Posts Tagged: "patent portfolios"

At the end of January, BlackBerry announced it had completed the sale of the majority of its patents to Catapult IP Innovations, a special purpose vehicle specifically formed for the acquisition. Approvals for the transaction were granted under the 1985 Investment Canada Act and the 1976 Hart-Scott-Rodino Antitrust Improvements Act. More information on the transaction can be found here on the SEC website. The value of the deal was reported to be $600 million, a figure that makes it one of the largest patent acquisitions in the last ten years and spurs a great deal of speculation about whether it is worth it. This article explores Blackberry’s divested portfolio and disassembles some of the assumptions surrounding the portfolio and the deal’s value.

Large banks have a reputation for being slow to change. However, in the past decade, the financial services industry has seen the wholesale adoption and implementation of new technology as firms realize that consumers and businesses are increasingly demanding a strong digital experience. In 2007, Bank of America was one of the first financial institutions to offer a mobile banking application and since then, the rest of the industry has followed suit. Now, consumers could not go without their banking apps ­– imagine going to the bank to deposit a check.

In Part I of this series we discussed how patent portfolio managers should be careful when generating company-owned prior art or reviewing competitor prior art, and how a patent litigation or licensing campaign can be significantly hamstrung based on how the United States and Europe consider intervening prior art. In Part II, we examined software patents with U.S. and European Patent (EP) family members. Part III builds on Parts I and II and focuses on the value of examiner interviews in the U.S. and Europe.

In Part I of this series, we discussed how patent portfolio managers should be careful when generating company-owned prior art or reviewing competitor prior art, and how a patent litigation or licensing campaign can be significantly hamstrung based on how the United States and Europe consider intervening prior art. In Part II, we will focus on software patents with U.S. and EP family members. The number of software related patent applications that are filed at the United States Patent and Trademark Office (USPTO) and European Patent Office (EPO) continues to increase despite heightened scrutiny during examination. Further, U.S. courts and national courts in Europe continue to critically analyze the eligibility of software patents.

One ingredient that distinguishes a good patent portfolio from a great patent portfolio can be the synergistic strength of its U.S. and European patent family members. To develop this strength, it is not enough to have a U.S. attorney and a European attorney simply coordinate the procedural strategy for filing an application; rather, the drafter and manager of the application should analyze important issues upfront and prepare a patent application that accounts for the substantive differences between U.S. examination, U.S. courts, European examination, and national courts in Europe.

The COVID-19 pandemic has caused a dramatic shift in how IP professionals manage their patent and trademark portfolios. Fortunately, many IP law firms and corporate IP departments have survived and managed well in this new environment. They are even showing great optimism as the industry trends toward greater consolidation and tighter global integration. Nonetheless, major concerns remain, challenging both IP owners and their advisers to find more effective ways to solve their portfolio management challenges while focusing on the long-term strategic value of IP.

Patent owners often obtain patents to protect products, as well as complementary products or use cases associated with those products. However, when selling or licensing the patented products, a patent owner may inadvertently extinguish potential revenue streams associated with the complementary use cases due to the doctrine of patent exhaustion. Patent exhaustion follows the basic idea that if a company sells or licenses a patented product to a buyer, the company cannot sue the buyer (or a third party that the buyer provides the patented product to under the license) for patent infringement for using the product. Patent owners should take care when preparing and licensing patents to ensure that infringement claims for complementary products or use cases associated with patented products are not exhausted by the sale or licensing of the patented products, as shown by the Federal Circuit case of Helferich Patent Licensing v. New York Times, 778 F.3D 1293 (Fed. Cir. 2015).

Samsung Display and LG Display, the two South Korean technology behemoths, announced plans earlier this year to stop the production of LCDs by the end of 2020. The announcements first appeared in Reuters’ reports and aim to consolidate the two companies’ lead in organic light emitting diode (OLED) panels, while conceding to Chinese manufacturers who have aggressively expanded their LCD productions. LCD prices have slumped over the years, as Chinese manufacturers backed by state subsidies have aggressively expanded production capacities. The plunging LCD prices have widened the operating losses at both Samsung and LG Display and finally led to the decision to cut production by year’s end.

Contemporary AI technology of the kind one has increasingly heard about in recent years is based on machine learning and deep learning methodologies. These use large amounts of computing power to crunch thousands of sample input-output pairs to train adaptable data structure models. Eventually, they are able to produce their own correct outputs when presented with an nth + 1 input. These can be thought of as questions and answers. If an AI model is given, say, 10,000 sample questions with correct answers, it will be able to correctly answer the 10,001st question by itself. Once trained, computing requirements are low. Due to the nature of the methodology, AI is appropriate for situations that involve repetitive decision-making processes. For one thing, many existing examples of correct decisions must be available during the training. Further, after the training phase, a system is applied to similar situations over and over again. Because of this, the application space for AI is sometimes overblown. However, once understood, this limitation usefully directs our attention to instances of decision-making that can be automated or made more efficient using AI. If we consider patent portfolio management in terms of constituent decision-making processes, we might be able to identify which of them are appropriate for the application of AI.

Yesterday’s IPWatchdog webinar, “How to Evolve Your IP Strategy Over Time,” focused on the trouble companies—both large and small—can run into when they don’t take the time to audit and implement concrete strategies to ensure they are focusing on developing valuable, rather than merely voluminous, IP portfolios. Michael Gulliford, Managing Principal at Soryn IP Group, said that there is often “a disconnect between the academic exercise of building a patent portfolio and the reality of running a business. It takes discipline and time to start implementing strategies to ensure it’s worthwhile.”

Tech giant Google had conducted its first-ever sale of patent assets in the U.S. brokered patent market. Data collected and provided to Bloomberg from the Richardson Oliver Law Group shows that Google had sold 207 assets, including 138 U.S. patents, in a single deal this year. The U.S. patents sold by Google covered lithium-ion battery-related technologies, which Google had first acquired in 2012 from its acquisition of the Motorola Mobility portfolio.

Events along the prosecution process create multiple windows of opportunity for strengthening a portfolio. Decisions are based on indications of market adoption using evidence from specialized technical analysis and subject matter experts who examine products in the market that potentially use your teaching and proposed claims. There are four key factors to consider during the prosecution process that can identify strengthening opportunities

Over the next few years, the most interesting intellectual property trend to watch will be what happens with new patent applications. The number of utility patent applications filed in the United States declined in 2015 (compared with 2014) and again in 2017 (compared with 2016). If the downward slide continues, will this be due to smarter filing strategies, or will it be because less emphasis is being put on patents? Will it be because more emphasis is being placed on trade secrets? Is it because of an unfavorable climate in the United States for certain types of inventions? Filings in other parts of the world are on the rise at a time when U.S. utility applications are either stagnant or in decline. Could it be because patent applicants are moving elsewhere?

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.