Hello and a very Happy New Year to each of you. Our well wishes would come a bit belatedly if you are reading this in the Western hemisphere, and definitely a bit prematurely if you are in Asia. Either way, it is time to reflect upon 2022 and take stock of the current environment within this mysterious, albeit dynamic construct, we call the IP marketplace. Before we do though, I want to thank all of you who routinely share comments in writing or at conferences that you overall enjoy this column, first because it does not come too often… and second because it allows you to rapidly see the forest from the trees and understand where the arrows are pointing. I take this all to heart and it gives me this renewed incentive to keep on reading, talking to esteemed colleagues, reflecting and writing about this exciting world that is constantly trying to align innovation with market forces.
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.
Here is to a great 2023!
Tangible IP News
Both Erika Warner, our VP Brokerage, and I participated at the 9th edition of IP Dealmakers early December in New York City, which was quite well attended and had great content as usual. We returned with a renewed sense that although the environment remains very challenging when it comes to monetizing IP assets, the market has found a state of equilibrium. What I mean is there are enough large players on both sides of the equation that it is no longer the perennial David vs. Goliath battle that historically has left innovators – especially smaller ones – in the dust. Having said that, there is no easy money for those trying to monetize patents and only the best assets and the most reasonable people end up with a winning track record.
On the personnel front and in order to provide better support to our various clients needing assistance with outbound licensing programs, I am pleased to announce that Steve Pomraning has joined our team as our new VP Licensing. Steve has over 25 years of experience in creating and managing IP licensing programs at respected companies such as AT&T and Bell Labs, Lucent, Agere, etc. and with large licensing entities such as IP Value, Interdigital and Intellectual Ventures. Steve earned a Bachelor of Science degree in Metallurgical Engineering/Materials Science and Economics from Carnegie Mellon University, and an MBA from Lehigh University. His addition to our team further extends our capacity to service our clients who need expertise and support with their licensing activities. We have also extended our technical depth with additional resources.
On the deal front, we are pleased to announce that we have successfully represented the buyer in the acquisition of a patent portfolio owned by a large pharmaceutical company. The full announcement is forthcoming. We also closed on several voluntary licenses in December under our PRELIT ™ program.
Finally, Tangible IP was retained for the second consecutive year by the Allied Security Trust (AST) consortium representing about 50 of the largest companies in the world as its exclusive patent broker to monetize the portfolio it acquired through its 2021 IP3 Program.
In terms of new assets for sale, we recently made available for sale and/or licensing a portfolio in the HVAC area with strong relevant to several industry players.
We still have the following portfolios for sale:
High Frequency Trading owned by SpectraNet
Digital Content, Storage and Protection owned by Digital Keystone
Floating Shutter Camera Technology owned by RollCall
For more details, please email us at firstname.lastname@example.org. 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 email@example.com.
Calling for high quality portfolios!
While the 2023 pipeline is filling fast, we have space for a few additional portfolios and remain open to considering a variety of technology sectors. You can review our criteria here but if you own a patent portfolio with at least two issued US patents and have knowledge of others using your technology (infringement), we are happy to review for potential brokerage. We will also look at larger portfolios where evidence of use is uncertain.
Some of the areas of particular interest include:
- Medical device technology – wearables and IOT health monitoring also of interest.
- Autonomous driving systems
- Hardware such as cameras and displays
- Streaming media
- Semiconductors – manufacturing, processing, packaging
- Hearing Aid- Related technology
We also have a buyer with interest in acquiring battery-related assets – specifically rechargeable assets applicable to either (or both) consumer devices and electric vehicles.
Please reach out to Erika Warner with any assets that may match this request at firstname.lastname@example.org.
The Year In Review
A year ago, to this day, I wrote a column with 5 predictions for 2022, followed shortly thereafter by another set of 5 more. First, here are the initial ones.
- Kathi Vidal will be the new USPTO Director.
- The US Department of Justice (DOJ) will revise its Standard Essential Patents (SEP) policy.
- The US Supreme Court will confuse everyone, again.
- Judge Albright will continue to lose control over cases in the Western District of Texas.
- The ITC will become the forum of choice for large patent cases
In July 2022 (“Kicking the Can”), I revisited these first 5 predictions and, at the time, I was tracking quite nicely. As a refresher my notes are as follows: “On these 5, I am pretty much batting for 1000% so far. Vidal was confirmed a few months ago despite some real grassroot campaigning from the Inventors’ lobby. The DOJ did back off on its proposed policy earlier this year. SCOTUS just left us as confused as we were before by declining to hear the American Axel case. Judge Albright is definitely having the hardest time keeping his cases in the Western District of Texas, with defendants successfully transferring cases to friendlier districts for them, including Apple who somehow convinced the Federal Circuit that having tens of thousands of employees in Austin does not create enough of a nexus to be sued there… Finally, ITC cases are on the rise, but only for the high risk / high reward cases, given the astronomical costs that are required to sustain a complaint there. On that last one, it also seems that some cases that could have been brought before the ITC are rather asserted in Europe where the courts can readily issue an injunction AND adjudicate on damages, which the ITC cannot.”
If we bring this to current I will simply add that Director Vidal, who has been quite adept at using social media to bolster her inclusiveness and diversity message, seems to be more receptive to big tech arguments (especially in dealing with serial IPRs) than those of the innovation proponents, and the change we have witnessed under her tenure, although not spectacular in itself, has been trending toward an additional erosion of patent rights in the US. We had predicted before her appointment that this was likely to occur considering whom she represented in the past, that she succeeded Director Iancu who was a very strong proponent of patent rights, and that a certain return of the pendulum was almost inevitable under a Democrat led White House.
A few months ago, we also discussed how Texas Judge Alan Albright’s ability to hear patent cases was literally highjacked by his chief judge Garcia, who himself responded to pressure from Chief Justice Roberts of the Supreme Court, who himself caved under the pressure of two US Senators sending him a letter complaining that one of the most competent patent judge in the country, a former patent litigator himself (which is a very rare breed on the bench) was hearing too many… patent cases. The irony in all that is that several judges, in the same Western district of Texas who were forced to take on patent cases they have no interest in hearing, are finding ways to send them back to Judge Albright. Furthemore, many cases that Albright had started to hear are grandfathered to him when other cases involving similar facts or parties are filed, to a point where the impact of this imposed rotation has actually been a lot less severe than anticipated. See RPX’s report on this very point. Finally, with a new chief Judge replacing Judge Garcia, it will be interesting to see if this rotation of patent cases between all 12 judges in the western District of Texas will endure.
Which brings us to our last 5 predictions from a year ago.
- US patent litigation will continue to increase
- Germany will do away with easy injunctions
- The Unified Patent Court in Europe will finally get going
- China will stop any pretense of a neutral forum
- A new pro patent lobby will emerge in the US
6. According to a recent RPX report tracking each case filed in the year, the cases filed in 2022 have remained steady over the previous year, at least from NPEs, whereas there was a small dip in new filings by operating companies. See table below.
So not batting this one out of the park as far as predictions go, but not a strikeout either.
7. Regarding Germany, we commented in a previous column that the German Parliament passed legislation in August 2021 approving a change in Section 139 of the German Patent Act codifying the principle of “proportionality and the interest of both parties must be considered when granting an injunction”. Additionally, the German courts were working to better align the time elapsing between a decision on infringement and that on the patent validity, which under German law are bifurcated. As of today, the injunction in Germany is still alive and kicking, and although the two changes listed above are still gaining ground, they have not yet affected the practice, thus keeping Germany a forum of choice for litigation. All you need are German patents, of course! So, perhaps a strikeout on this one, but I’m happy to be wrong when it comes to nurturing a better environment for patent owners.
8. Ah, the UPC! This has been like the second coming of Jesus for so long. Every single conference I have attended in the past two years has featured a large component of speakers sharing their best practices when dealing with the Unified Patent Court. Yes, as of this day, it still hasn’t started. Almost monthly, we learned the official start of this new court had been delayed a little further…. One month here, a couple months there. At this pace, all of Europe will be on summer vacations and we will still be waiting… While no one doubts that this new court is indeed going to be in place soon, the actual start date (was March 2023 and now June 2023) is anyone’s guess. The real question is how many people will use it versus opting out? Only time will tell. In the meantime, I am also off on this prediction. Thank you, Europe, for procrastinating again!
9. Now on to China. Although there are very few published decisions to base my conclusions on, suffice it to say that when we talk to buyers and litigators (which we do every day at Tangible IP), we don’t hear that Chinese patents are in the same high demand that they were only a couple of years ago. One contributing factor is that despite a change in the law allowing much larger damages awards, the Chinese specialized courts have not followed suit. But I also hear regularly that you do not really want to sue for patent infringement in China if the defendant is a Chinese company. For me, that says it all. So, I am giving myself a solid lap around the bases for this prediction.
10. Last but not least, we have definitely seen a resurgence in the pro patent/inventors narrative in the US, primarily driven by the US Inventor group (not to be confused with the US Inventors Association). They have done yeomen’s work bringing attention to inventor rights to Congress. What they lack in lobbying budget they more than compensate for with grit and persistence. Just a couple of weeks ago, they successfully led a PR blitz to defeat the infamous Pride in Patent Ownership Act that was going to get stapled to the omnibus bill Congress passed before their year end recess. Now they are on a crusade to prevent Congressman Darrell Issa from becoming the Chairman of the influential House IP subcommittee, based on his track record of “having offered one-sided legislation against patent rights and having been among the driving forces that gutted U.S. patent rights.” You have to give it to these guys; they have reenergized the inventors’ community and have scored some wins that prove that once you share the flip side of the coin, some lawmakers are not so inclined to simply take their cues from BigTech. So, I end with a bang on this one.
All in all, and for those keeping track at home, I got 7 right out of 10, 2 wrong and 1 we will call a draw. So not so bad for dusting off the old crystal ball. For 2023 though, I am set on improving that record. And to help my cause a bit, I have decided to stick to only 5 predictions this time, which I will discuss in our next column! Stay tuned…