Patent Law Practice Center

Technicolor Prepares to Use its 40,000 Patents to Enter the Mobile Patent Wars

Technicolor, the French company that invented the process for color movies, currently holds an estimated 40,000 valuable patents in digital audio and video. Their innovations go back almost a century and have been involved in licensing deals for said innovations for almost sixty years. The longevity of the impact of Technicolor’s visual, audio, and optic patents has somewhat caused them to be taken for granted. Not many can remember a time without Technicolor, but the company is now taking proactive steps to remind us of what it has done, and more importantly, what patents remain active in their arsenal.

As smartphones, tablets, and other electronic devices are igniting international patent litigation over what company is infringing on another company’s technology patent, Technicolor is literally breaking these devices apart. The company has devised a team of 220 employees whose purpose is to take apart every popular electronic device to find possible patent infringements. (more…)

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…)

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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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…)