Patent Law Practice Center

Facebook Continues to Load Its Patent Arsenal

The patent wars are all the rage amongst tech companies these days. Not too long ago, Microsoft Corp. made news when announcing it purchased approximately 925 patents from AOL, Inc. for an estimated $1.1 billion dollars. The commentary regarding that purchase was equally focused on the impressive sale price for the amount of patents purchased as it was on the fact that tech companies are looking twice at their patent portfolios as litigation and licensing tools.

The latest development is that Facebook, who is currently in a patent infringement battle with Yahoo, recently purchased 650 of the AOL patents from Microsoft for an estimated $550 million dollars. This recent acquisition comes just one month after Facebook purchased 750 patents from IBM. (more…)

Twitter’s Innovator’s Patent Agreement: The Future or Foolish?

Tech companies’ battles over patent portfolios have become the new norm in patent litigation. Yahoo sued Facebook over the alleged infringement of 10 patents, Oracle and Google are battling over operating system patents, Apple and Samsung have patent litigation in 10 countries simultaneously, and Microsoft just purchased 800 patents from AOL for over $1.1 billion dollars. We have previously reported on the growing use of patents as more than just defensive tools. But last week, Twitter announced it would not participate in such litigation.

Twitter’s Innovator’s Patent Agreement proposes that if a patent is assigned to Twitter, Twitter promises it won’t use that patent to sue anyone, except for defensive purposes or unless the engineers grant permission to the company to do so. According to Twitter’s announcement,

The IPA is a new way to do patent assignment that keeps control in the hands of engineers and designers. It is a commitment from Twitter to our employees that patents can only be used for defensive purposes. We will not use the patents from employees’ inventions in offensive litigation without their permission. What’s more, this control flows with the patents, so if we sold them to others, they could only use them as the inventor intended.

This is a significant departure from the current state of affairs in the industry. Typically, engineers and designers sign an agreement with their company that irrevocably gives that company any patents filed related to the employee’s work. The company then has control over the patents and can use them however they want, which may include selling them to others who can also use them however they want. With the IPA, employees can be assured that their patents will be used only as a shield rather than as a weapon.

Twitter’s proposed patent litigation model has received support as well as criticism. Supporters applaud Twitter for actively promoting creativity and innovation via its promise to not actively pursue legal recourse. Such a business model also reduces the amount of money spent by the company for litigation. Critics, including frequent PLI speaker Mark Radcliffe, on the other hand, question whether Twitter made a wise decision considering they could end up needing to pursue patent infringement litigation in the future. By granting technology engineers with the right to veto a legal action, Twitter would essentially be granting the power to make legal decisions to non-lawyers. Meanwhile Twitter’s plan gets implemented, the patent wars will rage on in courts all over the world. Time will tell what impact Twitter’s stance will have on patent litigation.

Patent & Technology Licensing with Joseph Yang

Licensing transactions are becoming more complex than ever. At PLI’s Advanced Licensing Agreements 2012 seminar last week, Joseph Yang, Founding Partner of PatentEsque Law Group, LLP and Co-chair of the seminar, lead the panel entitled, “Patent & Technology Licensing”. He discussed the most common mistakes that occur when licensing patents, and shared personal tips on how to avoid making the mistakes that could gravely cost you later.

Technology vs. Intellectual Property

Patent licensing and technology licensing are very different. A patent is a legal right to stop someone from utilizing technology covered by the patent. Often, when someone takes a patent license, they don’t even need your technology.  So the motivation for taking a patent license is for the licensee to be able to utilize its own (infringing) technology without being sued. In contrast, when someone wants a technology license,  it usually doesn’t have its own technology, and needs access to yours. Typically, the technology licensee doesn’t even care if you have a patent. Understanding these differences is key to structuring a license to cover what you mean to gives (but not more). When patents and technology are co-mingled in a contract without the intention to give away both, it could cause big problems. Tips: Be careful to define “Technology” and “Patents” separately in a contract, rather than commingling them. 

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Yahoo Threatens Facebook with Patent Infringement Claims

In one of the first patent fights within the social media arena, Yahoo claims that 10-20 of its technology patents are currently being infringed by Facebook. The New York Times DealBook reports that Yahoo has alerted Facebook that it will be forced to engage in a patent infringement lawsuit unless Facebook agrees to enter a patent licensing agreement. The patents in question cover technologies relating to advertising, the personalization of Web sites, social networking and messaging.

The company may have lost its luster in comparison to its online peers like Google, Facebook, and Twitter, but Yahoo’s intellectual property may in fact be peerless. It appears that of the patents in question, some of them include one of the first patents ever awarded to Yahoo, and their patent portfolio isn’t one to just shrug off. According to IEEE Spectrum, a technology publication, it ranked Yahoo’s patent portfolio in 2011 as being the most valuable among those for communications and Internet services. (more…)

Patent Law Institute Live Blog: Creating a Bulletproof Patent License – The Impact of Recent Court Decisions in Drafting License Agreements

The Patent Law Institute live blog continues with the panel entitled, “The Impact of Recent Court Decisions in Drafting License Agreements”. This panel is led by Peter Brown, the national leader of Baker Hostetler’s Technology Law Practice. Peter discusses big issues facing patent owners trying to license their patents, the crucial patent reps and warranties, strategies to maximize license revenue, and how the America Invents Act affects patent licenses. Here are the highlights: (more…)