Posts Tagged: "patent license"

Standard Essential Patents: The Myths and Realities of Standard Implementation

Standard Essential Patents (SEPs) are patents that are unavoidable for the implementation of a standardized technology. They represent core, pioneering innovation that entire industries will build upon. These patents protect innovation that has taken extraordinary effort to achieve. Standard Development Organizations (SDOs) exist as a mechanism for industry innovators to work together to collectively identify and select the best and most promising innovations that will become the foundation for the entire industry to build upon for years to come. Those contributing patented technologies to the development of a standard are asked to provide a FRAND (which stands for Fair, Reasonable and Non-Discriminatory) assurance, in essence committing to providing access to patents that are or may become essential to the implementation of the standard.

Proceed with Caution When Acquiring a Licensor’s Patents

All too often, the prospective licensee/purported infringer usually doesn’t begin its efforts to acquire the patent(s) until after making disparaging statements about them during negotiations.  As an example, consider the time line discussed in the case of Gust, Inc. v. Alphacap Ventures, LLC, No. 2017-2414 (Fed. Cir. September 28, 2018) in which Alphacap Ventures, the purported infringer, demanded re-assignment of the patent owner’s patents as part of a settlement offer, but only after arguing for the invalidity of such patents under 35 U.S.C. § 101… While disparaging the patents question might serve a useful purpose in reducing their value, such disparaging statements will likely haunt the new owner during subsequent assertion assuming the new owner conceals such statements because of their potentially harmful nature. 

Contracts 101: Covenants, Representations and Warranties in IP License Agreements

It continually amazes me that many business folks who negotiate tons of IP license agreements, fail to understand the difference between covenants, representations, and warranties that are “standard” in many such agreements.  Well, that is not too surprising.  What is very surprising, however, is that many of their lawyers fail to appreciate the differences as well!  Many think the terms are synonymous and thus use them interchangeably. They are not.  So, for those of you tired of faking the funk, here is some (either fresh or refresher) Contracts 101!

iPEL Responds to Skeptics by Expanding Free Licensing Program

What if those who own large patent portfolios decided to actually help start-ups by opening up their patent portfolios to those start-ups rather than have those companies operate without a net and worrying about what has become an omnipresent threat of patent litigation? After all, a patent owner with a well formulated licensing program is not one who is interested in going after cash starved start-up companies anyway.

TiVo Files Patent Lawsuits against Comcast, Only Major U.S. Pay-TV Provider Without a TiVo Patent License

TiVo files patent lawsuits, the latest steps TiVo has taken in the hopes of resolving the renewal of a long-term licensing agreement that TiVo has already has already finalized with other major pay-television providers in the United States… TiVo’s recent litigation campaign against Comcast stems back to an unresolved licensing agreement that expired in April 2016 and which TiVo has attempted to renew with the major American pay-TV provider. Rovi first signed licensing agreements with the top pay-TV providers in the U.S., including Comcast, Dish Network, DirecTV and Time Warner, back in 2003 and 2004 with each deal lasting for a period of 12 years. In 2015 and 2016, around the same time that Rovi acquired TiVo for about $1.1 billion, the company began proactively engaging in licensing talks, again striking long-term deals like 10-year agreements with both AT&T and Dish. Of the top 10 pay-TV providers in the United States, Comcast is the last holdout who has not signed a licensing deal with TiVo.