Hello all,
Every time I think a quiet period in terms of newsworthy IP events is upon us, I am reminded that new events are shaping our global ecosystem on an almost daily basis. Thus, below is a digest of the most important news (in my book) during the past month. I focus on the flurry of recent large patent verdicts which will no doubt provide patent owners with some cause for optimism.
This will be a topic of interest I am sure in the upcoming IP conferences. In this regard, our Sr. VP Brokerage Erika Warner and I will be in San Francisco all day on June 11th in the context of the IPBC Global event. It will be a packed schedule and we are only on site for that day. If you’d like to meet, please send an email to info@tangibleip.biz and we’ll get back to you.
As usual, as I focus on the macro picture in this newsletter, I want to remind everyone that we track everything that is going on in this world and for those who need their regular dose of news, once again you can follow me on either LinkedIn or Twitter where I post almost daily about some of the most newsworthy events.
Happy reading!
Louis
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Tangible IP News
As we mentioned in our last column, we successfully brokered a voluntary license with two Fortune 500 companies on a small patent portfolio in the video sharing technology area that we were representing. We are also in the closing stage of a couple more transactions. Stay tuned for announcements to come.
We recently sent to market a large portfolio from one of the largest and most respected tech company in the world, comprising of over 230 assets spread across the following areas: Healthcare, Data Management and Security which is already attracting a lot of interest. And just this week, after curating the portfolio for several months, we released to market a fairly large and very lightly encumbered portfolio from lighting leader ams-Osram. If you would like to review any of these opportunities, please email us at info@tangibleip.biz.
We also have several other portfolios for sale that offer great opportunities to savvy buyers. All of our patents for sale are listed here. Similarly, if you’d like to be added on our distribution list in the future so that you are the first to receive new opportunities, please email us at info@tangibleip.biz.
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Featured Portfolio
Tangible IP is pleased to represent global technology leader, ams-OSRAM, in the divestiture of a subset of their vast patent portfolio. The assets on offer include 360 patents across 100 families, spanning 3 distinct technology areas. Lot A – Smart Lighting and Control, encompasses the use of sensors to detect, sense and track various parameters to serve certain functions such as lighting control, energy efficiency, navigation, etc. Lot B – Visible Light Communication, covers communication techniques that use visible light and inventions related to light-based communication using optical Fiber. Lot C – Wireless Communication, showcases inventions related to radio frequency communication and data transfer.
Outreach will commence early next week so please reach out to us at info@angibleip.biz if you are interested in reviewing this portfolio.
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Recent News:
Goodbye US Courts
I have discussed on numerous occasions how the weakening of the US patent system has gradually moved the epicenter of global patent battles to other more predictable jurisdictions. While we are now accustomed to seeing these lawsuits filed in Germany or with the UPC directly, other countries are also emerging as strategic bases for asserting patents. The latest example of this phenomenon was on clear display when Sun Patent Trust sued Chinese manufacturer Xiaomi both in France and India to seek proper remedy of the alleged infringement of some of its Standard Essential Patents (SEP). This would have been impossible to fathom just a few years ago; but here we are. You can’t kill a court system by a thousand cuts and expect people to keep using it…
Amazon’s APEX Patent Arbitration Process
As the saying goes, no good deed goes unpunished. Under pressure to fight counterfeit products on its online platform and those accused of violating third party patents, Amazon created its APEX program. This program is sort of an intra mural arbitration process where someone claiming its patents were being infringed upon by an article sold on the Amazon website could, for a $4000 fee, file a complaint and be bound by the final decision of the patent specialist retained by Amazon. While the cost is extremely reasonable compared to the alternative, there is no appeal if you don’t like the decision. But the process has the merit of providing an offramp to the small inventors who simply do not have the resources to take serial infringers to court.
Lately though, one unintended consequence of this private remedy showed its ugly head when the Federal Circuit ruled that using Amazon’s APEX patent enforcement process to target an alleged infringer’s listings can subject the patent owner to personal jurisdiction in the accused infringer’s home state, as it purposefully directs enforcement activities impacting the seller there. This indirectly provides a way for an alleged infringer to bring a preemptive challenge to the patents before the courts, and on its own turf! However, this is exactly what the APEX program was trying to avoid. The logical next move, in my opinion, would be for Amazon to require anyone selling on its platform to agree to subject themselves to the exclusive jurisdiction of the APEX program so that they can’t have standing to sue in court. Once again, we are left trying to fix a mess that the Courts created where none existed before…
IPR Losers Don’t Have to Pay
Since the US Supreme Court decision a few years ago in the Octane Fitness case, the prevailing party in a patent case can ask the court to force the losing party to pay the entirety of its legal fees, which can often amount to millions of dollars after a full trial. The court will grant such a request only in “exceptional cases”, which the courts have interpretated many ways. Needless to say, this has had a chilling effect on some small plaintiffs who can only sue with a contingency arrangement and who do not have the resources to face any payment to the other side should they lose a case.
As a result, defendants in patent cases have systematically used this tactic aggressively to deter more lawsuits, with a certain degree of success. One defendant recently tried to extend the rationale in Octane to Inter Partes Reviews before the PTAB in the case of Dragon IP vs. Dish Network. The irony is that such a request came from Dish itself, the party challenging the validity of a given patent which, it is worth reminding, benefits from a legal presumption of validity. After it succeeded (which is no big feat since the PTAB invalidates more than 75% of patents is reviews), Dish asked the court to award its legal fees on the basis arguably that the patent should never have been issued in the first place or its validity defended by is owner. Fortunately, this rather twisted view of loser/payer did not sway the Federal Circuit which ruled that such doctrine did not apply to IPRs.
UPC and Security Interest (Bond)
Recently, the Unitary patent Court issued two interesting decisions, both having to do with the payment of a bond after issuance of a preliminary injunction to guarantee payment to the other party should it succeed in lifting such injunction later on. First, UPC’s Paris local division ordered the U.S.-based plaintiff ICPillar to provide security for potential reimbursement of litigation costs to the defendant Arm. The Paris court found ICPillar’s assets were unclear. Importantly, the Paris court rejected ICPillar’s proposal to use a U.S. insurance policy or bank guarantee, requiring instead a guarantee from an EU bank. This highlights that while the UPC aims to avoid discrimination against foreign parties, there are still procedural requirements that can make it more challenging for U.S. entities to enforce patents at the UPC compared to EU-based plaintiffs.
In the other case, the UPC’s Munich local division denied requests by Volkswagen, Audi and Texas Instruments to require U.S.-based plaintiff Network System Technologies to post security for potential reimbursement of litigation costs. The court said defendants must show a clear bankruptcy risk to justify such orders, not just argue the plaintiff is small and foreign. Network’s valuable patent portfolio acquired from Philips gave comfort on recovering costs. If upheld on appeal, this pro-access to justice stance favors smaller entities and litigation funders enforcing patents at the UPC against larger companies.
Injunctions in the US Are Not the Problem
Talking about injunctions, a recent US study established that, Contrary to claims of excessive patent litigation, a new report shows patent cases are declining and patent owners struggle to enforce rights against infringers. Key findings: overall patent suits are down, injunctions granted are very low – averaging just 7 per year recently, and litigation by non-practicing entities is not pervasive at only 23% of remedies awarded. The real issue highlighted is the inability of patent owners to effectively stop infringement due to challenges obtaining injunctions and enhanced damages, incentivizing “predatory infringement.”
Germany Still Bifurcates Cases
When the German parliament adopted new rules for better synching patent infringement and validity trials, many thought this would signal an end to the lauded “bifurcation” that allows the German Courts to adjudicate on infringement (and issue injunctions) before it even looks at the validity challenges to the patent at stake. However, the latest Munich standard-essential patent injunction shows the failure of Germany’s 2021 patent law “reform.” The case against TP-Link proceeded without awaiting a preliminary validity opinion from the Federal Patent Court, despite a supposed six-month target for such opinions. The statutory language using “soll” (should) rather than mandatory wording enabled this failure to prevent the “injunction gap” the reform aimed to address. For those supporting the new law, this highlights the need for better expert advice in policymaking to avoid ineffective half-measures when substantive changes like revising injunction standards are needed.
Are Design Patents Also on the Block?
In a recent decision (LKQ Corp. v. GM Global Tech. Operations LLC.), the Federal Circuit’s decision replaced the rigid Rosen-Durling test for assessing design patent obviousness with a more flexible standard. This change may lead to more challenges against design patents, questioning their validity and potentially benefiting competitors. However, it also risks weakening the protection design patents offer to brands. The new approach aligns with the Supreme Court’s test for utility patents and will evolve through future cases. At the same time, it will embolden challengers to call into question the validity of many issued design patents.
And the Award Goes To…
As our readers know, one of our criteria for assessing the health of the patent market is tied to large verdict awards that tend to make the headlines and grad the attention in the boardrooms. The last month provided its fair share of those, which should help long term in maintaining if not increasing patent valuations.
In the semiconductor space, Netlist scored a massive $445 million win against Micron Technology for willfully infringing memory module patents. This follows Netlist previously securing over $300 million from Samsung for violating its AI computing memory patents. As a smaller player, these awards validate Netlist’s IP and provide a lucrative revenue stream.
The pharmaceutical industry also sees patent disputes, with Pfizer winning $107.5 million after an AstraZeneca cancer drug infringed patents covering methods used in Pfizer’s treatment Nerlynx. While smaller than tech cases, any violation can severely impact drugmakers’ costly research investments.
In the tech world, Microsoft was stunned by a $242 million verdict for infringing a voice assistant patent now owned by Wi-LAN’s subsidiary after acquiring it from the company Apple bought to create Siri. And video game titan Activision Blizzard also faces a $23.4 million judgment for violating broadcasting patents in titles like World of Warcraft.
The defendants have denied wrongdoing and can pursue appeals, but potentially owe massive payouts. Plaintiffs often view litigation as a vital revenue source for their patents. While critics argue patents stifle innovation, these rulings show businesses must fiercely protect proprietary breakthroughs. In sectors where the next big idea is worth billions, guarding IP is as crucial as developing it. The heated courtroom clashes over intellectual property seem poised to intensify.
On a related note, after reaching settlements with Apple, Broadcom, Microsoft and Samsung, the California Institute of Technology finally ended its campaign by entering into a settlement with Dell. No financial information has been disclosed so far.
For those of you who have made it so far, you deserve to be rewarded with a little joke that I heard last week at a patent related conference:
Q: Why did the patent application have to go into therapy?
A: Because it was always afraid of being rejected
If you have a better one, please send it to me. I’ll publish the best one next time with full attribution (unless the author wants to remain anonymous).
On this, to next month!