Patent Law Practice Center

Richard J. Lutton on the Valuation Challenge

In the world of high-tech M&A, patent analysis has historically been relegated to the later “due diligence” stages of an M&A transaction and the focus has been primarily if not exclusively on patent risk factors (e.g., the target’s exposure to third party infringement claims or the potential loss of a critical inbound license).  Except in rare cases, the strategic value of the target’s patent portfolio has not been a factor in sourcing or pricing the deal.  Now all that has changed and strategic patent value has been a driving force in some very significant recent M&A transactions.

During PLI’s “IP Driven M&A: The Revolution has Arrived”, Richard J. Lutton, Jr, former Apple CIPIO, spoke on a panel discussing means of reconciling patent valuation vs. corporate valuation techniques. Lutton reiterates that strategic patent value has been a driving force in some very significant M&A transactions, and provides the factors that he would consider in valuing a patent portfolio.Check out the video clip below:

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Troll Busters®’ Attack on Nucleic Acid Patent One of the Reexamination Requests Filed the Week of June 4, 2012

Here is our latest weekly installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor…

Jeff Oster, who operates out of offices on Mercer Island, Washington under the descriptive nom de plume “Troll Busters®,” was busy last week.  On Wednesday, he filed a 356-page request, containing 16 distinct SNQs, seeking reexamination U.S. Patent No. 5,928,907 (see ex parte Request No. (6)).  It’s always difficult for an outsider to measure the strength of a reexamination request, but this one has the look and heft of an effective one.  The Request begins with the description of Troll Busters as “working to promote new technologies by protecting the public from over-broad patent rights used for extortion and ‘troll-like’ demands….”

Arteris requested reexamination of Sonics’ on-chip system patent (see inter partes Request No. (4)).  This is at least the second Sonicspatent challenged by Arteris.  Sonics has sued Arteris in the Northern District of California for infringement of those two patents, plus six other patents. (more…)

Patent Docs: IPO Releases List of Top 300 Patent Holders for 2011

We are pleased to share the latest from our friends at PatentDocs.org, the Biotech and Pharma Patent Law and News Blog. The authors, Donald Zuhn and Kevin Noonan, are partners at McDonnell Boehnen Hulbert & Berghoff, LLP, and contribute to Patent Docs on a daily basis.

Today’s post is entitled, “IPO Releases List of Top 300 Patent Holders for 2011,” and it reports on the Intellectual Property Owners Association’s recent annual list of the top 300 organizations receiving the most U.S. patents.  The article notes that the USPTO stopped releasing an annual list of top patent recipients so as to “discourag[e] any perception that we believe more is better.” It also takes a closer look at the role life sciences companies and organizations play as top patent holders on the IPO’s list. (more…)

Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Patent Docs: Tomato Genome Determined – The recent news that the “entire genomic DNA sequence of the tomato (Solanum lycopersicum) has been deciphered” inspired this post. It takes an in depth look at the “interesting relationships between tomatoes and closely-related species.” No discussion of whether there will be a push to patent the tomato genetic sequence.

2) IP Watchdog: Mobile App Developers Gain Ally to Fight Patent Infringement – This post highlights the attempt to promote innovation within the mobile app industry. The world’s largest patent research community announced the formation of a partnership with a global trade organization for mobile software developers, which this post argues could in fact impact the mobile app industry in a positive way by benefiting the small businesses and individual entrepreneurs behind the technology. (more…)

Buying Patents by the Pound: Today’s Patent-Acquisition Boom and Tomorrow’s Antitrust Consequences

The market for patents is hotter than it has ever been, particularly in technology fields for smartphones and Internet searching. On June 26, 2012, PLI is hosting a one hour briefing discussing the recent multi-billion dollar patent portfolio transactions and how the size of these transactions requires them to be presented to and cleared by regulators in the U.S. and abroad to make sure competition won’t be harmed.

In addition, many of the affected patents have been asserted in litigation already, and others are bound to be soon.  That will bring further antitrust scrutiny, in all likelihood including counterclaims that the new owners’ assertion of the patents violates the antitrust laws.

The one hour briefing is entitled, “Buying Patents by the Pound: Today’s Patent-Acquisition Boom and Tomorrow’s Antitrust Consequences,” and features Charles S. Crompton, of Latham & Watkins LLP, and Ronald S. Laurie, Managing Director & Principal, Inflexion Point Strategy, LLC.

The panelists will discuss the forces driving the current strategic patent acquisition market, market developments that can be expected, how a potential market participant can prepare for antitrust scrutiny, and the possible approaches taken by the courts and regulators.

Register for “Buying Patents by the Pound: Today’s Patent-Acquisition Boom and Tomorrow’s Antitrust Consequences,” today!