Tuesday, March 14, 2017

Tech Crunch - Yahoo’s 4K Excalibur patents in search, mobile, cloud and more valued at $740M

Tech Crunch reports Yahoo’s 4K Excalibur patents in search, mobile, cloud and more valued at $740M.

Yahoo's SEC 8-K has many details including the following summary:

"Patent Sale and License Agreement

During 2014, Yahoo Operating Business entered into a patent sale and license agreement for total cash consideration of $460 million. The total consideration was allocated based on the estimated relative fair value of each of the elements of the agreement: $61 million was allocated to the sale of patents (“Sold Patents”), $135 million to the license to existing patents (“Existing Patents”) and $264 million to the license of patents developed or acquired in the five years following the date Yahoo Operating Business entered into such agreement (“Capture Period Patents”).

The amounts allocated to the license of the Existing Patents are being recorded as revenue over the four-year payment period under the license when payments are due. The amounts allocated to the Capture Period Patents are being recorded as revenue over the five-year capture period.

Yahoo Operating Business recognized $86 million in revenue related to the Existing Patents and the Capture Period Patents in each of the years ended December 31, 2015 and 2016.

Patent Sale Agreements During 2015 and 2016, Yahoo Operating Business sold certain patents and recorded a gain on sale of patents of approximately $11 million and $2 million, respectively."

Copyright © 2017 Robert Moll. All rights reserved.

Thursday, March 9, 2017

IP Watchdog - Can the Supreme Court's errosion of patent rights be reversed?

Dr. Ron Katznelson's article in IP Watchdog: Can the Supreme Court's erosion of patent rights be reversed? is worth reading. Dr. Katznelson argues the Supreme Court series of patent cases in the last decade (since the eBay decision in 2006) have eroded the value of patents in the USA and predicts adding a new justice is unlikely to reverse it.

Copyright © 2017 Robert Moll. All rights reserved.

Wednesday, March 8, 2017

European Patent Office - Annual Report 2016

The European Patent Office (EPO) recently published its Annual Report 2016. The EPO highlights that overall EPO grants increased 42%, but I also found surprising that 48% of the EP applications originate from European states and only 25% of the EP application originate from USA.

Copyright © 2017 Robert Moll. All rights reserved.

Tuesday, March 7, 2017

US Supreme Court - Life Technologies v. Promega - Supplying a Single Component Abroad Doesn't Infringe US Patent Under 35 USC 271(f)(1)

In Life Technologies Corp. v. Promega Corp., the U.S. Supreme Court held supplying a single component abroad for manufacture of a product with multiple components does not infringe a U.S. patent under 35 U.S.C. 271(f)(1). This reverses the Federal Circuit decision, and disagrees with the qualitative argument that a single component can be a "substantial portion" of the components supplied resulting in infringement.

For details and an insightful analysis by Professor John Duffy see SCOTUS Blog.

Copyright © 2017 Robert Moll. All rights reserved.

Monday, March 6, 2017

CAFC - Shaw Industries Group v. Automated Creel Systems - Inter Partes Review Estoppel No Application to Grounds Denied as Redundant

In Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., the Federal Circuit held that 35 USC 315(e) estoppel does not bar an inter partes review (IPR) petitioner from later raising a ground of invalidity not instituted due to PTAB considering it redundant to other grounds in the IPR.                      
  • 35 U.S.C 315(e)(1) PROCEEDINGS BEFORE THE OFFICE.—The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
Note this reduces the scope of 35 USC 315(e) estoppel and favors patent challengers.

Copyright © 2017 Robert Moll. All rights reserved.