Patent Law Practice Center

Patent Attorneys Leave Firms for NPEs

OK it’s Super Bowl season so forgive the football picture but are some top patent litigators switching sides?

An article by the Wall Street Journal describes the transition of two patent attorneys who left incredibly lucrative careers representing some of the biggest companies in the world to work for nonpracticing entities:

As recently as three years ago, the two lawyers were among a small group of elite attorneys used by U.S. companies to defend their patents in courtrooms.

Mr. Desmarais was a lawyer for such companies as International Business Machines Corp., GlaxoSmithKline PLC, Boston Scientific Corp., Alcatel-Lucent SA and Verizon Wireless. The clients of Mr. Powers included Cisco Systems Inc., Merck & Co., MicrosoftCorp., Oracle Corp., Samsung Electronics Co., and Apple Inc.

But in the last couple of years, both men have turned about-face. They have created practices to represent not the largest, most tech-savvy companies, but to work for patent-holding plaintiffs known as “nonpracticing entities,” or what some critics call “patent trolls.”

Take a Picture, It’ll Last Longer: The Role of Kodak’s Patent Portfolio in its Bankruptcy

As the progression of technology has proven before, film has gone the way of the VHS, tape cassette, and arguably the paper back novel. On January 19, 2012, Eastman Kodak filed for Chapter 11 bankruptcy protection in U.S. Bankruptcy Court in the Southern District of New York. Kodak made the transition from basing its company on film to digital, but it wasn’t enough. Citigroup will be lending the company $950 million in financing to maintain daily operations. After reviewing Kodak’s bankruptcy court documents, it has become clear that it is Kodak’s juicy patent portfolio that has not only burdened the company but will also hopefully sustain the company as it goes through bankruptcy.

What is interesting about Kodak’s patent portfolio is that one would assume having an estimated $3 billion dollars worth of intellectual property, including digital image capturing patents, would have saved the company from ever having to declare bankruptcy in the first place, especially considering Kodak was the first to invent the digital camera in 1975. As it turns out, the inability to enforce patent licensing rights and infringement damages cost the company more than their impressive patent portfolio could salvage. (more…)

Strategies For the New Patent Law Frontier

In the current economy, more and more companies are seeking to monetize their patent portfolios.  If your involved in the utilization of patents as business assets, you know that understanding patent transactions has never been more important. Earlier this week, I had an opportunity to attend PLI’s Advanced Patent Licensing 2011 via webcast (available soon on demand) where an impressive group of experts offered an abundance of advice on patent licensing. I found Mark S. Holmes’, CEO at PatentBridge and Co-Chair of the program, segment where he offered practice tips for patent licensing particularly useful.  Here is an excerpt from his presentation materials:

What is a “Suitable” Confidentiality Agreement?

-Includes basic terms such as that anything said or written as part of the negotiations would not be disclosed to third parties

-Could a potential licensee file pleadings sufficient to establish a declaratory judgment without disclosing the confidential information? (more…)

PLI’s Advanced Patent Licensing 2011: Current Developments and Best Practices

In the current economy, more and more companies are seeking to monetize their patent portfolios.  If your involved in the utilization of patents as business assets, you know that understanding patent transactions has never been more important.  I recently received this outline from Joseph Yang, Partner at PatentEsque Law Group and Co-Chair of PLI’s Advanced Patent Licensing 2011 (scheduled for October 24, 2011 in San Francisco and via live webcast) that explores the law of patent licensing and the business of licensing.

Here is an excerpt from the outline:

In any “patent” or “technology” licensing effort, it is critical to understand the interplay between the business and legal aspects of the transaction.  The legal team must build a legal structure that is consistent with the requirements of the law, while the business team must have a deal structure that meets the grantee’s business needs.  Unfortunately, there is often a inadvertent chasm between the two sides — the lawyer has little experience in business, and vice versa. (more…)