Hello all,
It has been quite exciting to see things pick up in the last month, despite so many people being out of the office. We sense a real shift of momentum in the patent market after a rather sluggish half year. Time to make up for lost time!
In this column, we cover several interesting stories in the US and abroad, legislative traction in the US, new large patent awards, some emerging models such as mediation for SEP, patent pools and what a President Harris would mean for IP right holders.
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
__________________
Tangible IP News
We are pleased to share that our CEO Louis Carbonneau and our Sr. VP Brokerage, Erika Warner, have been named once again by IAM Magazine as among the best worldwide IP Strategists. For Mr. Carbonneau, it is the 13th consecutive recognition by his peers while it is the second year in a row for Mrs. Warner. More details here.
We just sent to market a very interesting portfolio that pertains to digital content analysis. It boasts 11 assets and no fewer than 30 separate claim charts reading on various companies that are well known to the IP community. If you want to receive a copy of the materials, please email Erika Warner at erika@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.
__________________
IP Advisory
While many of you know us for our brokerage services, our expertise also extends to our vibrant IP Advisory practice. We are routinely retained by Fortune 500s, SMEs, startups, and investors for strategic intellectual property guidance.
In this capacity, we recently conducted a series of FTOs for clients in the Automotive, Biotech, HVAC and Recycling technology domains. The Freedom to Operate (FTO) analysis is a critical building block in the formation of a strong IP Strategy. The FTO analysis compares your actual or planned product or service to existing and pending patents in the same field. These can encompass a detailed review and analysis of hundreds of relevant patents that could hinder your ability to launch or pursue the sale of a product. We normally recommend conducting such a study when designing a new product or when a company is fund raising, as investors want their dollars spent on what is going to help grow the business rather than on defending a patent lawsuit. Each project is led by our team of seasoned technical experts and IP attorneys. Please visit our website for a full list of IP Advisory Services as well as testimonials from satisfied clients. To set up a consultation to discuss ways in which Tangible IP could assist with your IP Strategy, please reach out to info@tangibleip.biz.
__________________
Recent News:
Restore Act
In previous columns I’ve written about the latest IP bill brought on the floor of Congress, aptly named the RESTORE Act. By the way, I believe each of the 8 outstanding patent related bills on the hill written in the past 5 years is a clever acronym suggesting the desired result! The RESTORE Act is no exception and stands for Realizing Engineering, Science, and Technology Opportunities by Restoring Exclusive (RESTORE) Patent Rights Act of 2024. What a mouthful! It was formerly introduced on July 30th by U.S. Senators Chris Coons (D-Del.) and Tom Cotton (R-Ark.) The House companion bill was introduced simultaneously by Representatives Nathaniel Moran (R-Texas) and Madeleine Dean (D-Pa.). It is thus a rare bipartisan, bicameral bill that would restore the presumption that courts will issue an injunction to stop patent infringers, strengthening protections for U.S. inventors, entrepreneurs, universities, and startups. In short, it aims at abrogating the Supreme Court decision in eBay that pretty much eliminated injunctions for patent cases, thus removing most of the leverage patent owners once yielded against infringers. The proposed bill has garnered some visibility after authors have expressed support in unusual tribunes such as The Hill and the Financial Times, of all places.
I have become quite cynical of patent bills ever coming into law and I am inclined to give this one the same long odds as its many predecessors. At the same time, few of those bills have been introduced in both chambers. One must wonder if perhaps, in an election year where some Senators and Congressmen/women look to prove to their electors why they were sent to Washington in the first place, we might see a little miracle. Big Tech has been fiercely lobbying to protect the status quo but if it passes, this would be the biggest game changer since the creation of the PTAB a decade ago. In the meantime, kudos to the US inventors lobby who successfully advocated their case to Congress against all odds. In the meantime, if one wants an injunction in a patent case, it can always go to …Brazil!
Rare Suits
While we are accustomed to seeing a constant flow of new patent assertion lawsuits from NPEs who own or have acquired patents, we recently witnessed two relatively rare events, which could be a harbinger of things to come. In one case, US online retail giant Amazon sued Nokia in Delaware federal court a few weeks ago, accusing the Finnish telecom company of infringing a dozen Amazon patents related to cloud-computing technology. This was just the 4th time since 2008 that Amazon enforced its own patents, since its infamous campaign on the “OneClick” patent. This recent case is in clear retaliation against a previous (and still pending) case where Nokia asserted its own patents against Amazon in what is often referred to as “legal tit for tat” to gain leverage in negotiations.
Even more surprising though was the case filed by large patent owner Qualcomm against Transsion in Munich before the UPC alleging infringement of patents the US chipmaker acquired from HP. We rarely see large companies that own thousands of homegrown patents assert patents they did not develop themselves. But why not? A patent is a property right (the “public franchise” label assigned to it by the US Supreme Court notwithstanding) after all and can be transacted freely with all its attributes. It will be interesting to see if this kind of acquisition for monetization purpose becomes more prevalent among large operating companies.
Does Kamala Like Patents?
Ever since she replaced President Biden at the top of the ticket, voters and pundits alike have tried to predict what Kamala Harris’ positions regarding IP in general, and patents more specifically, might be. Intellectual property has never been high on a politician platform when courting voters who care a lot more about reproductive rights and the southern border than predatory infringement and 101 issues. But we in the industry know all too well how a new administration can suddenly move the IP goal posts by taking positions that rapidly impact patent rights either way. So this is more than mere rhetorical question.
In this regard, there is a dearth of information or statements from Mrs. Harris that points to anything specific. On one end, assuming she is supportive of the Biden administration’s stance on taking on Big Pharma and flexing its march in rights when necessary, one can say that she is not shy of taking patent rights away from their owners. Recently, a video clip of Mrs. Harris went viral in which she states she has the will to authorize the U.S. government to “snatch” patents. However, the short clip was missing the broader context of Harris’s statement from a 2019 C-SPAN event in Iowa in which Harris was discussing prescription drug prices and seizing patents from private companies that were funded with taxpayer dollars.
Thus, it would be a real stretch to make that conclusion beyond the very limited scenario of making drugs more accessible, and the current administration has done just that lately by leveraging the immense procurement clout of the US Government to drive prices of common drugs like insulin down significantly, without resorting to any IP related measures. Also, the Vice President has a supportive track record on protecting trade secrets and battling piracy. So, we are left mostly with a blank canvas when it comes to Mrs. Harris and it will be interesting to see if she is asked to define her positions on these topics between now and the November elections.
SEP Mediation Anyone?
Lately, there have been numerous cases reported that involved two large technology companies battling over standard essential patents. On one side, we have the innovators who have spent years and billions in R&D to develop new technologies that the whole industry can build an ecosystem around. Think USB, Wi-Fi, 5G, etc… On the other side, you have the implementers (charitably re-casted as ”product innovators”) who have a massive channel in place to ship products worldwide and want to pay as little as possible (and nothing at all if they could have their way) to integrate these new standardized technologies into their product line. Since both sides are usually of equal stature, this ends up being a gorilla fight that is both costly and time consuming for both sides, as no one wants to lose face or accept a precedent that will have a ripple effect on future negotiations. Most of the time, the main issue revolves around how to calculate FRAND (fair, reasonable & nondiscriminatory)/royalties.
If this sounds very similar to divorce cases where the parties haggle over the amount of child support, you are not wrong. Here enters an old tool in family law that could prove useful in resolving SEP disputes: mediation.
Recently, some experts have started providing seminars to both innovators and implementers that could bring them to the negotiation table in a more constructive setting than on the doorsteps of the courthouse. You can read a fascinating article my former colleague at Microsoft and good friend Michele Herman recently wrote that shows how this format was put to test at a recent AIPLA meeting. Let’s hope this becomes a compulsory step in the near future as SEP disputes tend to suck up a huge amount of resources from the courts, clogging the judges’ dockets and contributing to longer delays before other inventors asserting their patents can get their day in court. One just wishes that Nokia and Veriphone, who recently agreed to a broad licensing deal around their payment platform, could have done so prior to the Finnish giant suing Veriphone in Germany. Hey, Rome wasn’t built in a day after all…
Noteworthy Deals
In an encouraging trend for large IP owners, several others reported new broad licensing deals and increased revenues. Among them, Adeia (formerly Experi) reported earning $87.4 million in the second quarter, and licensing highlights included agreements with Panasonic, Mitsubishi Electric and a few others. Meanwhile, Interdigital saw its revenues soar by 120% year-over-year on the strength of its 5G license with Google and Lenovo’s extra $55 million payment from the UK appellate court. Finally, US based Qualcomm announced that it had signed a license with Chinese OEM, Honor. It also has ongoing litigation against Transsion and it continues to negotiate a renewal with Huawei.
Industry Consolidation
The IP service industry is no different than any other and it has seen its share of consolidation in recent years. Just in the last couple of months, we saw two more IP forms being gobbled up by increasingly large players. First, Clarivate announced that it has acquired ROWAN TELS, the provider of Rowan Patents (fka TURBO Patents) – an integrated patent drafting and prosecution solution specially designed for patent practitioners to establish and protect patents more effectively. What is not clear from the press release is whether the anti-counterfeiting platform ROWAN has partnered on with Cisco is also part of the M&A transaction.
Separately, Rouse Consulting announced its acquisition of Konsert Strategy & IP. Rouse was established in the UK in 1990 as an IP centric consultancy shop and maintains a closely integrated network with more than 750 people working out of 17 offices in 12 jurisdictions. Based in Sweden, Konsert serves technology firms throughout Europe, Asia, and North America. Since its inception in 2006. Who is next?
Oh Canada
In its most recent federal budget, the Canadian government announced a new Patent Box measure, which I discussed in a previous column. The Canadian Chamber of Commerce recently published a very supportive op ed for the measure which is worth reading. This, coupled with several other programs (IP Assist, Elevate IP, IRAP, etc.) that aim to help innovators reduce their IP related expenditures, signals a clear will from Canada to make up for lost time and try to become an IP powerhouse mirroring some Scandinavian countries of similar size. As with any well-meaning policy, no good deed goes unpunished and the law of unintended consequences can always surprise us. Thus, it will be quite interesting to see how these combined tools for innovators play out in the longer run.
Noteworthy IP Sale
It is not every day that we see thousands of patents changing hands in one single transaction outside the broader context of a company acquisition. Yet, it happened recently when CommScope finally was able to find a home for its vast patent portfolio after trying to sell them as standalone for well over a year. However, even if this case, the patents may have taken a back seat to other considerations as the transfer was part of a $2.1 billion business deal between CommScope and Amphenol. For context, rumor has that the patents on offer were valued separately at between $25-$50M.
Patent Pools are En Vogue
It has been so difficult for small patent owners to enforce their rights individually that many have resorted to join patent pools that have the strength in numbers and can negotiate equal to equal with large implementers. Outfits like Avanci and Sisvel, to name only a few, have been quite successful with that model and have continued to create new vertical pools in parallel verticals such as IoT, video streaming, or automotive. For instance, Sisvel just announced that ACER became the 23rd licensee to its wi-fi pool. Ironically, ACER’s top IP lawyer has shared that it is itself relying on patent pools to effectuate its IP strategy instead of relying on individual licensing deals. What is good for the goose…