Yesterday my latest column over at Patent Calls, New Year’s Patent Resolutions, was posted, which dovetails somewhat with the provocative “Don’t File A Patent” discussion from a few days ago, as well as a Hyperion Law post discussing circumstances when patenting may not be the right strategy. This week’s column examines a couple of aspects that are frequently missed during strategic IP planning, including budgeting for maintenance fees and patent acquisition (distinct from filing). In other words,consider putting aside your patent filings once in a while and consider what patents may be available in the secondary market.
John D. Smith (if that is his real name) is proprietor of the Don’t File A Patent website, noticed by Patent Hawk earlier this week. Hawk notes Smith’s arguments boil down essentially to four essential points, each of which has been touched on (at least in part) here at Gametime IP:
Patents are expensive pieces of paper.
Lawyers are money-sucking parasites.
The Patent Office wastes money on meritless rejections.
Lawsuits are expensive, and judgments are uncollectable.
Since initially writing this post about Groupon’s use of the patent marketplace to acquire this patent to counter a lawsuit from MobGob, I’ve learned that Groupon just can’t stay out of the news. Whether it’s for getting involved in another patent infringement lawsuit or turning down a $6 Billion offer from Google. While I do still think the idea Groupon had (to acquire the fire needed to “fight fire with fire”) was a good one (and likely to be repeated in the near future), I get the feeling that others are reading far too much into Groupon’s patent acquisition by suggesting that the patent is motivating Google’s purchase.
On the heels of stories like Facebook’s purchase of HP and Applied Materials patents and Groupon’s purchase of an early group discounting patent, comes a report today that Apple, Google and RIM are among the bidders for Nortel’s IP portfolio. If the rumors are true, this may be unprecedented territory for Google, and possibly a hedge against is earlier position that Oracle’s patents are unpatentable, abstract ideas. The move could give the winning bidder control of patents relevant to wireless 3G and 4G technologies, which would provide some much needed leverage, particularly for Google which has so far failed to use any of its own patents to counter Oracle’s attack.
Unless you’ve been under a rock, you’ve already heard the news. Not only has IV filed its first three lawsuits,but they’ve done it in a very public manner, issuing their own press release identifying the defendants and providing PDF copies of the complaints. Despite IV’s publicbragging about its licensing efforts being devoid of litigation, anyone with experience in licensing probably expected something like this sooner or later. Recall Myhrvold’s comments to Business Week back in 2006:
In other words, the worry was that IV would use the patents it bought to file infringement suits against companies that turned it down. Myhrvold scoffs at this charge, noting that businesses that aren’t infringing have nothing to worry about, and that IV has yet to file a single lawsuit.
Joff Wild has directed us to an interesting comment in the context of the Novell/Microsoft patent sale. Remarking on the differences between private transactions and public auctions, Joff’s source notes:
This [private sale] is how MOST high value patent portfolios are sold. That’s why the ICAP OT auction process only deals with low end portfolios. The high end stuff doesn’t trade that way.
via Supreme Court to hear Microsoft invalidity challenge; plus more on Novell patent purchase – Blog – IAM Magazine.
Previously, I mentioned how Groupon acquired this patent and used it to retaliate against MobGob’s patent infringement claims against it. Meanwhile, news of the potential $ 6 B acquisition by Google abounds (including proclamations that its a great idea, as well as a bad idea). Since then, Groupon has been sued again, and its patent is given a closer inspection (below). Also, will Google insist on an 8 or 9 figure escrow account as a condition of the sale?
My second installment of Patent Connections is available here and discusses bankruptcy liquidation leading to patent litigation, which is also a topic I touched on with respect to the Silicon Graphics litigation. My column actually mentions the SGI cases as an example of how lawyer’s have learned from the tragic mistake made in Morrow v. Microsoft:
Since GUCLT lacked standing to sue Microsoft for infringement of the ’647 patent, the district court lacked jurisdiction. Thus, we will not consider the appealed infringement issues on the merits. We reverse as to standing and vacate the infringement rulings.
In an interesting twist last week, patent owners are being accused of stealing inventions (rather than having their inventions “stolen” by others vis-a-vis infringement). In a Techrights.org article, IBM and Tandberg are both accused of taking innovations from open source software repositories and claiming them as their own inventions to the USPTO. Indeed, this is a very serious accusation, since inventors are required to sign, under penalty of perjury, an oath stating that he or she “believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.” In addition, an attorney who knowingly allowed an inventor to falsely sign such an oath would likely be suborning perjury.
In 2011, the Supreme Court will hear argument, and make a decision in Microsoft v. i4i about:
Whether the invalidity defense provided for in the Patent Act, 35 U.S.C. § 28[sic], must be proved by clear and convincing evidence.
That much you probably already know, but if you didn’t already, then check out Dennis Crouch’s comprehensive overview of the case, Gary, the Patent Hawk, Odom’s amusing editorial, or Peter Zura’s succinct summary. Crouch’s post mentions an earlier study which he points to as suggesting that “lowering the burden of proof would not have made any difference for 74%” of cases. Patent owners may be mislead by this statistic into thinking that this case won’t have a significant impact on patent value, but they would be wrong.