Patent Business: Deals, Acquisitions & Licenses Vol. 1

By Gene Quinn
June 27, 2012

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).

As a result of the amended agreement, Merck will continue to record supply sales and equity income from the partnership for the remainder of 2012 and 2013. In 2014, AstraZeneca now will have the option to purchase Merck’s remaining interest in AZLP based in part on an agreed-upon calculation of the value of Merck’s interest in Prilosec and Nexium. AstraZeneca’s option is exercisable between March 1, 2014 and April 30, 2014. If AstraZeneca chooses to exercise this option, the closing date is expected to be June 30, 2014.

“This amendment provides clarity about the valuation of this long and successful partnership and enhances our ability to drive Merck’s performance through the impact of U.S. SINGULAIR patent expiration later this year,” said Peter N. Kellogg, executive vice president and chief financial officer of Merck. “We are confident that we can achieve our 2012 targets, and this agreement will help partially offset the macroeconomic and market austerity pressures anticipated in 2013.”

 

Theradiag Acquires Innovative MicroRNA Technology Platform

Theradiag, the theranostics and in vitro diagnostics company focused on autoimmune disease, announced on June 27, 2o12 that it is acquiring Prestizia, a biotechnology company that is developing a microRNA technology. Theradiag is already working with this microRNA platform to develop new theranostic tests for various pathologies, including cancers and autoimmune diseases.

“The acquisition of Prestizia represents a major advance for Theradiag. Its microRNA platform is going to allow us to strengthen our development in theranostics with a highly innovative, patented technology,” stated Michel Finance, CEO of Theradiag.

Prestizia acquired an exclusive worldwide license on a patent for a method of characterizing HIV cell tropism. Prestizia’s technology is based on the identification of microRNA signatures1. This technology could pave the way for a large number of clinical applications, including the possibility of identifying patients eligible to a treatment for viral diseases including HIV or differentiating types of cancerous tumors.

 

8×8 Sells Patent Family

8×8, Inc. (NASDAQ:EGHT), provider of innovative cloud communications and computing solutions, announced on June 27, 2012 that it has assigned a family of its United States legacy patents to a third party for an undisclosed payment.

Bryan Martin, Chairman and CEO of 8×8, stated, “We are pleased to report a significant success in monetizing a subset of the Company’s portfolio of patents.”

To date, 8×8 has been awarded more than 80 United States patents.

 

MPEG LA Announces Call for Patents Essential HEVC

On June 26, 2012, MPEG LA, LLC announced a call for patents essential to the High Efficiency Video Coding (“HEVC”) standard. HEVC (also known as H.265 and MPEG-H Part 2) is intended to improve video coding efficiency for the benefit of mobile service providers and consumers. HEVC is also expected to deliver next generation higher resolution HDTV video displays for 4K and 8K Ultra High Definition TV.

“By starting the joint license facilitation process now, the market can enjoy the earliest opportunity to plan for deployment of this promising new technology,” said MPEG LA President and CEO Larry Horn. “MPEG LA is pleased to assist in facilitating a convenient, independently administered, one-stop patent licensing alternative to assist users with implementation of their technology choices and invites all patent holders to participate.”

This call for patents essential to HEVC coincides with a Call for Proposals associated with technology for the scalable enhancement of the draft new High Efficiency Video Coding (HEVC) standard made by the International telecommunications Union, International Organization for Standardization and the International Electrotechnical Commission. The purpose for the Call for Proposals is to start the work associated with the multiple layer coding standards based on the responses received. The Call for Proposals went out May 11, 2012, with evaluation of submissions to begin in October 2012.

 

International Rectifier Enters Into Patent License Agreement

International Rectifier, IR® (NYSE: IRF), a world leader in power management technology, and Power-One, Inc. (Nasdaq:PWER), a leading global manufacturer of renewable energy and energy-efficient power conversion and power management solutions, announced on June 26, 2012 that they entered into a non-exclusive, worldwide, Field of Use agreement for Digital Power Technology (DPT) patents from Power-One.

Digital Power Technology drives increased system efficiency, improved design flexibility, faster time to market, decreased footprint size and lower system costs. DPT also enables telemetry capability, providing access to critical information including current, temperature and voltage. Telemetry allows the system to accurately monitor its power consumption and thermal performance, enabling designers to easily engineer key features such as system optimization, fault detection and predictive maintenance features into their end products.

“It has become clear over the last several years that the leading server, performance desktop, communications and netcom customers are transitioning or have completed their transition from analog power to digital power,” said Deepak Savadatti, Vice President and General Manager IR’s Enterprise Power Business Unit. “This agreement validates our strong commitment to continue International Rectifier’s leadership in the digital power management space.”

 

Acacia Subsidiary Acquires 156 U.S. and International Patents

Acacia Research Corporation (Nasdaq:ACTG) announced on June 26, 2012 that a subsidiary has acquired 5 patent portfolios with 156 U.S. and International patents related to microprocessors, systems on chip, general circuit design, packaging and semiconductor manufacturing processes.

“As Acacia’s licensing success grows, an increasing number of major technology companies are selecting us as their partner for the licensing of their patented technologies,” commented Paul Ryan, Acacia Chairman and CEO. “Acacia is rapidly becoming the leader in technology licensing and we continue to grow our base of future revenues by adding new patent portfolios,” concluded Mr. Ryan.

 

Acacia Subsidiary Acquires Patents for X-Ray Powder Diffraction

Acacia Research Corporation (Nasdaq:ACTG) announced on June 21, 2012 that a subsidiary has acquired patents for x-ray powder diffraction technology.

“Acacia continues to increase the number of patent portfolios we control in the medical device and diagnostics sectors,” commented Paul Ryan, CEO and President. “Acacia is rapidly expanding its presence as a leader in patent licensing for both the technology and medical technology sectors.”

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 1 Comment comments.

  1. Stan E. Delo June 28, 2012 11:33 pm

    Gene-
    I would certainly like to see an exploration of how to go about arriving at a licensing contract that is useful to both parties. For instance, in my position, if the first licensee just sits on it for way too long, unless it is stipulated in a contract, it will impede the implemtation of the technology. On the other hand though, if there is a performance clause, wherein they lose the deal if they are unable to deliver their projected or promised market volumes, the contract might well be construed as being moot and therefor kaput..

    Cheers,
    Stan~