Posts Tagged: "Patent Licensing"

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.

iPEL announced its Initial License Offering, available only through the end of 2018, which provides all companies an opportunity to secure a license to iPEL’s entire worldwide patent portfolio, through one of two licensing programs: (1) free licenses for small businesses and startups, and (2) paid licenses for larger businesses.

10,000+ patents, spending $10M’s per year, cross-licenses, and license potential with dozens of companies, what’s the value of the portfolio to the business? Is your patent strategy valuable to your company? How? OK, tag you are it, what is the answer? The problem seems intractable. In previous articles, we have discussed how to determine your general patent risk and how to put a number on it. But where do you start when you are trying to estimate the value of your patent strategy?

InterDigital will end up acquiring more than 21,000 global patent assets from Technicolor, more than doubling InterDigital’s current portfolio of 19,000 patent assets. This includes more than 2,500 Technicolor patents which cover video coding technologies… As part of this transaction, Technicolor and InterDigital will also enter into a perpetual grantback licensing agreement, which will give Technicolor freedom to operate its remaining businesses and benefit from existing and future patents.

The founding fathers intentionally created a patent system affordable by the masses, and which was approachable and far less administratively complex. As imperative as that was for U.S. economic success, perhaps the two most important and distinguishing features of the U.S. patent system as compared with the British patent system relate to the fact that there was no “working requirement” and patents were viewed as assets that could be sold.

A group of 16 leaders from politically conservative institutions sent a letter addressed to President Donald Trump lauding the Trump Administration’s decision last summer to initiate an investigation into Chinese trade practices regarding intellectual property. The investigation, authorized under Section 301 of the Trade Act of 1974, was aimed at identifying instances where U.S. technologies have been forcibly transferred to Chinese entities as a cost of entering the Chinese domestic market as a foreign entity… The recent letter to President Trump from conservative leaders is the latest indication that right-leaning institutions and think tanks have been more engaged with the debate surrounding the current U.S. intellectual property system.

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.

When managing many of cross-licensing negotiations it can be hard to prioritize your activities. In a recent case, the client experienced this very thing and felt they would benefit from a clear overview of their efforts… Determining the risk potential from a given licensor required us to look at several variables. Steps 1-4 of Figure 2 focus on assessing the strength of the infringement case presented by the opposing company. Finally, in step 5, we estimate the impact of that case on our client’s revenues based on the number of evidence of use (EOU) materials still in the case. Based on these assumptions, we calculate the total potential risk to our client.

Concerns about the ability of academic institutions to keep contributing to the U.S. innovation economy go well beyond federal funding stagnation according to the recent AUTM survey. In an executive summary section entitled The Perils of Eroding Patent Rights, AUTM notes that a slight decrease in options and exclusive license agreements compared to the number of non-exclusive license agreements could be due to fears that licensing companies have over protecting the intellectual property under the current iteration of the U.S. patent system. In 2016, option agreements were down year-over-year by 7 percent while exclusive licenses dropped 2.1 percent. Non-exclusive license totals, however, rose by 2.1 percent to 4,201 such license agreements in 2016. A sharp increase in startups ceasing business activity, up 37.4 percent to a total of 331 such startups, is another “ominous trend” which AUTM notes is likely attributable to eroding patent rights.

The issues I will be watching in 2018 other than Oil States are as follows: (1) What does the new Director of the USPTO do with respect to reforming the PTAB? (2) Will the USPTO adopt a code of judicial ethics for PTAB judges? (3) Will the U.S. drop out of the top 10 countries for patent protection in the annual U.S. Chamber IP Index? (4) How will the Federal Circuit resolve Eleventh Amendment sovereign immunity and the assertion of sovereign immunity by Indian Tribes? (5) Will the Federal Circuit continue its unprecedented disposition of cases without an opinion by relying on Rule 36 summary affirmance? (6) Will Conservative groups become even more vocal advocates of a strong patent system?

A cross-licensing patent agreement is a contract between at least two parties that grants mutual rights to both parties’ intellectual property. The agreement may be a private one between two specific companies or a small consortium of companies. Or it may be a public agreement such as a patent pool, in which IP management is shared amongst a relatively large group of patent holders who share patents. Patent pools are typically industry-based, and companies active in the sector are free to join the pool.

Whether you are concerned with open source licensing, non-practicing entities, or general risk mitigation relating to patent assertion, this webinar will provide an overview on the innovative, alternative licensing programs put in place by the Open Invention Network, Allied Security Trust, LOT Network, and RPX.

On November 10, 2017, the Department of Justice’s (DOJ’s) new top antitrust enforcer, Assistant Attorney General (AAG) Makan Delrahim, delivered a powerful speech on antitrust law and policy enforcement towards intellectual property rights (IPRs). Former USPTO Director David Kappos described it as “the most important DOJ antitrust speech on IP during my decades practicing law”. … The speech clarifies that the new AAG views “any policy proposals with one-sided focus on hold-up with great skepticism because they pose a serious threat on the innovating process,” and submits that antitrust law should not be misused to police the private commitments such as FRAND that IP holders make to SSOs. In this, the speech agrees with the view shared by several scholars that FRAND commitments are contracts and a potential breach of those commitments may not be best suited under the purview of antitrust law and that “there are perfectly adequate and more appropriate common law and statutory remedies available to the SSO or its members”.

Are you bullish or bearish on the 2018 patent market? That is the question I asked a panel of experts recently. For the most part, those industry insiders who responded are bullish, although some are cautiously bullish. As you will read below, there seems to be a consensus that activity will be up in terms of deals in 2018, but relief from the downward pressure on prices experienced over the last several years likely will not be forthcoming in 2018.

One of the most valuable benefits of Open Prosecution is when a patentee is forced to enforce a patent. If the patentee filed for a Continuation, it could file for an additional patent with new Claims but the same Priority Date as the original patent, and add it to the lawsuit. And, of course, before that second patent is issued, the patentee files for yet another Continuation. The plaintiff in a patent infringement lawsuit can use an Open Prosecution model to continue to introduce new patents as a counter-strategy to the IPRs filed by the defendant. More than a few patent infringement lawsuits ended in favorable settlements once the defendant realized it had a formidable opponents with additional patents up its prosecution sleeve.