On Monday, August 5, 2013, the the Association of University Technology Managers (AUTM), a nonprofit association of academic technology transfer professionals, released the highlights of the AUTM U.S. Licensing Activity Survey: FY2012. The AUTM survey shares quantitative information about licensing activities at U.S. universities, hospitals and research institutions.The full report is scheduled for release at the end of the year.
The highlights of the survey reveal that University licensing and startup activity continued to see a robust increase during fiscal year 2012.
Institutions responding to the survey reported $36.8 billion in net product sales from licensed technologies in fiscal year 2012. In addition, startup companies formed by 70 institutions employed 15,741 full-time employees. This was the second year in which AUTM asked questions specifically targeted at ascertaining the economic impact of academic technology transfer.
Fables are nice, but rarely reflect reality. We understand that this series of papers will not be accepted by some with open arms, as it does not correlate with their visualization of reality, a reality that has been in the making for a long time by very good story tellers. It is comfortable to have an enemy to blame, and it is nice to be the good guy as well as the victim. The reality of life, however, is much different than each of us just wearing a black or white hat.
Much of what is reported here makes perfect sense. Why should we not expect that a non-inventor-based NPE would be selective in their purchase of patents so as to result in a portfolio that is as good as, if not better than, those of producers themselves? (That is, why are we so sure that patent assertion entities do not have the intelligence to find the gems that others are leaving by the wayside?) How many of us would enter a monster-truck rally with a 1985 Yugo GV, considered by some to be one of the worst engineered cars of all time? Isn’t it logical that the patents asserted by independent inventors and their companies might not fare as well as those patents of producing companies and the other NPEs, particularly given that many belonging to this group are generally not able to afford the best legal work in the initial preparation and prosecution of their patents, and often are relegated to use any attorneys that will take their litigation on contingency? Why wouldn’t we expect that a company that is buying patents would likely try to monetize them, particularly when the company to which we sell a patent (or set up a royalty agreement) is not in the business of what the patent claims? Aren’t we being disingenuous when we decry a NPE patent owner for not practicing an invention in a patent, and yet allow Producers to obtain and enforce the same patents even if they do not practice the invention in the patent themselves?
Myth 6: There are a growing number of NPE bad actors since passage of the AIA.
Truth: The number of cases filed by NPEs can be said to have increased ONLY if one takes into account the AIA’s requirement to file separate cases against each defendant. There has been no substantial increase if one looks at Unique NPE filers and cases filed on the same day. The percent of Unique NPE filers remains the same as Pre-AIA.
Some authors maintain that the number of NPE bad actors has continued to rise post-AIA. See Milone, Cheryl , “It’s Not Just the Tolls, It’s the Patent Quality,” Corporate Counsel, June 10, 2013. The basis of this purported rise is said to be unknown.
Myth 3: Independent inventors and independent inventor companies set up to license their patents have had little impact on the Troll story.
Truth: Independent inventors have a great impact on the NPE story, with independent inventors and independent inventor companies set up to license their patents filing considerably more suits under the joinder rules of the AIA on the average than non-independent inventor based NPEs. Their patents also fare significantly worse in both litigation and reexamination proceedings.
Independent Inventors have long distinguished themselves from “Patent Trolls” arguing the term would soon be used by large companies to stop independent inventor activity. See Chad Vice, Edison Nation Forums, forum post entitled The Patent Trolls’ Lie and The War on Independent Inventors, June 23, 2013. Unfortunately, so-called “experts” in the troll story have consistently been including independent inventor activity in the “troll” category for at least over a decade. In fact as our figures slow, there is no conceivable way of getting anywhere near a majority of troll suits post AIA unless one is counting all independent inventor suits, and suits by their alter ego companies, into the mix. While some may think this unfair, it is simply a fact.
To our knowledge, this is the first study that looked at the effects of independent inventor, and, in particular independent inventor company (that is, companies that we determined were just the alter ego of the individual inventors themselves) were having on the overall NPE numbers. That is, we looked behind the NPE to decide whether a company was just an alter ego of an independent inventor.
For all of us mystery buffs, what makes a good story is learning at the end who is ulti-mately responsible for the skullduggery set forth at the beginning of the yarn. Were all the prob-lems due to Colonel Mustard and his ineptitude with the candlestick, or do we have another case of “the butler did it?” And so, we set up our response to the many fables swirling around the so-called “Patent Troll” to lead us to whom we now believe is ultimately responsible for the rise in litigation by such entities. In this regard, we will look at numerous statements that have been asserted in the past with respect to the “patent troll,” and see how such statements stack up against the data. By following our responses to the various “myths” of the patent troll, we be-lieve most will themselves detect the “power behind the troll” long before we specifically un-cloak the same (no, it is not the Romulans! ) But just in case, we do the unmasking at the end of the paper.
There are many myths that are attached to the fable of the so-called “patent troll.” Acting like the MythBusters, we probed some of them, and set forth our findings below.
Editor’s Note: This is part 1 of a 5 part series written by Steven J. Moore and with the assistance of Marvin Wachs and Timothy Moore, also of the Kelley Drye & Warren Patent Department.
PROLOGUE : On the Isles of the White Knights and the Lowly Bridge Trolls
Once upon a time, long, long ago, in a land far, far away, there existed an island kingdom called Inventis, a legendary land of technologically advanced people. Inventis was composed of many small islands, each separated by raging rivers of hot lava said to have spewed from the mouths of dragons. The only way to move from one island to the next was by way of a bridge of stone. Several bridges had been built in the past, in each case unlocking unanticipated riches on the bridged island. While it was thought that more riches were on the other islands, because of the effort and danger of building a stone bridge over hot rivers of lava, most of the islands of Inventis remained inaccessible. This was a problem for the King as the population of Inventis was growing rapidly, and the people simply needed more room. The King, looking to promote the progress of bridge building, promulgated an edict whereby any bridge builder was granted, for a time, the exclusive right to any new and useful discovery made on any previously isolated island. To assure that any bridge built would be sound, the King restricted such exclusive right to bridge builders who fabricated their bridges to exacting engineering specifications. He placed the responsibility to assure these provisos were met in the hands of his Ministry of Bridge Patency (“Patency Office”) which also provided administrative mechanisms for anyone wishing to challenge any asserted exclusive right.
On the main island there lived two distinct groups of artisans who were adept at bridge building. One group, the Commercializers of the Enclave of Corporate, sold many products and services to the public. Among their number were some large and sturdy White Knights. The other group, the Non-Commercializers of the Enclave of NPE, were known as dreamers who paid little immediate heed to making money through commerce. Although among their number were independent thinkers, new entrepreneurs, failed commercializers, university scholars and basic researchers, there were also some hideous, slinking creatures who had polluted waters of the mainland by making a living dredging up the wreckage of the past, and marketing it as valuable. Because of these slinking creatures, the Knights referred to all those coming from NPE as “Trolls.”
On July 1, 2013, I spoke on the record with Ray Niro, who is one of the most well known patent litigators in the United States. Throughout his career he has been a champion for the inventor who was facing long odds due to widespread patent infringement. So loathed was Niro, he was the one who was originally referred to as the “patent troll” by the media due to his representing innovators against giant technology companies. Of course, if you are going to call Ray Niro a patent troll you might want to also point out that he is extraordinarily successful, which means he has been very good at proving that large corporations have infringed valid patents, sometimes on fundamentally important innovations.
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