Professor Robin Feldman - Prolific Patent Scholar

If you follow this blog, you know I like to read and post late at night. One of my "late night discoveries" after I started blogging was Professor Robin Feldman. I had met her husband Boris Feldman, a partner WSGR, as an associate in 1993 -1998. Boris had all of our respect (despite the toys in the office) because of his brilliance in fending off opportunistic SEC claims. A typical result for Boris? Case dismissed. No discovery, just dismissed. Someone mentioning his wife was a law professor at UC Hastings, but that's all I remembered ... I was too busy.

So when I stumbled across The Giants Among Us on the rise of patent aggregators and saw one of the authors was a UC Hastings law professor Robin Feldman ... I thought wait is this Boris' wife? As I read Giants, I was stunned. It was a tour de force and gave many fresh details regarding Intellectual Ventures, a firm that has been shrouded in secrecy. The fact research was excellent. It followed she had graduated second in her class at Stanford Law school.

Tonight, when I saw UC Hastings law school had an article Robin Feldman: Shaping Patent Policy Through Scholarship noting her influential law review articles in recent years, I was not surprised. I appreciate her scholarship and hope it continues well into the future. She strikes me as someone who is relentlessly investigating and reporting on the challenges of US patent law, something we need before Congress passes "helpful" bills for the sake of the US economy. Thus, reading her articles is much a better starting point to understanding today's challenges than the agenda set forth by corporate lobbyists.

Copyright © 2013 Robert Moll. All rights reserved.

Intellectual Ventures Settles Memory Chip Patent Infringement Lawsuits with SK Hynix and Elpida Memory

The Wall Street Journal Law Blog reports Intellectual Ventures settled its memory chip patent infringement suits brought  in late 2010 against Korean based SK Hynix and Japanese based Elpida Memory in the ITC and Western district court of Washington.

For details see as follows: Intellectual Venture Reaches Patent Deal with Chip Makers

Copyright © 2012 Robert Moll. All rights reserved.

Leveling the Patent Playing Field, by Peter Detkin

I re-read Peter Detkin's article Leveling the Patent Playing Field tonight. It explains how the US patent system doesn't treat small entities fairly when it comes time to monetize patents and why patent aggregators have an important role in this regard.

Let me highlight some points made in Mr. Detkin's article:

1. Many important inventions have come from small companies, universities, and individual inventors rather than large companies. In fact, small entities such as individuals, business with less than 500 employees, and non-profits filed 43% of the US patent applications in the 1990s.

2.  Even worthy inventions by small entities may be difficult to monetize. Beside the expense of getting a US patent, small entities face difficulties in  finding a manufacturer and/or investors. Further, they face difficulties in licensing inventions even when they offer major advantages. For example, Dr. James Cunningham, a chemical engineer and an electrical engineer, had 46 patents as an employee of six semiconductor companies including Texas Instruments (TI). Some of Dr. Cunningham's inventions allowed microprocessor companies to switch from aluminum circuitry to copper which greatly improved performance of the microprocessors. He had fundamental inventions and decades in the fields yet he did not know who to approach about licensing the inventions.

3. Corporate licensing professionals are trained to avoid paying "crackpot" inventors or trolls. Their job is to limit payment to such "crackpots" not pay them! So they play interminable rounds of phone tag for months and reschedule the meeting at the last minute. Then after a few months pass they discuss and argue whether the invention has any merit for 6-18 months more even if they are currently infringing the patents!

4. Licensing negotiation rarely lead anywhere, leaving litigation as the only viable option. Large companies can out-resource even a veteran such as Dr. Cunningham at all stages so after a long dragged out process the big company ultimately says no we don't want to license your patent. And such was the case for five of the seven major companies Dr. Cunningham sought to license. With this result is it a wonder that some choose to sue for patent infringement? No, but little guys rarely win these cases.

5. Small entities cannot participate in the successful vast patent portfolio licensing of an IBM and the well capitalized patent licensing of Qualcomm, Rambus, or TI or the corporate patent pools in support of industry standard technology such as MPEG or DVDs. Unlike most small entities, major tech companies typically have huge numbers of patents, lots of money and lawyers to enforce them, as well thought out licensing programs.

Mr. Detkin notes models of patent monetization that will help the patent system regain balance. He suggests consultants, e.g., Thinkfire and ipValue will help large companies evaluate and exploit their patents. Ocean Tomo can run patent auctions, develop a stock index to track patent strength in companies, and create a centralized IP exchange. Companies like Acacia Research and Mosaid can purchase and assert the patents individually rather than as a broad portfolio. And his own firm Intellectual Ventures can purchase small entity patents such as those from Dr. Cunningham as well as seek patents on its own inventions resulting in portfolios that permit rational licensing for multiple technology products. Mr. Detkin notes Intellectual Ventures presents pre-screened patents and expertise in licensing and patent defense that allow it to reach an efficient agreement like that of a veteran real estate broker who negotiates with individual condo and apartment owners standing in the way of a skyscraper to be built.

Mr. Detkin states the above business models can match patent owners with patent users, ensure fair and efficient compensation for inventions, improve the public's access to new products and services, ensure bad patents do not receive unreasonable compensation, and restore balance to the patent playing field so more can play the patent game enriching our society.

In the end a great article, but Intellectual Ventures' daily actions will determine if they achieve these goals.

Copyright © 2012 Robert Moll. All rights reserved.

Intellectual Ventures and Patent Aggregators - Mr. Rosoff's Article

After I posted Intellectual Ventures and Patent Aggregators on February 29, I read Matt Rosoff's REVEALED: How Giant Patent Troll Intellectual Ventures Does Business. At first I thought nice summary of the Giants Among Us article, but now Mr. Rosoff's article seems too negative:

1. Read the title: ... Giant Patent Troll Intellectual Ventures .... The author doesn't waste any time before branding Intellectual Ventures a giant patent troll.  
2. The author states Intellectual Ventures "does very little inventing," but according to many articles IV is busy inventing in many technology areas.   
3. He states IV uses more than 1,200 shell companies. This makes IV sound sneaky but it's legal. So why can't IV use shell companies to reduce its purchase costs?   
4. He asserts about half its patents originated outside the U.S. and IV exploits the disparities in IP valuations between the US and the rest of the world. Don't inport/export businesses exploit disparities in valuations between the US and the rest of the world?
5. Mr. Rosoff states big companies invest in IV then use its patents for defense. Boo hoo some company pays for patent rights then has the audacity to file a counterclaim when it is sued. Sounds like self-defense to me.
6.  He notes IV's activities are compared to "privateering" in the Giant article, a now-abolished kind of warfare where countries would encourage private sailors to attack enemies ships and auction off the proceeds. This appears to refer to IV's willingness to license its patents to third parties who do the "dirty work of licensing and suing." But why is licensing and suing "dirty work?" This "dirty work" argument sounds truly lame.
7. Mr. Rosoff concludes IV's business is referred to as "an ugly business, but also perfectly legal." So there you have it: "Giant Patent Troll" labeling at the front end and "ugly business" at the rear end. 
8. It's this negative slant that makes the siren song for more government regulation such a clunker. 
9. After the REVEALED article was published, Intellectual Ventures pointed Mr. Rosoff to the Intellectual Ventures corporate blog for the other side and in my opinion some necessary balance.     

Copyright © 2012 Robert Moll. All rights reserved.

Intellectual Ventures and Patent Aggregators

Whatever one may think about Intellectual Venture's merit, it has never lacked press coverage. Because of this when it was taking off I told Peter Detkin, a co-founder, at a WSGR alumni get together, "you have become famous." Peter politely denied it, but I think it is true and what Peter has built with Nathan Myhrvold and others is a radical and significant change to the U.S. patent system. Despite all the press, however, it has been difficult to fully understand the method of operation and activities of Intellectual Ventures, which has rapidly accumulated 30,000 - 60,000 patents, making it the fifth largest patent portfolio of any US company.

Tom Ewing and Professor Robin Feldman answer many questions about Intellectual Ventures and patent (the authors say mass) aggregators such as Acacia Research and RPX in Stanford Technology Law Review's The Giants Among Us. I expect more coverage on patent aggregators, but this article is the best I have seen so far.

Also see Patrick Anderson's guest post on Patently-O: Intellectual Ventures Flexes Some Patent Muscle discussing how Intellectual Ventures is increasing its patent litigation effort today.

Copyright © 2012 Robert Moll. All rights reserved.