Patent Business: Deals, Settlements, Licenses for February 2013

The month of February was busy. As I write this I’m on a Southwest Airlines flight back from the AUTM annual meeting in San Antonio, where I spoke yesterday on the Bayh-Dole panel. Look for more on that later today or over the weekend. John White and I have been earnestly going through the first-to-file rules and examination guidelines updating the PLI Patent Bar Review Course, and I spoke at the 7^th Annual Patent Law Institute in NY earlier in the month. As busy as February was, March will be even busier, but busy is good.

As far as interesting deals and industry news goes, this month easily one of the biggest, and perhaps strangest news items relates to a trademark infringement action brought by Tiffany Co. against Costco. The lawsuit relates to allegations that Costco was selling counterfeit Tiffany Diamonds in at least one of its stores. That has to be filed under the “what where they thinking” category. Good for Tiffany defending its trademarks. Also good for Costco stepping up to the plate to cease this activity right away, but Tiffany does deserve a public apology (as they ask for in the complaint) and for customers to be notified they purchased fake Tiffany Diamonds. Kudos to Tiffany for turning this potentially harmful event into a real PR positive; a real textbook case on how to defend trademarks and generate all kinds of good, positive, free press.

Now, what follows, are some of the other lawsuits, licensing deals and settlements that piqued our interest during the month but wouldn’t necessarily support an independent article. Still, these items are worth knowing about if you want to keep your finger on the pulse of the industry.

If you have industry news you want to share we want to hear it! Contact me with your news, whether it is a successful ruling, notable license, meaningful patent acquisition or settlement.

Acacia Licenses, Settlements and Acquisitions

It was once again a busy month for Acacia Research Corporation (NASDAQ: ACTG) and its subsidiaries. Starting in reverse chronological order, on February 13, 2013, it was announced that Acacia subsidiary Unified Messaging Solutions LLC entered into a license and settlement agreement with Morgan Stanley. Meanwhile, on February 11, 2013, Acacia also announced that its same subsidiary —Unified Messaging Solutions LLC — entered into a license and settlement agreement with Charles Schwab Corporation. These agreements resolved patent litigation that was pending in the United States District Court for the Northern District of Illinois between Acacia and both Morgan Stanley and Schwab. This agreement resolves patent litigation that was pending in the United States District Court for the Northern District of Illinois.

Further, on February 8, 2013, Acacia announced that a subsidiary obtained a patent relating to core fiber optic network architectures. “As our licensing success grows, an increasing number of technology companies are selecting us as their partner for the licensing of their patented technologies,” commented Paul Ryan, Acacia 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.

On February 7, 2013, another Acacia subsidiary, HVAC Modulation Technologies LLC. entered into a licensing agreement with Johnson Controls, Inc.

On February 1, 2013, Acacia announced that a subsidiary had obtained rights to a patent portfolio relating to oil and gas production and will share licensing revenue with the patent owner, which is by far the most typical type of deal that Acacia does with inventors/owners. See Exclusive Interview with Paul Ryan. This particular portfolio just acquired comprises four US and 27 foreign patents that relate to polymer based drilling fluids, which are widely used in the drilling of oil and gas wells. Acacia’s CEO Paul Ryan, commented, “We see the energy industry as a significant new market for the continued expansion of our patent licensing business in 2013. Acacia plans to continue this expansion and partner with patent owners who have developed new technological advances in all areas of the energy industry.” Knowing the type of due diligence that Acacia engages in I anticipate that the patents are solid and that there is reason to believe there is ongoing infringement. So if you operate in this space you may soon be hearing from Acacia.

Fish & Richardson Wins on SJ for Travelocity

On February 22, 2013, attorneys from the Dallas office of Fish & Richardson obtained a total victory on summary judgment for their client Travelocity. With the trial scheduled to start with the next month, Travelocity prevailed over ICON thanks to a ruling by Judge Reed O’Connor in the U.S. District Court for the Northern District of Texas.  All claims were resolved in favor of Travelocity and nothing awarded to the plaintiff.

Texas-based Travelocity was sued by ICON on May 27, 2011, based on allegations of infringement relating to claims in U.S. Patent No. 6,002,853 (the ‘853 patent). The Netherlands-based ICON claimed Travelocity had infringed the ‘853 patent through the company’s searchable online database of available rooms in hotels. ICON had been seeking upwards of $20 million in damages.

Fish & Richardson attorney Tom Melsheimer, managing principal of Fish’s Dallas office, led the successful defense of Travelocity along with fellow Fish principal Neil McNabnay.

Microsoft, Nikon ink patent deal for Android-based cameras

On February 21, 2013, Microsoft Corporation (NASDAQ: MSFT) announced a patent licensing agreement with Nikon Corporation.  The deal provides broad coverage under Microsoft’s patent portfolio for certain Nikon cameras running the Android platform. While the contents of the agreement will remain confidential, Microsoft did announce that the deal would result in the company receiving royalty payments from Nikon.

Microsoft and Nikon have a long history of collaboration, and this agreement further demonstrates the value that both companies place on responsible IP licensing,” said David Kaefer, general manager of Intellectual Property (IP) Licensing at Microsoft. “Microsoft is proud to align with a leader in the digital camera industry to license Android technology for the benefit of Nikon’s customers.

Microsoft launched its IP licensing program in December 2003, the company has now entered into more than 1,100 licensing agreements.

Gilead and Teva Reach Settlement Agreement in Viread® Patent Litigation

On the eve of trial commencing, Gilead Sciences, Inc. (NASDAQ: GILD) announced on February 19, 2013, that they reached an agreement in principle to settle the ongoing patent litigation with Teva Pharmaceuticals (NYSE: TEVA). The litigation related to patents protecting Viread® (tenofovir disoproxil fumarate), a treatment for HIV infection and chronic hepatitis B. Under the terms of the settlement, Teva will be allowed to launch a generic version of Viread on December 15, 2017. Last report was the District Court for the Southern District of New York adjourned the trial pending completion of activities necessary to finalize the settlement.

“We believe strongly in the validity of our intellectual property,” said John Milligan, PhD, Gilead’s President and Chief Operating Officer. “This settlement, however, removes some uncertainty and minimizes further distraction and investment of human and financial resources associated with this litigation.”

Teva Pharmaceuticals Appoints of Dr. Arie Belldegrun to Board of Directors

On February 11, 2013, Teva Pharmaceutical Industries Ltd. (NYSE: TEVA) announced that Dr. Arie Belldegrun was appointed by the Board of Directors of Teva to fill a vacancy on the Board effective immediately. Dr. Belldegrun’s term of office will extend until Teva’s 2013 Annual Meeting of Shareholders.

Dr. Belldegrun is a director of the UCLA Institute of Urologic Oncology and Professor and Chair of Urologic Oncology at the David Geffen School of Medicine at the University of California, Los Angeles. Dr. Belldegrun serves as the Chairman of the Board of Kite Pharma, Inc., Arno Therapeutics Inc., and TheraCoat, Ltd.

Dr. Belldegrun received his medical degree at the Hadassah Medical School of the Hebrew University and conducted his post-doctoral studies at the Weizmann Institute of Science in Israel. He completed his residency in urologic surgery at Harvard Medical School and his surgical oncology fellowship at the National Cancer Institute (NCI) / National Institute of Health (NIH).

Luxe Link Announces Settlement with Provide Commerce in Patent Infringement Litigation

On February 19, 2013 Luxe Link LLC, a designer of high-end purse hook accessories, announced the settlement of its patent-infringement lawsuit against online retailer Provide Commerce Inc.  The case was filed last year in a Federal District Court in Los Angeles and alleged that Provide Commerce infringed Luxe Link’s U.S. Patent Nos. 7,644,900 and No. 8,061,669 by selling infringing purse hooks on its RedEnvelope.com website in direct competition with Luxe Link.

Luxe Link will receive $350,000 for Provide Commerce’s past sales and Provide Commerce agreed to stop selling infringing purse hook accessories. As a result of the deal Provide Commerce will offer authentic Luxe Link® purse holders to its customers.

“We are delighted with the resolution of our dispute with Provide Commerce. We will continue to enforce Luxe Link’s patent rights in all markets where our patents have been granted,” said Luxe Link CEO, founder, and inventor Kalika Yap. “Luxe Link has the right to protect our collapsible purse hook invention from unauthorized, lower-quality knock offs. This will help ensure that our properly licensed partners remain competitive. Our goal is to provide the highest quality purse hooks for our customers. This settlement is a step in the right direction.”

MGT Capital Investments, Inc. to Sell Legacy Medical Imaging Patents

Yes, this is not a February news item, but one left over from January that posted after we published the January column. Nevertheless, MGT Capital Investments, Inc. (NYSE: MGT), announced January 31, 2013 it retained Munich Innovation Group to license or sell MGT’s portfolio of international medical imaging patents associated with its wholly-owned legacy subsidiary, Medicsight, Inc.

Robert Ladd, MGT’s President and CEO, stated, “After review, we have determined that these imaging patents do not fit with MGT’s current business model. By partnering with Munich Innovation, a leading service provider for intellectual property monetization, we can better focus on the gaming patent infringement suit we filed in November 2012, as well as continuing to explore avenues to create and enhance shareholder value.”

MGT Gaming, Inc., a majority-owned subsidiary, owns U. S. Patent No. 7,892,088 relating to casino gaming systems.

APIX Technology Signs a Comprehensive IP Licensing Agreement CalTech

Analytical Pixels Technology (“APIX”) announced on February 7, 2013, that they entered into a comprehensive intellectual property licensing agreement with French research organization CEA-Leti and CalTech. Under this exclusive agreement, APIX secures extensive rights to a large portfolio of patents and technologies related to silicon nano-scale sensors and other complementary devices.

“This licensing contract is the corner stone that will allow APIX to bring to market the most advanced family of miniaturized, ultra-sensitive gas chromatography devices,” says Philippe Andréucci, APIX co-founder and Vice President of Business Development.

Under the terms of this agreement, APIX will develop and bring to market several product families targeting the needs of cleantech, energy, environment, defense/security and biomedical companies.

The use of nano-scale silicon components represents a major progress in miniaturizing gas chromatography devices, and making them more sensitive, more robust and eventually ubiquitous. APIX is currently the only company in its field bringing to market devices based on nano-scale silicon components.

Initial products introduction is expected in the early part of 2013 with an initial focus on the industrial and petrochemical markets.