Joff Wild of IAM reports on Microsoft's prowess in patent licensing: Horacio Gutierrez becomes Microsoft GC in move that signals company's continuing patent focus.
Copyright © 2015 Robert Moll. All rights reserved.
Showing posts with label patent licensing. Show all posts
Showing posts with label patent licensing. Show all posts
Monday, November 16, 2015
Wednesday, November 4, 2015
Eric Spangenberg - Have We Hit Bottom in the Patent Market?
In the IP Watchdog article: Have We Hit Bottom in the Patent Market? Mr. Eric Spangenberg gives his frank assessment of what has adversely impacted the US patent market:
"Big tech used small companies hit with abusive lawsuits as the 'poster boy' to push through changes that do far more to help big companies efficiently infringe 'little guys' intellectual property than they do to prevent abuse. The market is still struggling to adapt to the rule changes that were pushed through in the AIA."
I would add companies have not been transparent on the funding of academic papers, studies, and articles in the press. Often the studies have lots of numbers, surveys, and statistics. The authors should disclose if they are compensated. Otherwise, these publications get presented to Congress right before hearings as objective evidence from disinterested observers of a problem that requires further patent reform.
Copyright © 2015 Robert Moll. All rights reserved.
"Big tech used small companies hit with abusive lawsuits as the 'poster boy' to push through changes that do far more to help big companies efficiently infringe 'little guys' intellectual property than they do to prevent abuse. The market is still struggling to adapt to the rule changes that were pushed through in the AIA."
I would add companies have not been transparent on the funding of academic papers, studies, and articles in the press. Often the studies have lots of numbers, surveys, and statistics. The authors should disclose if they are compensated. Otherwise, these publications get presented to Congress right before hearings as objective evidence from disinterested observers of a problem that requires further patent reform.
Copyright © 2015 Robert Moll. All rights reserved.
Tuesday, February 24, 2015
USPTO - Deputy Director Michelle Lee - Initiatives in 2015
Deputy Director Michelle Lee recently visited the Brookings Institution to talk about the USPTO's plans for 2015. For details see the USPTO video and Patent Quality Initiative.
Deputy Director Lee stated: "I've seen firsthand from the business side the importance that patents play, the exclusionary right they give, the protections they give innovators, businesspeople, and startups at the very early stages. If you're entering a market that is highly competitive, you need to have the assurance that you will have protection as you go up against some very steep and oftentimes well-funded competition. So for the USPTO to issue those patents promptly and accurately is critically important so that people invest in these developments."
This is absolutely right! Startups need great patents to penetrate markets. I would add that proposals to reform US patent law to defeat "patent trolls" should be viewed with the skepticism reserved for any other self-serving corporate lobbying. Why do large companies want to weaken US patents? To reduce patent license costs. You just say no to many efforts to license a patent, then knock down the audacious few who seek to enforce patent rights in court with favorable laws passed by Congress.
Copyright © 2015 Robert Moll. All rights reserved.
Deputy Director Lee stated: "I've seen firsthand from the business side the importance that patents play, the exclusionary right they give, the protections they give innovators, businesspeople, and startups at the very early stages. If you're entering a market that is highly competitive, you need to have the assurance that you will have protection as you go up against some very steep and oftentimes well-funded competition. So for the USPTO to issue those patents promptly and accurately is critically important so that people invest in these developments."
This is absolutely right! Startups need great patents to penetrate markets. I would add that proposals to reform US patent law to defeat "patent trolls" should be viewed with the skepticism reserved for any other self-serving corporate lobbying. Why do large companies want to weaken US patents? To reduce patent license costs. You just say no to many efforts to license a patent, then knock down the audacious few who seek to enforce patent rights in court with favorable laws passed by Congress.
Copyright © 2015 Robert Moll. All rights reserved.
Monday, September 29, 2014
Apple is Being Sued for Infringing 13 SanDisk Patents
Tonight, check out Apple is Being Sued for Infringing 13 SanDisk Patents. This article caught my attention because the title makes it appear SanDisk is suing a customer, but instead it is a story about non-practicing entities in Europe that purchased some of SanDisk's flash memory patents and are busy trying to monetize the patents.
As stated in the article: "Ireland's Longitude Licensing Ltd and Luxembourg's Longitude Flash Memory Systems S.a.r.l. have filed a joint patent infringement lawsuit against Apple. The lawsuit involves a whopping 13 counts of infringement covering most iDevices and iPod models. The plaintiffs are using former SanDisk patents that they now own against Apple."
If Apple products use SanDisk flash memory, it makes me wonder why patent exhaustion, implied licensing and/or laches won't become an issue.
Copyright © 2014 Robert Moll. All rights reserved.
As stated in the article: "Ireland's Longitude Licensing Ltd and Luxembourg's Longitude Flash Memory Systems S.a.r.l. have filed a joint patent infringement lawsuit against Apple. The lawsuit involves a whopping 13 counts of infringement covering most iDevices and iPod models. The plaintiffs are using former SanDisk patents that they now own against Apple."
If Apple products use SanDisk flash memory, it makes me wonder why patent exhaustion, implied licensing and/or laches won't become an issue.
Copyright © 2014 Robert Moll. All rights reserved.
Sunday, August 17, 2014
Jay Walker's Patent Properties the ASCAP of Patent Licensing?
Jay Walker, Priceline founder, is launching a startup Patent Properties to produce a marketplace for patent owners much like ASCAP which represented musicians and publishers to reach an agreement where radio stations paid a reasonable fee to play songs licensed by ASCAP. Since 1920, ASCAP has collected nearly $1 billion in royalties.
Patent Properties hopes to make a marketplace for patent owners that will broker low cost deals between inventors and users. Mr. Walker states, "we believe that by using simplicity, technology and common sense that works for everybody, and especially by keeping prices very low, we can replicate in the intellectual property and patent world what ASCAP did in the music world." Walker notes only 5% of 2.3 million U.S. patents enforce are licensed due to the high cost of patent litigation and companies unwillingness to take a patent license until forced.
Patent Properties asks that a patent owner agree to a no-fault system that makes the patented invention available to companies that pay a monthly fee of $1,000 to license 100 patents deemed statistically relevant to the company's business. Mr. Walker states each time a patent gets packaged an inventor can expect on average $100/year.
Mr. Walker notes since it won't have permission to use all US patents, the subscribers will be provided insurance that covers 50% of legal costs arising from infringement lawsuits up to, of course, a limit.
Copyright © 2014 Robert Moll. All rights reserved.
Patent Properties hopes to make a marketplace for patent owners that will broker low cost deals between inventors and users. Mr. Walker states, "we believe that by using simplicity, technology and common sense that works for everybody, and especially by keeping prices very low, we can replicate in the intellectual property and patent world what ASCAP did in the music world." Walker notes only 5% of 2.3 million U.S. patents enforce are licensed due to the high cost of patent litigation and companies unwillingness to take a patent license until forced.
Patent Properties asks that a patent owner agree to a no-fault system that makes the patented invention available to companies that pay a monthly fee of $1,000 to license 100 patents deemed statistically relevant to the company's business. Mr. Walker states each time a patent gets packaged an inventor can expect on average $100/year.
Mr. Walker notes since it won't have permission to use all US patents, the subscribers will be provided insurance that covers 50% of legal costs arising from infringement lawsuits up to, of course, a limit.
Copyright © 2014 Robert Moll. All rights reserved.
Friday, April 18, 2014
Startups Face Obstacles Protecting Innovation with US Patents
I was visiting Professor Hricik's blog tonight, and noticed his post with a link to an IP Today article by Joseph Hosteny on prosecution bars. Prosecution bars prevent prosecuting attorneys from viewing confidential information that is discovered during litigation that could be used to guide the strategy for patent prosecution of pending applications. When I arrived at IP Today it required a login, etc. I decided to sidestep all of that by visiting the Niro, Scavone, Haller & Niro's web site where Mr. Hosteny works to see if I could download the prosecution bar article and noticed he has his own website with publications. Although it didn't include the prosecution bar article, the articles were interesting.
Tonight, I mention one of them because it may cause some to think differently about how Congress is striking the balance in favor incumbents over startups with respect to patents. Lobbyists have Congress' attention on patent trolls, but startups interests tend to be ignored. This may be because they cannot afford lobbyists and must focus on innovation rather than changing laws. At the same time, the innovation needs legal protection from larger entities that can take it. Congress needs to give startups favorable patent laws to help them grow and if they deserve it, become incumbents. If we reform patent law in ways that generates obstacles for startups protecting their patentable innovation, we produce a world where only incumbents win.
In The Long Walk From the Gobi Desert to the River Styx Mr. Hosteny paints a stark detailed picture of the obstacles inventors face in profiting from patents. Although Mr. Hosteny talks about inventors, I think the ideas can be extended to startups which are built on inventions. He notes they have a long march to succeed. They have to invent something valuable, hire a patent attorney to prepare and file patent applications timely, build prototypes (let's assume real inventions), convince the examiner of the merits, then persuade skeptical companies to license the patent, and at times enforce the patent against companies with much more resources. Unfortunately, defendants' attorneys often treat inventors worse than robbers or embezzlers during enforcement. Don't expect to see it in court -- the judge is watching, but you do see it in depositions, where inventor's character is too often called into question. And the battle to enforce patents can stretch over years as it goes back and forth between the district court and the Federal Circuit on various issues. Definitely worth reading as it may help some realize that the playing field is not at all level for small companies and inventors that seek to license and enforce their patents.
Copyright © 2014 Robert Moll. All rights reserved.
Tonight, I mention one of them because it may cause some to think differently about how Congress is striking the balance in favor incumbents over startups with respect to patents. Lobbyists have Congress' attention on patent trolls, but startups interests tend to be ignored. This may be because they cannot afford lobbyists and must focus on innovation rather than changing laws. At the same time, the innovation needs legal protection from larger entities that can take it. Congress needs to give startups favorable patent laws to help them grow and if they deserve it, become incumbents. If we reform patent law in ways that generates obstacles for startups protecting their patentable innovation, we produce a world where only incumbents win.
In The Long Walk From the Gobi Desert to the River Styx Mr. Hosteny paints a stark detailed picture of the obstacles inventors face in profiting from patents. Although Mr. Hosteny talks about inventors, I think the ideas can be extended to startups which are built on inventions. He notes they have a long march to succeed. They have to invent something valuable, hire a patent attorney to prepare and file patent applications timely, build prototypes (let's assume real inventions), convince the examiner of the merits, then persuade skeptical companies to license the patent, and at times enforce the patent against companies with much more resources. Unfortunately, defendants' attorneys often treat inventors worse than robbers or embezzlers during enforcement. Don't expect to see it in court -- the judge is watching, but you do see it in depositions, where inventor's character is too often called into question. And the battle to enforce patents can stretch over years as it goes back and forth between the district court and the Federal Circuit on various issues. Definitely worth reading as it may help some realize that the playing field is not at all level for small companies and inventors that seek to license and enforce their patents.
Copyright © 2014 Robert Moll. All rights reserved.
Wednesday, January 22, 2014
Medtronic Inc. v. Mirowski Family Ventures, LLC - A Patent Owner Must Prove Infringement in Declaratory Judgment Action
Today, in Medtronic, Inc. v. Mirowski Family Ventures, LLC, the Supreme Court held when a licensee files a declaratory judgment action that products don't infringe a licensed patent, the patent owner must prove infringement.
Justice Breyer delivered the opinion for the Court and framed the question: "A patent licensee paying royalties into an escrow account under a patent licensing agreement seeks a declaratory judgment that some of its products are not covered by or do not infringe the patent, and that it therefore does not owe royalties for those products. In that suit, who bears the burden of proof, or, to be more precise, the burden of persuasion? Must the patentee prove infringement or must the licensee prove non-infringement?
The Court asserted legal logic supports "the burden of persuasion is with the patentee, just as it would be had the patentee brought an infringement suit." He stated it is well established that the burden of proving infringement rests upon the patent owner. The Declaratory Judgment Act is only procedural while the burden of proof is a rule of substantive law.
The Court also noted shifting the burden to the licensee could create uncertainty about the scope of the patent. Suppose an alleged infringer lost the declaratory judgment action because the evidence was inconclusive on non-infringement, the alleged infringer might continue in the same conduct, forcing the patent owner to file an infringement action. If the burden shifted, the patent owner might fail to prove infringement if the evidence was inconclusive. As a result nobody would know what products infringe. Thus, the declaratory judgment suit would not provide "an immediate and definitive determination of the legal rights of the parties."
The Court stated to shift the burden would make it difficult for the licensee to understand the patent owner's infringement claim, which the patent owner would be in a better position to know, while the alleged infringer would have to argue against every infringement theory.
The Court emphasized that burden shifting to the licensee is difficult to reconcile with the purpose of the Declaratory Judgment Act to ameliorate the dilemma posed by putting one who challenges a patent's scope to the choice between abandoning his rights or risking suit.
The Court was not persuaded by contrary arguments. It noted the Federal Circuit's lacked support in Schaffer v. Weast, 546 U.S. 49 (2005), since it was not a declaratory judgment case. It said the Federal Circuit's position that the holding applied only in the limited circumstances did not change the fact those circumstances are often present. The Court noted the patent owner started the dispute in response to the concern a licensee could force a patent owner into patent litigation.
The Court concluded the public interest didn't favor imposing the burden of proving infringement upon the licensee, since the public interest has a "paramount interest in seeing that patent monopolies are kept within their legitimate scope."
Copyright © 2014 Robert Moll. All rights reserved.
Justice Breyer delivered the opinion for the Court and framed the question: "A patent licensee paying royalties into an escrow account under a patent licensing agreement seeks a declaratory judgment that some of its products are not covered by or do not infringe the patent, and that it therefore does not owe royalties for those products. In that suit, who bears the burden of proof, or, to be more precise, the burden of persuasion? Must the patentee prove infringement or must the licensee prove non-infringement?
The Court asserted legal logic supports "the burden of persuasion is with the patentee, just as it would be had the patentee brought an infringement suit." He stated it is well established that the burden of proving infringement rests upon the patent owner. The Declaratory Judgment Act is only procedural while the burden of proof is a rule of substantive law.
The Court also noted shifting the burden to the licensee could create uncertainty about the scope of the patent. Suppose an alleged infringer lost the declaratory judgment action because the evidence was inconclusive on non-infringement, the alleged infringer might continue in the same conduct, forcing the patent owner to file an infringement action. If the burden shifted, the patent owner might fail to prove infringement if the evidence was inconclusive. As a result nobody would know what products infringe. Thus, the declaratory judgment suit would not provide "an immediate and definitive determination of the legal rights of the parties."
The Court stated to shift the burden would make it difficult for the licensee to understand the patent owner's infringement claim, which the patent owner would be in a better position to know, while the alleged infringer would have to argue against every infringement theory.
The Court emphasized that burden shifting to the licensee is difficult to reconcile with the purpose of the Declaratory Judgment Act to ameliorate the dilemma posed by putting one who challenges a patent's scope to the choice between abandoning his rights or risking suit.
The Court was not persuaded by contrary arguments. It noted the Federal Circuit's lacked support in Schaffer v. Weast, 546 U.S. 49 (2005), since it was not a declaratory judgment case. It said the Federal Circuit's position that the holding applied only in the limited circumstances did not change the fact those circumstances are often present. The Court noted the patent owner started the dispute in response to the concern a licensee could force a patent owner into patent litigation.
The Court concluded the public interest didn't favor imposing the burden of proving infringement upon the licensee, since the public interest has a "paramount interest in seeing that patent monopolies are kept within their legitimate scope."
Copyright © 2014 Robert Moll. All rights reserved.
Tuesday, November 19, 2013
Microsoft Making $2 Billion Annually From Android Patent Royalties
The Business Insider reports Microsoft Is Making An Astonishing $2 Billion Per Year From Android Patent Royalties. Even more amazing is the analyst's estimated 95% margins on this revenue stream. Is this right and is this fruit from Bill Gates' decision to hire x-IBM patent licensing guru Marshall Phelps? Thanks to Suzie Lipton-Moll for passing this article my way tonight.
Copyright © 2013 Robert Moll. All rights reserved.
Copyright © 2013 Robert Moll. All rights reserved.
Tuesday, October 22, 2013
Patent Trolls or Patent Monetizer - Goodlatte's Innovation Act of 2013
The news media has barraged the public with the evil of patent trolls: they harm our business and create nothing of value. Yes, patent litigation abuse needs to be curbed, but how?
Goodlatte's Innovation Act of 2013 proposes to change things. The Act limits legal estoppel to issues actually raised in post-grant proceedings and increases transparency on patent ownership, which should help, but also proposes to radically change decades of US patent law by introducing fee shifting perhaps in many if not all cases. This is more than "modernizing" 35 USC 285 folks this is giving up the American rule. We have this rule to encourage small entities to be able to protect their rights against large interests. If passed, large company defendants will have an incentive to overspend on legal fees, resulting in a win (how could they not win if they spent an order of magnitude more?), then hand the losing patent owner a very large legal bill. We are talking millions in legal fees. This will soon deter a small entity from enforcing a patent against any large company that decides infringement makes sense. The Act also heightens an infringement complaint to essentially require the patent owner submit a claim chart showing infringement with the complaint, and do it all before any discovery! Is this how we want it to work, establish infringement without discovery? Such a provision should be carefully considered by the patent community, because it only benefits large companies.
Beside carefully considering the impact of the laws, we need to drop the pejorative labels. Many acknowledge we shouldn't use the term "patent troll." Instead, we should refer to "patent assertion entities," but months later it is back to calling non-practicing patent owners patent trolls in the press, which preconditions the debate. Consider if you were accused of bullying others. Let's assume we don't know yet if you are. What if we each time we cross paths I ask, "So Mr. Bully, what have you been doing today?"
Congress appears to be introducing patent reform based on PR, media, and lobbyists. Many arguments raised against "patent trolls" might be raised against any patent licensing. Is it evil for someone to seek to obtain income from patent licensing and/or litigating rather than provide a service or make a product? IBM, Microsoft, Texas Instruments, HP, Intel, and SanDisk have all licensed patents beyond what is in their products, but that is left out of the media barrage, because these companies make valuable products and services (even if not related to a patent) and therefore are not "patent trolls."
We must delve into the facts to understand how to reduce patent litigation abuse. The FTC recently launched an investigation into patent monetizer. Some academics have done a great job of investigating into the facts. In The AIA 500 Expanded: Effects of Patent Monetization Entities, Professor Robin Feldman investigated almost 13,000 cases and 30,000 patents in lawsuits filed in 2007-2008 and 2011-2012 and draws interesting conclusions about how patent monetizers are reacting to changes of the patent law in the America Invents Act (AIA). This fact investigation with reasonable conclusions is a step in the right direction and should continue. Some of the findings of Professor Feldman's article:
Goodlatte's Innovation Act of 2013 proposes to change things. The Act limits legal estoppel to issues actually raised in post-grant proceedings and increases transparency on patent ownership, which should help, but also proposes to radically change decades of US patent law by introducing fee shifting perhaps in many if not all cases. This is more than "modernizing" 35 USC 285 folks this is giving up the American rule. We have this rule to encourage small entities to be able to protect their rights against large interests. If passed, large company defendants will have an incentive to overspend on legal fees, resulting in a win (how could they not win if they spent an order of magnitude more?), then hand the losing patent owner a very large legal bill. We are talking millions in legal fees. This will soon deter a small entity from enforcing a patent against any large company that decides infringement makes sense. The Act also heightens an infringement complaint to essentially require the patent owner submit a claim chart showing infringement with the complaint, and do it all before any discovery! Is this how we want it to work, establish infringement without discovery? Such a provision should be carefully considered by the patent community, because it only benefits large companies.
Beside carefully considering the impact of the laws, we need to drop the pejorative labels. Many acknowledge we shouldn't use the term "patent troll." Instead, we should refer to "patent assertion entities," but months later it is back to calling non-practicing patent owners patent trolls in the press, which preconditions the debate. Consider if you were accused of bullying others. Let's assume we don't know yet if you are. What if we each time we cross paths I ask, "So Mr. Bully, what have you been doing today?"
Congress appears to be introducing patent reform based on PR, media, and lobbyists. Many arguments raised against "patent trolls" might be raised against any patent licensing. Is it evil for someone to seek to obtain income from patent licensing and/or litigating rather than provide a service or make a product? IBM, Microsoft, Texas Instruments, HP, Intel, and SanDisk have all licensed patents beyond what is in their products, but that is left out of the media barrage, because these companies make valuable products and services (even if not related to a patent) and therefore are not "patent trolls."
We must delve into the facts to understand how to reduce patent litigation abuse. The FTC recently launched an investigation into patent monetizer. Some academics have done a great job of investigating into the facts. In The AIA 500 Expanded: Effects of Patent Monetization Entities, Professor Robin Feldman investigated almost 13,000 cases and 30,000 patents in lawsuits filed in 2007-2008 and 2011-2012 and draws interesting conclusions about how patent monetizers are reacting to changes of the patent law in the America Invents Act (AIA). This fact investigation with reasonable conclusions is a step in the right direction and should continue. Some of the findings of Professor Feldman's article:
- In 2012, patent monetizers filed 58.7% of all patent lawsuits filed in the USA. In contrast, patent monetizers filed only 24.6% of US patent lawsuits.
- The recently issued US patents are most frequently litigated, which might mean people are applying for patents with the plan to file lawsuits.
- Current mechanisms to notify the public when a patent is asserted in lawsuit did not operate 2/3 of the time.
- Month-by-month data show a massive spike in monetizer activity the month prior to the joinder provisions of America Invents Act became effective then the lawsuits began to rise again in the last part of 2012. I thinks she gets it right in noting, "The data demonstrate that the increase in activity by monetizers in recent years is not an artifact of the changes in the America Invents Act, but represents a true rise in the level of litigation activity."
I am not saying let's give any patent monetizer a free pass, but let's stop labeling them patent trolls and let the FTC investigation take its course. It should help identify conduct that needs to be stopped before we rush to change laws. Otherwise, Congress' efforts to change the law may bar legitimate patent enforcement and licensing activity.
Copyright © 2013 Robert Moll. All rights reserved.
Tuesday, September 3, 2013
Microsoft Acquisition of Nokia - It is Better to License Than Sell the Patents
Today, the big tech news was Microsoft's acquisition of Nokia's handset business for $5B. Unlike Google's acquisition of Motorola Mobility, Nokia did not sell its patents. Instead, Nokia granted Microsoft a 10-year license for $1.6B. In Reuters, Dan Levine explains why that makes sense in Why Nokia didn't sell its patents to Microsoft.
Copyright © 2013 Robert Moll. All rights reserved.
Copyright © 2013 Robert Moll. All rights reserved.
Friday, May 17, 2013
Alcatel-Lucent v. Newegg - Comment on Joe Mullin's Article Newegg nukes "corporate troll" Alcatel in third patent appeal win this year
In Newegg nukes "corporate troll" Alcatel in third patent appeal win this year Joe Mullin reports that Alcatel-Lucent had e-commerce on the ropes in 2011 given favorable settlements with Amazon, Intuit, Kmart, Lands End, Overstock.com, Sears, QVC, and Zappos for infringement of US Patent No. 5,649,131. However, things changed as a jury invalidated the '131 patent and the Federal Circuit affirmed the judgment.
Newegg's chief legal officer Lee Cheng appears to have earned Mr. Mullin's respect. Mr. Cheng now laments having insufficient patent troll lawsuits to generate favorable law. Most may not think reducing lawsuits is bad news, but would agree it is good news when a bogus patent is invalidated. But invalidating the '131 patent may not "nuke" Alcatel-Lucent given it owns 27,000 patents, many of which were acquired from Bell Labs.
I am uncertain why Alcatel-Lucent is a "corporate patent troll." Mr. Mullin notes: "Even though Alcatel-Lucent has billions in revenue from real businesses, when it comes to patent battles Cheng doesn't see them as being so different. Since Alcatel is asserting patents in markets it's nowhere near actually participating in he sees them as a kind of "corporate troll. 'It's an operating company that happens to hold a patent,' said Cheng. 'But it does nothing at all to bring the benefit of that patent to society.'" So one cannot license a patent and leave manufacturing to a licensee without being a troll?
I like to hear why you are right, not why the other party is bad. Mudslinging makes me suspect the merits of the case are lacking. It reminds me when a senior associate insisted I read his legal brief not so much for input but for my admiration: you know, young lawyer here's how we do it around here. I recall it didn't dwell on the merits but argued: (1) Your honor I appreciate your fine record; (2) the other party is a bad actor; (3) you hold a big stick your honor and I respect you for that; and (4) now without delay may it please you to stick the other party with the full measure of your judicial wrath! Yes, let me see you swing that big stick so the other party understands. Yes, all this in a civil case. It was embarrassing to read as I think he expected a compliment. But what could I say? Good job ... the other party will get the big stick for sure!
Also see Professor Michael Risch's article in Wired Don't Blame the Trolls for the Patent Problem.
Copyright © 2013 Robert Moll. All rights reserved.
Newegg's chief legal officer Lee Cheng appears to have earned Mr. Mullin's respect. Mr. Cheng now laments having insufficient patent troll lawsuits to generate favorable law. Most may not think reducing lawsuits is bad news, but would agree it is good news when a bogus patent is invalidated. But invalidating the '131 patent may not "nuke" Alcatel-Lucent given it owns 27,000 patents, many of which were acquired from Bell Labs.
I am uncertain why Alcatel-Lucent is a "corporate patent troll." Mr. Mullin notes: "Even though Alcatel-Lucent has billions in revenue from real businesses, when it comes to patent battles Cheng doesn't see them as being so different. Since Alcatel is asserting patents in markets it's nowhere near actually participating in he sees them as a kind of "corporate troll. 'It's an operating company that happens to hold a patent,' said Cheng. 'But it does nothing at all to bring the benefit of that patent to society.'" So one cannot license a patent and leave manufacturing to a licensee without being a troll?
I like to hear why you are right, not why the other party is bad. Mudslinging makes me suspect the merits of the case are lacking. It reminds me when a senior associate insisted I read his legal brief not so much for input but for my admiration: you know, young lawyer here's how we do it around here. I recall it didn't dwell on the merits but argued: (1) Your honor I appreciate your fine record; (2) the other party is a bad actor; (3) you hold a big stick your honor and I respect you for that; and (4) now without delay may it please you to stick the other party with the full measure of your judicial wrath! Yes, let me see you swing that big stick so the other party understands. Yes, all this in a civil case. It was embarrassing to read as I think he expected a compliment. But what could I say? Good job ... the other party will get the big stick for sure!
Also see Professor Michael Risch's article in Wired Don't Blame the Trolls for the Patent Problem.
Copyright © 2013 Robert Moll. All rights reserved.
Wednesday, April 24, 2013
FTC - Public Comments on Patent Assertion Entity Activities Workshop
The FTC has published 63 public comments on patent assertion entities: Public Comments of the FTC's Patent Assertion Entity Activities Workshop. Some interesting comments and lots of "patent troll slinging."
Copyright © 2013 Robert Moll. All rights reserved.
Copyright © 2013 Robert Moll. All rights reserved.
Monday, April 1, 2013
Microsoft Lists All Patents on the Web - The Knowledge Trap
On March 28, 2013, Brad Smith, Microsoft's GC and Executive VP, Legal and Corporate Affairs, mentioned in Enhancing Transparency: Putting Microsoft's Patents on the Web that Microsoft has published information (e.g., patent number, title, and country) regarding all Microsoft owned patents on the Web. The actual content of the patent will be available through the US patent databases (e.g., USPTO, Google Patent Search, and Free Patents Online).
From Mr. Smith's post: "Today, we launched a “Patent Tracker” tool that provides a list of all of the patents Microsoft owns. Through the Patent Tracker, users can obtain the list in two forms: (1) an online list that is searchable by patent number, patent title, country and whether the patent is held by Microsoft or a subsidiary, and (2) a CSV file containing the entire list that is downloadable and searchable in Microsoft Excel. We took this approach so that people can come to our site if they want to run a quick search, but can also download the information if they want to perform deeper analysis. Above is a video providing additional information about the need for transparency and how to use the Patent Tracker.
We take this step today because we believe that all stakeholders of the U.S. patent system – private companies, the U.S. Patent and Trademark Office, Congress and the courts – share responsibility for taking steps to improve its operation. Sensible improvements to the patent system, such as increasing transparency on patent ownership, will yield tangible outcomes that enhance American competitiveness, create jobs and foster growth in nearly every sector of the U.S. economy.
We urge other companies to join us in making available information about which patents they own. By doing so, they will help increase transparency, facilitate licensing, and help ensure that the patent system continues to fulfill its role in promoting and encouraging innovation."
Joff Wild of Intellectual Asset Management states Microsoft's aim to bring greater transparency to their holdings should be welcomed. And in my opinion, downloading a list with numbers, titles, and countries of 41,000 patents shouldn't translate into being imputed with knowledge of any given patent. However, what's logically next? If you review a relevant patent on the list as it may generate the need for a patent license or a opinion that the patent is not infringed or invalid. And if infringement is later found and the opinion is held incompetent, that knowledge increases the risk of willful infringement and increased damages. This is suggested since In re Seagate Technology held establishing willful infringement requires the patent owner show (1) the infringer acted despite an objectively high likelihood its action constituted infringement; and (2) the risk was known or so obvious it should have been known.
Copyright © 2013 Robert Moll. All rights reserved.
From Mr. Smith's post: "Today, we launched a “Patent Tracker” tool that provides a list of all of the patents Microsoft owns. Through the Patent Tracker, users can obtain the list in two forms: (1) an online list that is searchable by patent number, patent title, country and whether the patent is held by Microsoft or a subsidiary, and (2) a CSV file containing the entire list that is downloadable and searchable in Microsoft Excel. We took this approach so that people can come to our site if they want to run a quick search, but can also download the information if they want to perform deeper analysis. Above is a video providing additional information about the need for transparency and how to use the Patent Tracker.
We take this step today because we believe that all stakeholders of the U.S. patent system – private companies, the U.S. Patent and Trademark Office, Congress and the courts – share responsibility for taking steps to improve its operation. Sensible improvements to the patent system, such as increasing transparency on patent ownership, will yield tangible outcomes that enhance American competitiveness, create jobs and foster growth in nearly every sector of the U.S. economy.
We urge other companies to join us in making available information about which patents they own. By doing so, they will help increase transparency, facilitate licensing, and help ensure that the patent system continues to fulfill its role in promoting and encouraging innovation."
Joff Wild of Intellectual Asset Management states Microsoft's aim to bring greater transparency to their holdings should be welcomed. And in my opinion, downloading a list with numbers, titles, and countries of 41,000 patents shouldn't translate into being imputed with knowledge of any given patent. However, what's logically next? If you review a relevant patent on the list as it may generate the need for a patent license or a opinion that the patent is not infringed or invalid. And if infringement is later found and the opinion is held incompetent, that knowledge increases the risk of willful infringement and increased damages. This is suggested since In re Seagate Technology held establishing willful infringement requires the patent owner show (1) the infringer acted despite an objectively high likelihood its action constituted infringement; and (2) the risk was known or so obvious it should have been known.
Copyright © 2013 Robert Moll. All rights reserved.
Monday, July 23, 2012
NTP Settles with Apple, Microsoft, Google, et al.
NTP announced it has reached a settlement with AT&T, Verizon Wireless, Sprint Nextel, T-Mobile, Apple, HTC, Motorola Mobility, Palm, LG, Samsung, Google, Microsoft, and Yahoo to license eight patents "relating to the delivery of electronic mail over wireless systems."
Ron Epstein who represented NTP mentioned he has been traveling around the world since 2010 to reach this settlement. The settlement terms are confidential.
Some readers may remember NTP settled with RIM maker of the Blackberry for $612.5 million in 2006.
For details, please see NTP to get patent cash from "pretty much" entire cell phone industry - Ars Technica
Copyright © 2012 Robert Moll. All rights reserved.
Ron Epstein who represented NTP mentioned he has been traveling around the world since 2010 to reach this settlement. The settlement terms are confidential.
For details, please see NTP to get patent cash from "pretty much" entire cell phone industry - Ars Technica
Copyright © 2012 Robert Moll. All rights reserved.
Monday, July 9, 2012
Tech Company's New Favorite - The Patent Troll
The Wall Street Journal's article Corporate America to Patent Trolls: 'Well, Two Can Play at This Game' is worth reading. Ashby Jones of the WSJ notes how the divide between tech companies and non-practicing entities (i.e., patent trolls) is disappearing. Yes, the tech industry still complains about patent trolls while it spins out companies to license and sue on its patents and sells patents to trolls to generate cash. The article had no comments from tech companies on this trend. I guess the patent troll designation has a case of situational ethics.
Copyright © 2012 Robert Moll. All rights reserved.
Copyright © 2012 Robert Moll. All rights reserved.
Saturday, July 7, 2012
Facebook and Yahoo Settle Patent Lawsuits
On July 6, Facebook and Yahoo announced a settlement of the patent lawsuits, including a cross-license of patents, no exchange of money, and an expansion of the existing ad and content partnership. It appears the resignations of Yahoo's prior CEO and general counsel, who had advised to file the patent lawsuit right before Facebook's IPO, helped open the door for settlement. Although the settlement was not entirely predictable, the vague news barely moved Facebook's and Yahoo's shares. Here are some of the many articles on the settlement:
Facebook and Yahoo Settle Patent Litigation - Wall Street Journal
Yahoo and Facebook Settle Patent Lawsuits - New York Times (blog)
Yahoo, Facebook have settled patent fight - USA Today
Exclusive: Yahoo and Facebook Strike Patent Peace Deal, Significantly Expanding Ad and Content Partnership - All Things Digital
Yahoo, Facebook strike patent truce, ad alliance - Boston.com
Facebook, Yahoo end patent war with vague collaboration agreement - San Francisco Chronicle (blog)
Developments in patent dispute between Facebook and Yahoo - Washington Post
Facebook, Yahoo settle patent feud, announce new ad partnership - San Jose Mercury News
Yahoo, Facebook drop patent suits, team up on ads - San Francisco Chronicle
Facebook, Yahoo Settle Patent Fight With Advertising Deal - PC Magazine
If you are in a tech company, I suggest reading my related posts:
Yahoo! Threatens to Sue Facebook for Patent Infringement - February 28, 2012
Yahoo! Sues Facebook for Patent Infringement! - March 13, 2012
The Yahoo Patent Offensive - Precipitating Factors? - March 17, 2012
Yahoo v. Facebook Patent Lawsuit - The Pundits Arrive! - March 21, 2012
Facebook Buys 750 IBM Patents - Call to Arms - March 23, 2012
Facebook Countersues Yahoo for Patent infringement - April 3, 2012
Facebook Countersues Yahoo for Patent Infringement - Links to Articles - April 4, 2012
Yahoo Expands Patent Fight with Facebook - April 27, 2012
Yahoo v. FaceBook Patent Lawsuit - Links to Articles - April 28, 2012
AOL Giving Shareholders $1B Cash From Patent Sale - May 17, 2012
Copyright © 2012 Robert Moll. All rights reserved.
Facebook and Yahoo Settle Patent Litigation - Wall Street Journal
Yahoo and Facebook Settle Patent Lawsuits - New York Times (blog)
Yahoo, Facebook have settled patent fight - USA Today
Exclusive: Yahoo and Facebook Strike Patent Peace Deal, Significantly Expanding Ad and Content Partnership - All Things Digital
Yahoo, Facebook strike patent truce, ad alliance - Boston.com
Facebook, Yahoo end patent war with vague collaboration agreement - San Francisco Chronicle (blog)
Developments in patent dispute between Facebook and Yahoo - Washington Post
Facebook, Yahoo settle patent feud, announce new ad partnership - San Jose Mercury News
Yahoo, Facebook drop patent suits, team up on ads - San Francisco Chronicle
Facebook, Yahoo Settle Patent Fight With Advertising Deal - PC Magazine
If you are in a tech company, I suggest reading my related posts:
Yahoo! Threatens to Sue Facebook for Patent Infringement - February 28, 2012
Yahoo! Sues Facebook for Patent Infringement! - March 13, 2012
The Yahoo Patent Offensive - Precipitating Factors? - March 17, 2012
Yahoo v. Facebook Patent Lawsuit - The Pundits Arrive! - March 21, 2012
Facebook Buys 750 IBM Patents - Call to Arms - March 23, 2012
Facebook Countersues Yahoo for Patent infringement - April 3, 2012
Facebook Countersues Yahoo for Patent Infringement - Links to Articles - April 4, 2012
Yahoo Expands Patent Fight with Facebook - April 27, 2012
Yahoo v. FaceBook Patent Lawsuit - Links to Articles - April 28, 2012
AOL Giving Shareholders $1B Cash From Patent Sale - May 17, 2012
Copyright © 2012 Robert Moll. All rights reserved.
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.
Thursday, May 17, 2012
AOL Giving Shareholders $1B Cash From Patent Sale
Last month AOL agreed to sell 925 patents to Microsoft for $1.1 billion and granted Microsoft a non-exclusive license to its remaining software patents relating to advertising, search, social networking, mapping, streaming and security. Next Facebook agreed to buy 625 patents from Microsoft for $550 million. This month AOL announced a plan to give shareholders 100% of the proceeds from its $1.1 billion patent sale, but the details are being worked out. AOL stated it could think of no better use for the money. AOL may have gained investor goodwill on this transaction, but now it has no extra cash on hand to address the major challenges ahead.
See details in CNNMoney's article: AOL to give shareholders all proceeds from patent bonanza
Copyright © 2012 Robert Moll. All rights reserved.
See details in CNNMoney's article: AOL to give shareholders all proceeds from patent bonanza
Copyright © 2012 Robert Moll. All rights reserved.
Tuesday, May 15, 2012
Nvidia and Intellectual Ventures' Joint Purchase of Nearly 500 Wireless Patents
As Nvidia shifts into mobile computing, it has purchased nearly 500 wireless patents presumably to help reduce exposure to patent infringement lawsuits. Privately held IPWireless initiated the deal when it offered the patents to Nvidia, which contacted Intellectual Ventures to evaluate the patents, resulting in Intellectual Ventures and Nvidia agreement to jointly purchase the patents from IPWireless. IPWireless will retain a license to the patents and Nvidia will license the patents it did not purchase. The financial terms were not released. Intellectual Asset Management stated senior IV executives told it why the market should expect more such deals.
Other details are given in the following articles:
Nvidia picks up wireless patents in mobile push - Baltimore Sun
Nvidia, Intellectual Ventures buy wireless patents - Marketwatch
Nvidia Grabs Wireless Patents - Forbes
Nvidia, Intellectual Ventures Jointly Purchase 500 Wireless Patent - PC Magazine
Nvidia, Intellectual Ventures partner to acquire 4G patents - Engadget
Nvidia teams with Intellectual Ventures to acquire patents - Venture Beat
NVIDIA buys 500 patents to take on Qualcomm - Intomobile.com
Copyright © 2012 Robert Moll. All rights reserved.
Other details are given in the following articles:
Nvidia picks up wireless patents in mobile push - Baltimore Sun
Nvidia, Intellectual Ventures buy wireless patents - Marketwatch
Nvidia Grabs Wireless Patents - Forbes
Nvidia, Intellectual Ventures Jointly Purchase 500 Wireless Patent - PC Magazine
Nvidia, Intellectual Ventures partner to acquire 4G patents - Engadget
Nvidia teams with Intellectual Ventures to acquire patents - Venture Beat
NVIDIA buys 500 patents to take on Qualcomm - Intomobile.com
Copyright © 2012 Robert Moll. All rights reserved.
Thursday, May 3, 2012
CSIRO Wi-Fi Protocol Patent Owner - Patent Troll?
On April 2, 2012, I posted an article reporting Australia's Commonwealth Scientific and Industrial Research Organization (CSIRO) reached a $229 million settlement with Acer, AT&T, Leveno, Sony, and T-Mobile for a license to its Wi-Fi protocol patent.
As I was reading ars technica tonight, I came across Joe Mullins' article How the Aussie government "invented Wi-Fi" and sued its way to $430 million implying that CSIRO is a patent troll, e.g., a patent owner asserting a dubious patent that it does not commercially practice.
Although Mr. Mullins seems to agree with Steven J. Vaughan-Nichols that CSIRO is a patent troll, See Vaughan-Nicols' Australian government patent troll collects from Wi-Fi Vendors, Mr. Mullin's article appears to be premised on the view that a new combination of old elements has suspect validity despite contrary Federal Circuit patent law.
At the same time, Mr. Mullins' article received over 300 reader comments and not all of it positive especially from Aussies that complained that he mischaracterized it the Wi-Fi patent when the claims only covered a component of the Wi-Fi protocol. Whether all of the comments were right, Mr. Mullin felt compelled to address the comments in his Responses and clarifications.
Then in the Australian publication DeLimiter Renai LeMay wrote Is the CSIRO a patent troll? US debate turns feral favorably on Mr. Mullin's article with again lots of adverse comments by Aussies.
Although Mr. Mullins seems to agree with Steven J. Vaughan-Nichols that CSIRO is a patent troll, See Vaughan-Nicols' Australian government patent troll collects from Wi-Fi Vendors, Mr. Mullin's article appears to be premised on the view that a new combination of old elements has suspect validity despite contrary Federal Circuit patent law.
At the same time, Mr. Mullins' article received over 300 reader comments and not all of it positive especially from Aussies that complained that he mischaracterized it the Wi-Fi patent when the claims only covered a component of the Wi-Fi protocol. Whether all of the comments were right, Mr. Mullin felt compelled to address the comments in his Responses and clarifications.
Then in the Australian publication DeLimiter Renai LeMay wrote Is the CSIRO a patent troll? US debate turns feral favorably on Mr. Mullin's article with again lots of adverse comments by Aussies.
Obviously a controversial topic, but the bottom line is CSIRO has obtained over $430 million given it earlier received over $200 million licensing the patent to 3Com, Asus, Buffalo Technologies, D-Link, Dell, HP, Microsoft, Intel, Microsoft, Netgear, Nintendo, and Toshiba in 2009. See ZDNet article for information on some of the settlements reached in 2009 here.
The validity of CSIRO patent was greatly disputed at trial, but the case settled after four days of testimony. If the patent was dubious, why the settlement? What appears to be missing from the PTO PAIR records is a request for ex parte reexamination of the patent. Apparently, despite the tone in the press that the patent was dubious, none of the defendants were willing to take on that challenge in the PTO given the monetary stakes.
Copyright © 2012 Robert Moll. All rights reserved.
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