Category Archives: Mass Aggregators
Wilson Sonsini has issued a Client Alert reporting a most interesting decision from District of Nevada decision in Email Link Corp. v. Treasure Island, LLC et. al holding “…that a patent subject to a terminal disclaimer was unenforceable against the alleged infringers because it was not commonly owned with the related prior patent, even though both patents were owned by subsidiaries that were wholly owned by the same parent company.”
The Alert concludes:
“This holding clarifies that two subsidiaries wholly owned by the same parent do not count as “commonly owned” for terminal disclaimer purposes. The decision underscores the importance of looking to the assignment history of the asserted patents and the relationships among the assignees in a patent family that are subject to terminal disclaimers when preparing a patent litigation defense.”
Note that the entities involved are Acacia and two of its subsidiaries. With the proliferation of NPE’s and their subsidiaries, and the confusing transfer of ownership rights among them, this decision could raise a new defense against such mass patent aggregators.
Expect this decision to be appealed to the Supremes.
Here is a link to the WSGR Client Alert with more information and background: http://www.wsgr.com/wsgr/Display.aspx?SectionName=publications/PDFSearch/wsgralert-terminal-disclaimers.htm
BTW, who sues a casino? Wouldn’t one worry that a bloody horse’s head is going to end up in your bed? Just saying…………..
Well, that’s how writer Jeff John Roberts refers to IV in a post at money.cnn.com: “For the unfamiliar, IV is the dark empire of Nathan Myhrvold, a former Microsoft executive who gamed the patent system by amassing tens of thousands of often-flimsy patents and then threatening to sue everyone in sight.”
Needless to say Roberts is a fan of the recently announced IP Checkups’s project writing:
“More broadly, IP Checkups’ project could reframe public perception of IV’s activities. So far, Myhrvold has gulled the media with tales of IV’s marvelous inventions. This could change once it becomes easier to see the extent of the dirty work carried out by the shells and, just possibly, galvanize the federal government to drive an anti-trust stake into IV’s heart.”
I’m guessing that Roberts shouldn’t expect a Christmas card from IV this year.
See this link for the entire rant: http://money.cnn.com/news/newsfeeds/gigaom/articles/2012_10_15_analytics_firm_flushes_out_trolls_spawned_by_intellectual_ventures.html
In a paper just published researchers Robin Feldman, Sara Jeruss, and Joshua Walker report on patent monetization entities (oh no another name for patent trolls!) and their effects on litigation. Their summary states:
“The data confirm in a dramatic fashion what many scholars and commentators have suspected: patent monetization entities play a role in a substantial portion of the lawsuits filed today. Based on our sample, lawsuits filed by patent monetizers have increased from 22% of the cases filed five years ago to almost 40% of the cases filed in the most recent year. In addition, of the five parties in the sample who filed the greatest number of lawsuits during the period studied, four were monetizers and only one was an operating company.
Of additional note, universities, which are sometimes grouped with non-practicing entities on the theory that they do not make products, were almost invisible and accounted for only 0.2% of the cases in our sample. Finally, Patent monetizers were unlikely to advance very far in the trial process, generally settling prior to a summary judgment decision. Our article details these and other results of the study.”
BTW, Who are the “Fab Five”? Jens Erik Sorensen, Arrivalstar, Acacia and Guardian Media Technologies (all NPE’s) and Abbott Labs (an operating company). Who knew Abbott was so litigious?
To read the paper which has so much more to offer, go to this link: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2158455
Please see the attached document for the 2nd draft of the NPE list which includes more information and more NPE’s. Please feel free to supply me with corrections, improvements, and more NPE information!
And the best part is: it’s 100% FREE. As a great man once said, “IF IT’S FREE, IT’S FOR ME!”
On this NPE list my intent is to list only parent entities and then create separate list for subsidiaries. So, for example, Acacia is listed as the parent in this NPE list but a separate document will be created that lists the Acacia subsidiaries (and there are a lot of them!). That’s the plan anyway. These documents will always be a work in progress no doubt.
There is a fascinating article at seekingalpha.com regarding the RPX and Acacia relationship including this nugget:
“Acacia, whose business model centers around investing in patents through acquisition and partnerships with patent owners, resembles many of the companies that Forbes claimed RPX would ‘slay.’ However, far from feeling threatened or attacked by the RPX business model, Acacia CEO Paul Ryan views RPX’s presence in the market as a strategic benefit and a strong complement to Acacia. ‘It’s a great relationship,’ explained Ryan during a private telephone conversation. ‘They [RPX] are in the business, essentially, of buying IP rights for their members, and we’re obviously in the business of selling IP rights on behalf of ourselves and our partners.’ As a result, according to Ryan, ‘We work with them on a pretty regular basis.'”
The patent monetization business gets more complex and interesting each day.
The article’s conclusion about RPX’s impact on legal fees is also thought-provoking:
“From the point-of-view of RPX’s members, the aggregator provides a similar function. By negotiating on behalf of multiple members for multiple portfolios, fees paid to RPX serve to save the members from the individual license and legal fees. Spread across a large enough multitude of deals, and RPX members can realize an overall cost savings, particularly by removing individual lawyers from the equation. In this respect, RPX’s business is a lot less like monetizing patents, and lot more like monetizing inefficiencies in our legal system.Ultimately, this leads to two ultimate possibilities. First, this places a constraint on the overall “addressable” market if the primary benefit relates to a reduction in legal fees, because law firms will find ways to adapt and re-structure fees in an effort to keep their position at the bargaining table. Second, it means the monster that RPX very well could slay would be monstrous hourly fees for legal services.”
See the article for much more regarding Acacia and RPX: http://seekingalpha.com/article/906021-rpx-pursues-more-license-option-agreements