Patent Law Practice Center

Is IP Management Part of a Board’s Due Diligence?

This week’s PLI seminar, IP Driven M&A, highlighted the important role intellectual property plays in determining the value of a company or in strategizing a merger or acquisition. The intangibility of IP is no longer viewed as a hindrance to its monetization, thus it is now treated like any other corporate asset. If purchasers are now recognizing IP as a part of their strategic due diligence, it makes sense that a major AOL shareholder is bringing IP mismanagement issues to the attention of their company’s board of directors.

According to news reports, AOL investor, Starboard Value LP, filed a request to replace five members of  the company’s board of directors based on the belief that AOL’s patent portfolio has “gone unrecognized and underutilized”, thus causing Starboard to call for replacements on the board of directors because they feel “increasingly uncomfortable with the direction of the Company and the leadership of the Board.” Leaves one wondering if IP mismanagement is a breach of fiduciary duty on the directors’ part, such that their removal from the Board is the best remedy for the benefit of the shareholders. (more…)

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 Docs: Impact of Advances in DNA Sequencing Technology on Genetic Diagnostic Testing

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, “Impact of Advances in DNA Sequencing Technology on Genetic Diagnostic Testing”, and it discusses how because DNA sequencing soon may be within the reach of the consumer, the current patent protection (and the IP protection model underlying it) for genetic diagnostic testing may become obsolete.

Here is an excerpt: (more…)

Top 10 IP Litigation Battles of 2011

An article on Law.com’s Corporate Counsel provides a great breakdown of the biggest Intellectual Property litigation wins of 2011. Not surprisingly, there is a predominance of patent litigation on the list. The article references a survey conducted by PricewaterhouseCoopers that concludes patent holders brought 2,892 U.S. infringement lawsuits in 2010—an increase of more than 5 percent over the year before. From the list of the biggest Intellectual Property litigation wins, below are the patent based cases. For the list in its entirety, click here.

1. Jobs’s Job One . . .

The smartphone market moves fast, so a court order forcing a manufacturer to sit out a product cycle can be devastating. That’s part of the reason the International Trade Commission has become a red-hot forum for smartphone patent disputes. The trade body can’t award money damages, but it can impose costly “import bans” on foreign products sold in the United States. Smartphone manufacturers have brought a slew of ITC actions in hopes of securing such bans against rivals.

In November, Apple and its outside lawyers at Orrick, Herrington & Sutcliffe scored a major defense win in one of the first smartphone disputes on the ITC’s docket. S3 Graphics, Inc., a Fremont, California–based graphic chipmaker, had filed an ITC action against Apple in May 2010, claiming Apple’s iPhone infringed four of its patents. In July an administrative judge ruled for S3 Graphics. But in November, a six-judge panel reversed, ruling that Apple did not infringe any of the asserted patents.

The loss for S3 Graphics was also a loss for Taiwan-based HTC Corporation, the leading maker of Android phones. It announced in July that it would acquire S3 Graphics for $300 million in a bid to bolster its ammunition in patent fights. HTC told The Wall Street Journal in November 2011 that it was considering canceling the acquisition in light of the ITC’s ruling. (more…)

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.”