s a seasoned technology consultant and has advised AmLaw 100 firms and Fortune 500 corporations on IP licensing and litigation in technology areas such as telecommunication networks, enterprise software, search engine and internet technologies, consumer hardware and operating systems. He and his team at Copperpod IP are passionate about helping clients do what they do best, but do it more and do it faster.
Fundamental to building and executing any successful patent licensing program is the ability to find and prove evidence of infringement, often through reverse engineering methods. A product is purchased and deconstructed to understand how it was built, how it works and what it is made of. The process of reverse engineering usually involves multiple types of analysis; which type of reverse engineering to apply is determined by the type of technology and the industry in which the patented invention is being used. Intellectual property law does not discourage innovators from dismantling the inventions of their competitors, whether the technology is software, electronic, chemical, or mechanical. But there are still limits on how the results of a reverse engineering effort can be exploited.
Courts around the world have determined appropriate methodologies for calculating damages on standard essential patents (SEPs) for which patent holders have made an assurance to license on fair, reasonable and non-discriminatory (FRAND) terms. Determinations of patent holdup, licensee holdout, use of worldwide portfolio licensing, incremental value rule, etc. are included in these decisions. The court determines damages based on the below-referenced judgments and FRAND terms when reviewing SEP infringements. Under most patent laws, infringement damages are set based on factors including actual loss due to infringement, if the actual loss is difficult to determine, gains of the infringer, and if both actual loss and gains are not available—determination of appropriate multiples of a reasonable royalty fee.
On Tuesday, April 10, 2018, a federal jury in Eastern District of Texas awarded VirnetX Holding Corp. (VHC) with a $502.6 million verdict against Apple Inc. finding that Apple was infringing 4 secure communications patents – providing a new chapter to the now eight-year old battle between Zephyr Cove, Nevada based VirnetX and Cupertino-based Apple, Inc.
On November 18, 2016, Paypal Inc. filed an objection at the Indian Trademark Office accusing Paytm, an Indian mobile wallet company, of trademark infringement. The objection comes at the heels of the recent windfall made by the latter on account of a cash-strapped nation moving rapidly towards a cashless normal. For six years, Paytm had been steadily becoming a household name in middle-class India – until it really hit the jackpot on November 8, 2016 when the Indian Prime Minister Narendra Modi announced demonetization of currency notes of Rs. 500 and Rs. 1000 – invalidating overnight 80% of the country’s cash in circulation.
Rovi will be looking to add about 1100 patents that TiVo currently owns and strengthen its portfolio of over 10,000. Rovi generates over 27% of its income by licensing it’s IP to prominent cable TV providers. A great chunk of Rovi’s income also comes from litigating against other players infringing on its patents… TiVo has been very active in filling patents on data acquisition and data processing; which would come in handy for Rovi’s media guides to improve on. The average strength of TiVo’s patents in certain domains like recommendations and filtering relevant results could be directly applicable to OTT providers. TiVo also has strong patents in security, data processing and which will be valuable to Rovi in pursuing licensing deals with Amazon, Hulu and Netflix.
Source Code Review is the most powerful tool in a litigator’s war chest in patent and trade secrets cases. An important consequence of the judicial climate shifting farther away from business methods and closer to technically complex IP is that receiving parties now face a higher burden of proof and subsequently higher legal costs. Not only are receiving parties now required to be more diligent prior to a case filing but they also end up spending extra thousands of dollars reviewing millions of lines of code to successfully formulating their infringement arguments. A significant cost and exposure risk can be avoided simply by a diligent assessment on both sides as to what source code needs to be produced to the receiving party.
The recent Model 3 announcement by Tesla took the industry by storm and saw Tesla collecting a whopping $276 million in preorders in a matter of days. In focus in particular was the autopilot features on the new Tesla car – which meant that Autonomous Cars (a.k.a. driverless cars or self-driven cars) are finally breaching the line between concept and mainstream… Though efforts have escalated significantly in the last five years, autonomous cars are not a new concept. Initial research can be traced back all the way to the 1920s.
5G is expected to generate even higher revenues from applications and services due to explosion on mobile application and services because of broadband-like speed, which are crucial for some of the emerging technologies like IoT, Wearables and Virtual/Augmented Reality. Revenues for 5G services will exceed $65 billion by 2025, according to a forecast from Juniper Research… The number of patents and key underlying technologies for 5G mobile networks will evolve significantly within next 5 years. However, early analysis shows that Qualcomm will still be the IP leader but may be not as dominant as in 4G-LTE. The device makers like Apple, Samsung, and Lenovo are also working on 5G IP development in order to minimize IP licensing costs.