Universal Remote Control was successful in the early stages of the proceeding. The district court declared the first of the three dismissed patents invalid in February 2013. With the dismissal of two more patents this week, Universal Remote Control believes that the district court will similarly find the one remaining patent invalid and not infringed. Universal Remote Control believes this patent is invalid because it is based on the same method Goldstar introduced in 1991, five years before the patent was applied for at the United States Patent and Trademark Office. The patent is based upon an uncommon remote control programming method of pressing a number button (0 – 9) in sequence until a matching control code is found.
Rambus and Nanya Sign Patent License Agrement
On March 23, 2014, Rambus Inc. (NASDAQ: RMBS) and Nanya Technology Corporation (TPE: 2408) announced they have signed a broad five-year patent license agreement. This agreement allows for the use of certain high-performance, low-power patented innovations developed by Rambus in Nanya DRAM products and enables future technology collaboration. Under this agreement, Rambus and Nanya have settled all outstanding claims, providing Nanya with access to certain memory-related Rambus innovations through the second quarter of 2018. Other terms of the agreement are confidential.
The licensing agreement with Nanya not only enables the use of certain Rambus memory-related innovations for a period of five years, but also opens the door for the two companies to collaborate on memory and interface technologies, which are critical to meeting the emerging power and performance requirements of device-driven markets like mobile and cloud.
“This milestone agreement with Nanya marks a new era at Rambus where we have no outstanding litigation and can focus 100 percent on working closely with customers to solve technology challenges,” said Dr. Ron Black, president and chief executive officer of Rambus. “The same inventiveness and entrepreneurialism that drove our technology contributions to modern memory architectures and into the market are being applied to new technology challenges in memory and interface, security, and the Internet of Things architecture and design. This is an exciting time to be at Rambus.”
“We are pleased to put this matter behind us and explore mutually beneficial engagement opportunities to improve our products with Rambus technologies,” said Charles Kau, president of Nanya.- - - - - - - - - -
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About the Author
Gene Quinn is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.