Posts in Licensing

  This is going to be a different ride Most high technology companies have a good grasp of the challenges and solutions for dealing with patent trolls. However, successful high technology startups face a threat beyond patent trolls: large corporate patent asserters looking to license their patents. Companies like Microsoft, Qualcomm, and IBM regularly assert their patents for strategic benefit…

Finnish telecom firm Nokia (NYSE:NOK) and Chinese mobile handset developer Xiaomi recently issued a joint press release announcing a multi-year patent cross license agreement granting both companies access to standard essential patents (SEPs) owned by either firm in the cellular space. In addition, Xiaomi bought patents from Nokia outright. Details on financials and the patents involved were not included in the press announcement.

On July 5th a federal judge entered an order granting the dismissal of a copyright case, which had been filed by the estate of famed English fantasy author J. R. R. Tolkien and American entertainment company Warner Bros. The case arises out of the Tolkien estate’s allegations that Warner Bros. was in breach of contract in using their merchandising rights to The Lord of the Rings and The Hobbit to develop video games based on those properties.

The pressure to adhere to the patent troll rhetoric was difficult for people to grasp if they don’t live within Silicon Valley, Causevic noted. He noted a conference which he was invited to speak at which changed its title from “Have We Gone Too Far in Weakening Our Patent System?” to “Where Are We in Eradicating Weak Patents?”, a radical shift in focus. “The pressure is very personal,” Causevic said, citing a paper he had worked on which found that company directors were often pressured against telling shareholders to monetize their patents as it could hurt their chances at employment with an anti-patent tech firm later on. As Taylor would add, this pressure affects the “tens of thousands of little companies started by entrepreneurs” in that region which live under a cultural overhang created by the large Silicon Valley entities.

BlackBerry Ltd (NASDAQ:BBRY) announced that it had reached an agreement with San Diego, CA-based semiconductor designer Qualcomm, Inc. (NASDAQ:QCOM) to resolve arbitration proceedings over tech royalty payments made between the companies. Terms of the agreement involve Qualcomm paying BlackBerry a total of $940 million to account for net royalties due to BlackBerry during 2016’s calendar year and 2017’s first quarter. The announcement indicates that the payment were to be made before or on May 31st.

An ITC administrative law judge issued a final initial determination finding Section 337 patent infringement violations committed by various entities, including Philadelphia-based telecom firm Comcast Corporation (NASDAQ:CMCSA), in light of two patents asserted by TiVo… News reports indicate that a final ruling on this Section 337 investigation is expected on September 26th after a full investigation, at which point the ITC could decide to block infringing products being imported by Comcast and others in the investigation from entering the U.S. market. In the first full day of trading after TiVo filed that 8-K with the SEC, shares of the company rose by about 17 percent.

On Monday, April 3rd, multiple news outlets were reporting that American consumer gadget developer Apple Inc. (NASDAQ:AAPL) had informed British semiconductor manufacturer Imagination Technologies (LON:IMG) that it would no longer be the designer of graphics processing units (GPUs) for Apple portable electronic devices. Shares of Imagination Technologies plunged 70 percent on the news and further comments from executives indicate that a patent battle might be brewing over Apple’s business decision.

The original lawsuit filed in December 2015 targeted The Big Bang Theory’s use of the song Soft Kitty, a song which the character Sheldon Cooper asks people to sing whenever he’s sick or needs mothering. The lyrics to that song were written in the 1930s by Edith Newlin, a published children’s author and mother of the two plaintiffs listed in the case. The lyrics were published by Willis Music Company in 1937 in a compilation where the song was titled Warm Kitty. Willis renewed the copyright registration covering the collection of nursery school songs in 1964. The plaintiffs alleged that this renewal served to register and renew Newlin’s rights to the Soft Kitty lyrics. This, the plaintiffs reasoned, required Willis to request permission from Newlin or her successors to license the song to Warner Bros. Entertainment, producers of The Big Bang Theory.

The licensing agreement, which covers patents directed at connected car technologies, is the latest partnership between these two companies seeking to increase entertainment and autonomous tech platforms within vehicles.,, In recent months, Microsoft has been ramping up licensing programs seeking to encourage the use of its patented technologies by auto manufacturers. At this year’s Consumer Electronics Show in Las Vegas, the company announced the Microsoft Connected Car Platform, a development platform for connected car technologies using the Azure cloud.

On March 3rd, Swedish telecommunications company Ericsson publicly announced its fair, reasonable and non-discriminatory (FRAND) terms and conditions for the licensing of standard essential patents (SEPs) for 5th Generation New Radio (5G/NR) as standardized by the 3rd Generation Partnership Project (3GPP). The decision to announce these terms publicly may be an indication that Ericsson is looking to avoid the fate of other mobile wireless chip makers, which have come under fire in recent months for their own licensing practices.

Donald J. Trump, the 45th President of the United States (POTUS), managed to get elected based at least in part on his real or perceived success as a businessman. In the last dozen years or so, he achieved this reputation in part by licensing his “Trump” brand name—a kind of intellectual property (IP)—to third parties… “It may come as a surprise to most people that many of Trump’s buildings, resorts and golf clubs aren’t even owned by him,” says Sonia Lakhany, trademark attorney and owner, Lakhany Law, PC, a national award-winning trademark law firm. “They just bear his name for branding purposes. In return, Trump collects fees for the use of his brand, without ever investing a dime into the actual projects.”

Given the complexity of many technologies, the rapidly changing nature of global markets, and the legal complexities in establishing worldwide licensing programs, it should come as no surprise that IP licensing offers benefits. When this work succeeds, everyone benefits – from innovators and IP owners to the general population as companies around the world gain greater access to new and improved technologies. To avoid missing out on the tremendous rewards and benefits of innovation, we must take full advantage of R&D’s potential in the complex and fast-paced markets of today that offer up opportunities to aggregate and license technologies in new sectors, geographical areas and markets.

The springing license does offer at least some protection in the future against patent aggregators looking to monetize IP assets, but it wouldn’t stop any party, including an actual patent troll, from sending a demand letter asserting rights to a patent outside of the Azure IP Advantage portfolio. But, how those in the program can be use one of Microsoft’s patents to defend against a patent troll seems rather questionable. By definition a patent gives the owner the right to do nothing other than exclude. So even if you have lawfully acquired rights through the owner you’ve acquired no affirmative rights, just a promise from the owner that they won’t exclude you from what it is that you are doing. Therefore, you cannot defend a patent litigation against a patent troll or any patent owner by pointing to a patent you have rights to use because that isn’t how a patent works.

On December 6th, 2016, the USPTO registered U.S. Trademark Registration No. 5095619, which protects the use of the standard character mark “PERFECT SEASON” in commerce. One week later on December 13th, the USPTO registered U.S. Trademark Registration No. 5100521, which protects the use of the standard character mark “19-0” in commerce… And trademarks only exist so long as they remain in use, so to keep the 19-0 registration the Patriots will have to use it in commerce or risk it going abandoned. So it will be interesting to see how the Patriots continue to use 19-0, or if they continue to use 19-0.

On Friday, January 20th, Cupertino, CA-based consumer tech firm Apple Inc. (NASDAQ:AAPL) filed a lawsuit against San Diego, CA-based semiconductor giant Qualcomm, Inc. (NASDAQ:QCOM) The lawsuit seeks $1 billion in damages which Apple alleges that Qualcomm is withholding from the iPhone developer in violation of an agreement between the two companies, including injunctive and other relief. The suit, which includes breach of contract claims, patent claims and antitrust claims, was filed in the U.S. District Court for the Southern District of California (S.D. Cal.).