I hope everyone is enjoying the first weeks of summer, despite the heat domes, the smoke from forest fires and other natural calamities that seem to have accelerated. The first few days of July were officially declared the hottest days on planet Earth ever recorded. It always fascinates me that we are talking about colonizing Mars and making it livable for humans while we are slowly turning Earth into Mars. We are indeed a strange species; no wonder AI might want to go after us one day… (Speaking of which, our last column regarding the pros and cons that Chat GPT offered with respect to a strong patent system elicited several comments. If you haven’t read it, this was a fun one.)
In any event, this new record of our inexorable warming is not a very encouraging milestone if you ask me. This is why it is so important to continue making progress on new clean technologies and energy sources and only a solid legal environment for innovators will provide the proper incentives for this to happen.
In this regard, finally some encouraging movement in the US congress as politicians have now concluded that fixing the 101 mess (patentable subject matter aka Alice) will have to come from an Act of Congress. I will discuss this later and comment on some other recent developments.
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.
Tangible IP News
Our VP of Brokerage Erika Warner and I had several interesting meetings and discussions with leaders in the IP Community in San Diego a few weeks ago. Unfortunately, we could not talk to everyone we wanted. If you missed us, please send me an email at email@example.com and we’ll arrange for a video conference call in the next few weeks.
On June 9th, we announced the sale of multiple lots of AST patents stemming from the IP3 2021 program. The timing was perfect as we will be exclusively offering for sale or license the IP3 2022 patent portfolio in just a few weeks. These assets were acquired for a reported sum of over US $3 million and have direct relevance to many industries. More on this to come.
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 firstname.lastname@example.org.
Featured Portfolio For Sale
Given our audience, we felt it prudent to start sharing a few particularly interesting portfolios available for sale. This issue, we will focus on the four remaining LOTS of the prestigious Korean University (SKKU) that recently hit the market. Sungkyunkwan University (SKKU) is a world-class institution of higher education and a private comprehensive research university in South Korea ranked as one of the top 100 universities worldwide in the 2023 QS World University rankings, with very high marks for its research. The technologies of the portfolio include the following:
- Semiconductor (Flip Chip)
- IoT & Smart Home
- Facial Recognition
- Auto & Mobility
Evidence of use is available for each lot. Please reach out to Erika Warner our VP, Brokerage Services at email@example.com for more information.
Call for high quality portfolios!
We are always open to reviewing high quality portfolios. Some of the areas of most interest to our buying network right now include:
- Automotive (ADAS and other safety related technologies)
Medical Device technology – particularly wearables and IOT health monitoring
- Patents applicable to RFID tags, RFID Antennas, RFID readers and Near Field Communication (NFC) devices.
- SEPs (Declared or not) relevant to any of the following: 3GPP, 802.11, LTE, 5G
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.
Please reach out to firstname.lastname@example.org with any assets that may match these requests.
The Jury Is Still Out
Despite how difficult it is for a patent owner to bring a case all the way to trial, given all the motions and parallel challenges defendants can throw at them, there were no fewer than 25 jury verdicts in US patent cases in the span of 3 months ending in June, including a US $303M award against Samsung. As usual, I would caution against thinking this verdict is final, as it rarely is. This hasn’t prevented Samsung from launching its own patent assertion claim against Chinese competitor BOE alleging its rival of infringing five of its patents for displays used in mobile devices including Apple’s iPhone 12. BOE and others are teaming up to invalidate these patents before the PTAB.
Still, this is an interesting maneuver from Samsung as it could as well have sued Apple directly. But the patent truce that followed years of fierce battles in court between the two behemoths seems to be holding. Meanwhile, Samsung has finally dethroned mighty IBM from its quasi-permanent pedestal as the US most prolific patentee. In 2022, it received 6248 patents against IBM’s 4398. The king is dead; long live the king!
On the other end of the spectrum, Intel was able to convince the court to set aside a gigantic US $1.5B verdict it was facing against longtime foe VLSI. This case illustrates well the dichotomy and conflicting decisions when both the court and the PTAB look at the same patent in parallel.
The US Supreme Court had a few patent-related cases on its docket, which it handled before going on recess by making them disappear magically. In other words, they declined to hear them.
One involving Cal Tech versus Apple/Broadcom had to do with broadening the IPR estoppel to avoid gaming the system by parties filing serial challenges to the same patent. Punting the issue here was frankly the right call, as the Federal Circuit decision had finally put some limits to abuses by companies using the PTAB like a an open bar on a Saturday night.
A few weeks earlier, the Supremes also turned away, for what must be the 25th time, a patent dispute between labeling company Avery Dennison and ADASA pertaining to the perennial 101 issue that would have given it a chance to clarify a standard that critics have said has sown confusion about what inventions can be legally protected and led to cancellations of valid patents. Which explains what happened on the hill in the recent days.
Alice in Neverland?
We have all heard the running joke that the US Congress excels at doing… nothing, and the fate of all patent-related legislation in the past decade is a true testament to this saying. But there could be hope, at least for the optimistic ones among us. A few days after the SCOTUS decision in Avery Dennison, US Senators Coons (D) and Tillis (R) teamed up again like in the good old days (i.e., before Patrick Leahy took over the chair of the Committee) and filed not one, but two substantive bills aimed at restoring the long-gone balance between patentees and implementers.
The first one, and most significant, is the Patent Eligibility Restoration Act of 2023. If it becomes law, it will essentially eliminate all judicially created exceptions to U.S. patent eligibility law. In other words, gone would be the Alice doctrine and its progeny which is the source for so many invalidated patents. The bill’s text states the following statutory exceptions to eligibility:
(D) The following inventions shall not be eligible for patent protection:
(i) A mathematical formula that is not part of an invention that is in a category described in subparagraph (B).
(ii) A mental process performed solely in the mind of a human being
(iii) An unmodified human gene, as that gene exists in the human body.
(iv) An unmodified natural material, as that material exists in nature.
(v) A process that is substantially economic, financial, business, social, cultural, or artistic.
Normally, I would predict a similar fate for this Bill as all its predecessors. However, as astute politicians, Coons and Tillis are pitching it as a way to fight China and reinforce the US patent system to better compete against the Asian giant. This makes the counter narrative (and lobbying dollars) from Big Tech much less effective as they do not want to be labeled as Pro-China.
On the same day, the same two senators, joined by senator Durbin and Hirono (both Democrats) also filed the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act. This one is attacking the second weak link in the chain from the owners’ standpoint, by reforming the PTAB, another major source of invalidation of patents (roughly 75% of all patents challenged).
Key provisions in the bill would:
- Require standing for PTAB challengers—specifically, that they must have been sued or threatened with a patent infringement lawsuit before filing a PTAB challenge—and limit multiple petitions against the same patent by “prohibiting any entity financially contributing to a PTAB challenge from bringing its own challenge”;
- Do away with joinder for time-barred parties;
- Apply estoppel at the time the challenge is filed rather than after the Final Written Decision;
- Institute a “clear and convincing evidence” standard for patent invalidity at the PTAB and require claims be interpreted using the “plain and ordinary meaning” standard used in district courts;
- Require the Director to establish a Code of Conduct for PTAB judges and would demand more transparency of the USPTO Director with respect to their involvement in PTAB decisions;
- Require parties to choose whether to bring their action at the PTAB or in district court, but not both, in an effort to end duplicative proceedings;
- End the practice of filing reexaminations following failed PTAB petitions;
- End fee diversion; and
- Mandate reports that would evaluate “the impact of patents and abusive demand letters on small businesses” and expand access to patent-searching databases that are available only in-person at public search facilities.
If this Bill comes to pass, it will provide for a major overhaul, needless to say. This is not that uncommon after a decade long experiment where the PTAB has been maligned by so many for not fulfilling its promises of providing a “cheap and quick way to get rid of bad patents.”
With both bills, one must now watch how those who benefit from the status quo will react and whether lobbying money will trump everything else, as it so often does, when we enter an election year in 2024.