After attending and speaking at the latest IP Watchdog Live 2023 in Dulles, our team is back at work and closing on several transactions. True to form, the pace generally accelerates in Q4. While we continue to see significant interest from buyers in the new portfolios we bring to market, the current legal environment adds additional hurdles for those seeking the “perfect patent” and the last month has seen its share of both good and bad news for patent owners. We go through some of the most salient “tricks” and “treats” below…
This week, I break a bit with tradition and will forego the usual commentary at the end of this column as I realize there is just too much news in the past 4 weeks to report on and I want to keep the length manageable. So, in this installment, you will be catching up on the exciting IP world in small bites.
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
We would like to share that our CEO has been named for the 12th consecutive year as one of the world’s leading IP strategists by IAM magazine. Our VP Brokerage, Erika Warner also made this prestigious list for the first – and certainly not the last – time. Full details here.
We are pleased to announce that Tangible IP has been retained by a well-respected Fortune 50 company as the exclusive broker to monetize their large portfolio of healthcare patents. The portfolio spans multiple technology sectors including AI and Telehealth, Biometrics and IoT, Data Processing, Diagnostics, Genomics, Imaging and Record Management and Privacy and Security. We will be curating this vast portfolio for marketing in the next couple of months but please reach out directly to Erika Warner at firstname.lastname@example.org for additional information or to be added to the outreach list when the portfolio is finalized.
This is in addition to finalizing the marketing documents for the sale of a large portfolio owned by German leader ams-Osram in the smart lighting space with approximately 350 assets and relatively few encumbrances. Again, if you’d like to receive this portfolio when ready, please email us at email@example.com.
We are also pleased to announce the recent sale of a portfolio in the air filtering sensor technology space. Formal announcement to follow. We should also be able to announce soon the successful sale of a portfolio in the data storage space as well.
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.
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:
- Video compression SEPs and/or video streaming
- Block Chain related assets
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 email@example.com with any assets that may match these requests.
Why Startups Should Care About IP
We often hear startup executives, or their investors, challenge the view that IP protection is highly irrelevant. It is true that if you look at the situation in the US only, this has become a legitimate question to ask. Indeed, why pay for protection that no one will let you enforce? In Europe however, things are different. A recent study done by the European Patent Office shows that startups applying for patents and/or trademarks during their initial seed or early growth stages are up to 10.2 times more likely to secure funding from investors. What’s more, the ownership of European patents and EU trademarks is associated with an even higher advantage, with a rate of securing early-stage funding exceeding five times that of those with only national intellectual property rights.
I referred in our last column to the head scratching behavior of Blackberry who refuses to pay the advisory firm who assisted in the sale of its patent portfolio, and which forced Tech+IP to sue them for payment. BlackBerry recently filed its response to the complaint and is essentially saying that the representation agreement with Tech+ IP was never formally renewed after its expiration, despite engaging with the firm for months and letting them take an active role in the transaction. We will see if this makes it to trial. In the meantime, BlackBerry has announced that it will split into two different companies. Maybe one of them will pick up the bill…
The UPC Strikes Again
I have commented in my last two columns about the early fits and starts of the new Unitary Patent Court (UPC) and that it was finally picking up steam recently with large players bringing their complaints before one of its divisions. It was only a matter of time before we saw the real litmus test for this new tribunal, i.e., the issuance of injunctions against infringers. The Rubicon was crossed a few weeks ago when the Local Division in Munich granted its first provisional injunction against NanoString, which is now prohibited from selling its infringing products in 17 European countries. The fact that the plaintiff here (10x Genomics) is a US-based company who took its case to Europe is Exhibit No. 1 to the fact that the patent epicenter has now shifted to Europe. Others have pointed to an even earlier decision to the same effect issued in June, but which did not get as much publicity.
Tug of War in Europe Over SEP Patents
Ever since the European commission published its proposed regulation for dealing with standard essential patents (SEP), criticism has only mounted. SEP holders, IP experts, and the USPTO director have raised alarm bells over the risk to the West’s technology leadership, while the head of the UPC member states, and research organizations have proposed more scrutiny, questioning the need for regulation as well as its lack of proportionality. Just days ago, the EPO predicant wrote a letter to the chair and vice-chair of the European Parliament’s legal affairs committee, António Campinos, revealing there has been no Commission consultation with the office, while warning of additional burdens and greater legal insecurity if the proposed rules come into effect. Meanwhile, legislators are rushing to pass it into law in Q1 of 2024. The stakes are very high; large SEP owners like Nokia, Ericsson and Huawei want to make sure royalty calculations are done according to established practice while implementers (e.g., BigTech) are lobbying hard to keep these costs as low as possible so that it remains cheaper to copy than to innovate. This debate reflects the very essence of a very core philosophical battle between two very well-funded camps that will likely dictate the future of standards in our economy. On this point, the Council of Canadian Innovators published an excellent piece reminding us of the many benefits of standards that we often take for granted and IAM has one explaining the history of SEP regulation since the creation of ETSI in Europe.
Nokia Licensing Revenues Down
The recent win by Nokia against Chinese handset maker Oppo, which I covered in my last column, did not save the Finnish company from posting disappointing licensing revenues in its last quarter, with a drop of 14% year-on-year as global litigation continues and external pressures mount. Nokia also announced the layoff of 14000 employees worldwide, mainly due to a very weak demand (down 40% in the US).
US Patent Legislation Update
Last June, US Senators Coons (Dem) and Tillis (Rep) refiled the Patent Eligibility Restoration Act (PERA) in a bipartisan move aimed at bypassing all the jurisprudence laid by the US Supreme Court since Mayo/Alice and bringing an end to the uncertainty this has created over what exactly qualifies as patentable subject matter under the Patent Act (s. 101 & 112). Not much has occurred since then and we have witnessed the usual pundits expressing their views in support of or against the proposed legislation. Last month, John Lee, Chief Counsel for Intellectual Property for the U.S. House of Representatives, Committee on the Judiciary, told those who are skeptical of the chances for Senators’ Tillis and Coons’ PERA to move forward that a House version of the bill is likely to be introduced in the near future. Of course, this was right before the House became Speaker-less. However, now that it has elected a new speaker, it will be interesting to see which bills come to the floor for a vote. And while PERA is certainly not as sexy as investigating Hunter Biden, it has the merits of being largely bipartisan and maybe be a low hanging fruit for a House majority that has a lot of backpedaling to do in order to convince US voters that it deserves to govern. We shall see…
In parallel, the Promoting and Respecting Economically Vital American Innovation Leadership Act (PREVAIL) Act of 2023, already has a House version of which would significantly overhaul Patent Trial and Appeal Board (PTAB) practices. However, Lee said the bill is still in the early stages and he doesn’t expect too much action on it anytime soon.
And the Verdict Is
One of the 5 factors I track closely pertains to patent verdicts, as they are a good barometer of how healthy the patent enforcement system works. In Q3, 17 patent verdicts were reported and roughly 60% of those favored patent owners. One that stood out was the $339 million verdict US-based Touchstream technologies won against Google. However, despite these results, patent lawsuits in the US are projected to be down by 14% this year compared to 2022. This results in part from a significant decrease in new filings from serial litigant IP Edge and, to some degree, from Cedar Lane. Western and Eastern Districts of Texas are still the 2 most popular venues for plaintiffs with close to 1000 cases filed so far this year. The district of Delaware comes as a distant third.
It is rare that we see traditional NPEs and operating companies join forces. Yet, it happened twice this past month alone. First, Chinese behemoth, Huawei joined Sisvel’s cellular IoT patent pool in late September. The agreement reinforces the relationship the pair have already established and is another demonstration of the power of such programs to offer transaction efficiency, as well as pricing transparency. This makes the Chinese telecommunication company one of 25 manufacturers to join since the pool launched in 2022. Huawei is also part of Sisvel’s Wi-Fi 6 pool.
And just a few days ago, InterDigital and Sony’s joint venture Convida Wireless, announced that it will be headed by our good friend Matteo Sabattini and that it will now license its M2M connectivity technologies to cloud and edge services companies and telco providers for their IoT platforms.