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.
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.
On December 19, 2012, ARRIS Group, Inc. (NASDAQ: ARRS) and Google Inc. (NASDAQ: GOOG) jointly announced that ARRIS and Motorola Mobility, a Google subsidiary, have entered into a definitive agreement under which ARRIS will acquire the Motorola Home business from Motorola Mobility, for $2.35 billion in a cash-and-stock transaction approved by the Boards of Directors of both companies. The acquisition will be on a cash-free, debt-free basis and is expected to be significantly accretive to ARRIS’ Non-GAAP earnings starting in the first full year after closing.
Under the terms of the agreement, upon closing of the transaction, Google will receive $2.05 billion in cash and approximately $300 million in newly issued ARRIS shares, subject to certain adjustments provided for in the agreement, representing an approximately 15.7% ownership interest in ARRIS post-closing.
For most inventors a patent search should be the first step in the patent application process. The reason is simple. A patent search is used to determine whether the time and expense of moving forward with a patent application is a worthwhile endeavor. The patent process can be expensive, so the last thing you want to do is spend a lot of time and money preparing and filing an application when there is easy to find prior art that will likely prevent a patent from issuing. Likewise, a patent search can give you a good idea about the likely scope of any patent claim that you may be able to anticipate. If it looks like you will only get an extremely narrow claim it might not be in your best interest to invest in the patent application. You can then move on to your next invention, and inventors always have a next invention.
Yes, Christmas is just around the corner and many are already done with their Christmas shopping. There are folks who are not, and we confess to be among those who still have one or more things to pick up for one or more people. But there is no need to panic! You can still get gifts via Amazon.com in time for Christmas, so it can’t really be the last minute, can it?
Well, sort of. The last day to order even from Amazon.com for standard shipping is Wednesday, December 19. The last day for two-day shipping (which comes free with an Amazon Prime account) is Thursday, December 20, or Friday, December 21 at 7pm ET (depending upon the item). The last day for one-day shipping is Saturday December 22 at 3pm ET. You can get local express delivery where available until December 24, and if you REALLY wait to the last minute you might have to deal with a printable e-mail gift card to stick in that stocking or envelope. For the full details see Amazon Christmas Ordering Deadlines. So you have PLENTY of time!
For those looking for those last minute, hard to find gifts for the geek in your life — perhaps a beloved patent attorney or maybe an engineer, scientist or inventor — here are a few can’t miss gifts for your consideration. As of the time of publication all are still available to be received before Christmas.
The American Intellectual Property Law Association is run day-to-day by Q. Todd Dickinson, the former USPTO Director who if you listen to rumors is on this short list or that short list for an appointment to the USPTO or the CAFC. But the AIPLA is not just Todd Dickinson and his extremely capable Executive Team and Staff. So much of the heavy lifting is done by dedicated attorney volunteers who serve on Committees, each with a different focus. The AIPLA is also made up of a Board of Directors that is very hands on, informed about virtually everything and provides what seems to be nearly constant guidance to the organization on issues ranging from positions to take in amicus briefs, to the organization stance on patent reform and PTO rules, to any number of international issues. The amount of work the AIPLA does boggles the mind.
The AIPLA, like State Bar Associations, also has a President. You will read that the AIPLA has 25 full-time employees, but truthfully that number seems like it should be 26. The AIPLA President, as far as I can tell, works every bit as hard and long as anyone else, but simply isn’t paid. The President also attempts to the greatest extent possible to also find time to do real legal work for clients in between rushing to this meeting, taking that call, dealing with whatever issue or flying off to some exotic land to represent the AIPLA abroad.
The AIPLA President serves what appears to be a 1 year term, but that is just the year as President. There is really a 5 year commitment, over which time more and more responsibility is placed on the person who will eventually wear the mantle of President for that year. Then upon leaving the Presidency that person becomes immediate Past President, which means the obligation to the organization agreed to long ago is not yet complete.
Just ahead of the 2012 AIPLA Annual Meeting I had an opportunity to go on the record with Bill Barber(of Pirkey Barber PLLC) then President and now Immediate Past President of AIPLA. Also joining the discussion was Jeff Lewis (of Patterson Belknap Webb & Tyler LLP), who was then President-elect and is now President of AIPLA. In part 1 of this 2 part interview we talk about the organization and how it operates, as well as the time commitment they invest. We also discuss getting “buy-in” from their law partners and their families.
Next year I will be speaking at the 7th Annual Patent Law Institute sponsored by the Practising Law Institute. The event, like in previous years, will be bi-coastal. We will be live from New York City on February 4-5, 2013, and live from San Francisco, CA on March 18-19, 2013, with the San Francisco location also being webcast. My topic will be ethics, which will provide the all important and highly sought after ethics CLE credit.
In addition to discussing ethical issues raised by the America Invents Act, such as the new statute of limitations and avoiding catastrophic malpractice issues with the shift to first to file, I also always like to do a rundown of recent OED disciplinary proceedings. The last time I did this was several years ago. See Patent Office Disciplinary Actions and Lack Thereof.
With this in mind, over the coming weeks and months leading up to the 7th Annual Patent Law Institute, I will be publishing a summary of the disciplinary proceedings before the Office of Enrollment and Discipline at the United States Patent and Trademark Office. What follows starts with the first Order of 2012.
Below is summary of some of the patent deals from the last couple weeks that caught our attention. If you have any “patent business,” “patent deal” or “patent settlement” news you would like to share please send me a message using our contact form.
Settlement Agreements in BYSTOLIC® Patent Litigation
On November 28, 2012, Forest Laboratories, Inc. (NYSE: FRX) and Forest Laboratories Holdings, Ltd. (collectively,“Forest”) announced that they entered into settlement agreements with Alkem Laboratories, Ltd. (“Alkem”), Indchemie Health Specialties Pvt. Ltd. (“Indchemie”), and Torrent Pharmaceuticals Ltd. and Torrent Pharma Inc. (collectively, “Torrent”) in patent infringement litigation brought by Forest in response to abbreviated new drug applications (ANDAs) filed by Alkem, Indchemie and Torrent each seeking approval to market generic versions of Forest’s BYSTOLIC® (nebivolol) tablets. These settlement agreements are in addition to the previously announced Bystolic patent infringement settlement agreement with Hetero Labs Ltd.
Specifically, under the terms of the settlement agreements and subject to review of the settlement terms by the U.S. Federal Trade Commission, Forest will provide licenses to each of Alkem, Indchemie and Torrent that will permit these companies to launch their 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 each company receives final FDA approval of its ANDA, or earlier in certain circumstances.
Seth Waxman, the 41st Solicitor General of the United States (1997-2001).
This is the final installment of my interview with Seth Waxman. In the finale Waxman goes through the process that the Supreme Court goes through to determine whether to accept a case and grant certiorari. As a former Solicitor General of the United States Waxman focuses on the interplay between the Supreme Court and the Solicitor’s Office, particularly detailing what is known as a Call for the Views of the Solicitor General, which Waxman explains comes in the form of an invitation to participate and share the U.S. government view of the issues. Of course, “[a]s a practical matter you cannot RSVP your regrets,” Waxman says jokingly.
Without further ado, here is the final installment of my interview with Seth Waxman.
WAXMAN: [Y]our first question was what does the Supreme Court look to in deciding what kinds of cases to take… [T]hey are looking for either a court that has incorrectly decided an unquestionably important issue. The paradigm would be a court has declared an act of Congress unconstitutional. The Supreme Court is going to review that. It may wait until a couple of other circuits have weighed in, but maybe not.
The other paradigm is there’s a split in the circuits. The same legal question with the same set of facts will definitely be decided differently in different jurisdictions. Then the Supreme Court has to step in because that can’t be in a national judicial system.
On this most festive of American holidays, where we emerse ourselves with family, food and football, I am once again inspired to share some thematically appropriate patents. After all, what better way to celebrate a holiday than reading patents appropriate for the festivities?
Before proceeding immediately into the discussion of various turkey related U.S. patents, allow me to first present my yearly Thanksgiving public service announcement. This announcement is not about the perils of eating too much turkey and falling asleep before dessert, or before you have gotten your appropriate fill of the NFL. Rather, this public service announcement is for the mathematically, or at least geometrically, challenged in the audience.
If you are going to deep fry your turkey you MUST remember 2 things (at least). First, make sure the turkey is completely thawed! You do not want to put something frozen into a pot of boiling oil! Second, for goodness sakes don’t fill the turkey fryer to the top with oil and then put in the turkey! Let Archimedes be your guide.
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.
KISS playing at Sauna Open Air 2010, during their Sonic Boom Over Europe Tour. Location Tampere, Finland.
A who’s-who of musicians and singers, including stars from Motown, Rock and Roll, Country, Rap and Jazz, today released an open letter to be published in this weekend’s Billboard Magazine opposing Pandora’s plan to cut artists’ pay when music is played over Internet radio.
The stars, who included Alabama, Sheryl Crow, CeeLo Green, Billy Joel, Maroon 5, KISS, Ne-Yo, Katy Perry, Pink Floyd, Megadeath and many others, praised Pandora, saying: “We are big fans.” But with massive growth in revenues and a successful IPO under its belt, the artists are wondering why Pandora is pushing Congress to slash musicians’ pay. “That’s not fair and that’s not how partners work together,” the open letter explains.
The artists’ letter also goes on to say: “Congress has many pressing issues to consider, but this is not one of them. Let’s work this out as partners and continue to bring fans the great musical experience they rightly expect.”
Like so many other popular science fiction books, movies and franchises, Star Trek has inspired many innovators to ask the question “why not?” Although Star Trek did not have a monopoly on inspiration for cloaking devices, a technology that was first awarded a U.S. patent earlier this year, it is hard to imagine a more powerful motivation for the pursuit of deflector shields.
Earlier today, the company and inventor that just recently received that first U.S. patent on a cloaking device announced that it had successfully tested a device capable of diverting electromagnetic radiation, thereby producing the “deflector shield” long sought in science fiction movies, television, stories, and video games.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more. The treatise is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting.
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