The PTO is considering regulations to require greater transparency concerning ownership of patents and patent applications. I am interested to see patent aggregators or patent monetizers views on this topic.
For details see Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term.
Copyright © 2012 Robert Moll. All rights reserved.
Showing posts with label patent aggregators. Show all posts
Showing posts with label patent aggregators. Show all posts
Friday, November 30, 2012
Sunday, November 25, 2012
FTC and DOJ Workshop - Patent Assertion Entities
The FTC and DOJ is hosting a workshop to consider the impact of patent assertion entities (PAE) on innovation, competition, and any implications for antitrust enforcement.
It's a free workshop, with a great set of panelists, including academics, attorneys, economists, and industry representatives in Washington DC on December 10, 2012.
If you are interested in attending, submitting comments, or learning more, see Federal Trade Commission, Department of Justice to Hold Workshop on Patent Assertion Entity Activities and Patent Assertion Entity Activities Workshop Page.
Copyright © 2012 Robert Moll. All rights reserved.
It's a free workshop, with a great set of panelists, including academics, attorneys, economists, and industry representatives in Washington DC on December 10, 2012.
If you are interested in attending, submitting comments, or learning more, see Federal Trade Commission, Department of Justice to Hold Workshop on Patent Assertion Entity Activities and Patent Assertion Entity Activities Workshop Page.
Copyright © 2012 Robert Moll. All rights reserved.
Wednesday, June 13, 2012
HTC v. Apple - ITC Dismisses Five "HTC" Patents
FOSS Patents had an interesting article: ITC doesn't allow HTC to assert Google's patents against Apple -- Rent-a-Patent model fails. Apple's opening move? HTC, you don't have the right to sue! How embarrassing it must be to hear the judge agree. Specifically, Apple filed a motion that eliminated five of eight patents HTC asserted against Apple in the ITC. The administrative law judge (ALJ) ruled HTC lacked standing (the right to sue) because Google failed to transfer "substantial patent rights" to HTC.
Mr. Mueller suggests the dismissal impacts the HTC v. Google ITC proceeding and the patent aggregators. The first point is right, but patent aggregators shouldn't see a standing issue if they take action based on what can be learned from this case.
As to the HTC v. Apple ITC proceeding, Mr. Mueller notes that (1) Apple is unlikely to have to defend itself against the five dismissed patents, (2) an appeal against this dismissal is unlikely to succeed, and (3) Google could join as a complainant with HTC, but this would escalate the Apple-Google conflict. Further, Mr. Mueller notes that Google was not making phones at the time the complaint was filed so may not be able to join as it would not satisfy the domestic industry requirement.
Mr. Mueller suggests the limitations and restrictions in Google's agreement show Google's support for the Android ecosystem has "clear limits." I don't have a copy of the agreement, but Mr. Mueller must be kidding about the clear limits!
As to patent aggregators, Intellectual Ventures and RPX allow their members to "check out" a patent in order to bring a counterclaim. Mr. Mueller suggests this may raise standing issues, but amending the language of the agreement to transfer substantial rights should eliminate any standing issue as long as the patent is not already in litigation.
Copyright © 2012 Robert Moll. All rights reserved.
Mr. Mueller suggests the dismissal impacts the HTC v. Google ITC proceeding and the patent aggregators. The first point is right, but patent aggregators shouldn't see a standing issue if they take action based on what can be learned from this case.
As to the HTC v. Apple ITC proceeding, Mr. Mueller notes that (1) Apple is unlikely to have to defend itself against the five dismissed patents, (2) an appeal against this dismissal is unlikely to succeed, and (3) Google could join as a complainant with HTC, but this would escalate the Apple-Google conflict. Further, Mr. Mueller notes that Google was not making phones at the time the complaint was filed so may not be able to join as it would not satisfy the domestic industry requirement.
Mr. Mueller suggests the limitations and restrictions in Google's agreement show Google's support for the Android ecosystem has "clear limits." I don't have a copy of the agreement, but Mr. Mueller must be kidding about the clear limits!
As to patent aggregators, Intellectual Ventures and RPX allow their members to "check out" a patent in order to bring a counterclaim. Mr. Mueller suggests this may raise standing issues, but amending the language of the agreement to transfer substantial rights should eliminate any standing issue as long as the patent is not already in litigation.
Copyright © 2012 Robert Moll. All rights reserved.
Labels:
android,
Apple,
dismissal,
domestic industry,
Google,
HTC,
ITC,
patent aggregators,
standing,
substantial rights
Monday, June 11, 2012
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.
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.
Monday, April 23, 2012
Intellectual Ventures and Patent Aggregators - Jeff Hartgarten
Last week Jeff Hartgarten, a student at the University of Minnesota, sent an email asking if I could talk to him about patent aggregators. Soon after we had an interesting discussion, and Jeff published the article: U Invests in a 'Patent Troll' - Several schools worldwide either invest in or license patents through Intellectual Ventures. I noticed that when Google patent alerts listed the article. We probably don't agree on whether or not Intellectual Ventures is a benefit to society, but I appreciate Jeff interviewed quite a few people and took the time to listen to me. Jeff, good luck to you, I expect you will do well!
Copyright © 2012 Robert Moll. All rights reserved.
Friday, March 2, 2012
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:
- Read the title: ... Giant Patent Troll Intellectual Ventures .... The author doesn't waste any time before branding Intellectual Ventures a giant patent troll.
- The author states Intellectual Ventures "does very little inventing," but according to many articles IV is busy inventing in many technology areas.
- 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?
- 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?
- 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.
- 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.
- 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.
- It's this negative slant that makes the siren song for more government regulation such a clunker.
- 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.
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