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.
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.
Paul Ryan is a more common name than you might think. In the world of politics when one speaks of “Paul Ryan” they are talking about the Republican Congressman from Wisconsin who was Mitt Romney’s running-mate and would-have-been Vice President. But in the intellectual property world, particularly the patent litigation world, the name “Paul Ryan” refers to the CEO of Acacia Research Corporation. It is the later Paul Ryan that went on the record with me to discuss Acacia, patent enforcement, how large companies who are infringers disregard innovative independent inventors and much more.
This two-part interview took place on December 20, 2012. With the holidays looming and various articles already in the pipeline for the end of the year and start of 2013 publication slid a bit.
Sometimes when I’m doing an interview I have a good feeling about it and know it will turn out very good in print. This was one of those times. I enjoyed my conversation with Ryan and think you will find it quite informative and interesting as well. Without further ado, here is my interview with Paul Ryan.
Below is summary of some of the patent deals from the last week that caught my eye. If you have any “patent business”, “patent deal” or patent litigation settlement news story or press release you would like to share please send me a message using our contact form.
Acacia Settlement & Stock Repurchase
On November 15, 2012, Acacia Research Corporation (Nasdaq: ACTG) announced that its Criminal Activity Surveillance, LLC subsidiary has entered into a license and settlement agreement with UDP Americas, Inc. The agreement resolves litigation that was pending in the United States District Court for the Eastern District of Texas.
Below is summary of some of the patent deals from the last several weeks that caught my eye. If you have any “patent business”, “patent deal” or patent litigation settlement news story or press release you would like to share please send me a message using our contact form.
Mylan Announces Ortho Tri-Cyclen Lo® Settlement
On November 8, 2012, Mylan Inc. (Nasdaq: MYL) announced that it, along with Famy Care Ltd., has entered into a settlement agreement with Janssen Pharmaceuticals Inc. that will resolve patent litigation related to Norgestimate/Ethinyl Estradiol Tablets 0.180 mg/0.025 mg, 0.215 mg/0.025 mg and 0.250 mg/0.025 mg. Norgestimate/Ethinyl Estradiol Tablets are the generic version of Janssen Pharmaceuticals Inc.’s Ortho Tri-Cyclen Lo® Tablets, which are indicated for the prevention of pregnancy in women who elect to use oral contraceptives as a method of contraception.
According to the terms of the settlement, Mylan will be licensed to sell its Norgestimate/Ethinyl Estradiol Tablets 0.180 mg/0.025 mg, 0.215 mg/0.025 mg and 0.250 mg/0.025 mg, on December 31, 2015, or earlier under certain circumstances. 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.
Ortho Tri-Cyclen Lo Tablets had sales in the United States of $424.5 million for the 12 months ending September 30, 2012, according to IMS Health.
One of the newer prior art research studies currently underway at Article One Partners is one that relates to U.S. Patent No. 6,332,158, which relates to a system that assists user’s in selecting desired domains. See Intelligent Domain Name Lookup #1802. This study is of particular interest because the patent in question is owned by a subsidiary of Acacia Research Corporation, which is one of the largest and most powerful of the patent assertion entities (PAE) in the industry today.
Indeed, Acacia reportedly maintains upwards of 100 patent portfolios and aggressively pursues licenses for its own technologies. It is also a publicly traded company, so the industry has far more information about Acacia that with respect to virtually any other PAE. For some of my writings on Acacia please see Mother of All Patent Trolls and Acacia Research by the Numbers: Inside the Belly of the Beast. From what I know about Acacia it seems to me that they have found a very lucrative niche and execute quite well. They seem to acquire solid patents and patent portfolios and they are quite adept at monetization.
Of course, in this industry one man’s well operated company is another man’s patent troll. While it is entirely possible that they have acquired a patent that could be invalidated in litigation or in other forums, it seems unlikely to me that they would purchase a patent or patent portfolio without engaging in reasonable due diligence. That doesn’t mean, however, that the search for prior art will be futile. It just means that Article One is going to need the assistance of everyone who is at all knowledgeable about the industry and technology field. So if you know of prior art or have some time to hunt I suspect your input in this search could be quite valuable.
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.
Some years ago when I was writing a monthly newsletter for a firm to distribute to their clients and prospective clients one of the recurring sections requested by the firm was a “Licensing Roundup.” It was a popular section (I think), so I thought I might try and reprise something similar for the pages of IPWatchdog.com. Rather than limiting to licensing, I thought I would expand coverage to any kind of patent related deal, acquisition or license, together with the occasional settlement to end litigation.
If this seems popular, or popular enough, I’ll keep updating from time to time with new posts. If you have any “patent business” or “patent deal” news you would like to share please send me a message using our contact form.
Merck and AstraZeneca Agree to Amend Partnership
Merck (NYSE: MRK), known as MSD outside the United States and Canada, announced today that Merck and AstraZeneca (NYSE:AZN) have amended the option agreement related to their partnership known as AstraZeneca LP (AZLP).
The patent world is quietly undergoing a change of seismic proportions. In a few short years, a handful of entities have amassed vast treasuries of patents on an unprecedented scale. To give some sense of the magnitude of this change, our research shows that in a little more than five years, the most massive of these has accumulated 30,000-60,000 patents worldwide, which would make it the 5th largest patent portfolio of any domestic US company and the 15th largest of any company in the world.
Although size is important in understanding the nature of the shift, size alone is not the issue. It is also the method of organization and the types of activities that are causing a paradigm shift in the world of patents and innovation.
These entities, which we call mass aggregators, do not engage in the manufacturing of products nor do they conduct much research. Rather, they pursue other goals of interest to their founders and investors. Non-practicing entities have been around the patent world for some time, and in the past, they have fallen into two broad categories. The first category includes universities and research laboratories, which tend to have scholars engaged in basic research and license out inventions rather than manufacturing products on their own. The second category includes individuals or small groups who purchase patents to assert them against existing, successful products. Those in the second category have been described colloquially as “trolls,” which appears to be a reference to the children’s tale of the three billy goats who must pay a toll to the troll waiting under the bridge if they wish to pass. Troll activity is generally reviled by operating companies as falling somewhere between extortion and a drag on innovation. In particular, many believe that patent trolls often extract a disproportionate return, far beyond the value that their patented invention adds to the commercial product, if it adds at all.
Just say the name Acacia Research Corporation (NASDAQ:ACTG) to patent attorneys and those in the high-tech community and you are likely to observe an uncomfortable reaction. Acacia has long been considered by many to be the mother of all patent trolls. But are they really a patent troll? The term “patent troll” is one that is nearly impossible to define given the reality that one man’s patent troll is another man’s innovator who just chooses to license. Increasingly, however, the true bad actors in the non-practicing entity community are engaging in what the Federal Circuit has called extortion-like behavior. Is Acacia Research one of those patent trolls that engages in mafioso tactics, or are they a godsend to inventors and small businesses who otherwise couldn’t monetize their patent portfolios?
Hardly a week goes by without Acacia Research issuing at least one press release. These press releases hardly give any useful information and seem more aimed at what I will call “the Borg strategy.” Star Trek fans among us will recall that resistance is futile when dealing with the Borg. Likewise, resistance is probably futile when dealing with Acacia Research. They send this message not so subtly in their near constant press releases, which tout the acquisition of one or another unnamed patent portfolios from an unnamed “major technology company,” or the entering into a license with unspecified terms.