Despite Down Market, IP Sales Grow

As many businesses are trying to save money during the current recession, a number are generating cash by selling or licensing some of their trademarks and patents.  One such company that is benefiting from the sale of intellectual property is Ocean Tomo, which provides appraisals, auctions, and other intellectual property services.

According to the Chicago Tribune, Ocean Tomo earned $30 million in 2008, and is expecting a growth of 25% this year.  In fact, the company launched a corporate recovery and restructuring practice to help companies better manage their intellectual property during the downturn.  Also, entrepreneurial firms see opportunity in the selling of intellectual property because it can provide a shortcut to success.  Thus, more customers are perusing Ocean Tomo’s catalog of intellectual property, and can pick up trademarks for a lot less money than a year or two ago.

James Malackowski, chief executive of the intellectual property merchant bank, said that companies are often selling their patents and trademarks.  “In the depressed economy, companies are re-evaluating their intellectual property portfolio.  They’re saying, ‘If we don’t need it, get rid of it.’”

One individual who has reaped success from the current market for IP is Calvert Hawkes, owner of Island Software in Sarasota, Florida.  He recently sold four patents at an Ocean Tomo auction in Amsterdam in June, for a total of about $400,000.  Hawkes had filed the patents himself, and kept the costs to roughly $10,000 per patent.

Yet, one must beware of buying old trademarks or other IP, because often times the buyer still must put money into the brand to make it profitable once again.  However, if you are an entrepreneur or own a start-up, looking into the current buyer’s market in IP could be extremely advantageous.

iPhone to Add Video-Recording?

One common complaint that many iPhone owners have about their mobile device, is that it lacks any video-recording capabilities.  In fact, only those who jailbreak their iPhone can enjoy video recording with apps like Cycorder.  According to The Boy Genius Report, the patents revealed by Apple last week include details that hint at video recording for future iPhones.  As the patent states:

The device supports a variety of applications, such as one or more of the following: a telephone application, a video conferencing application, an e-mail application, an instant messaging application, a blogging application, a photo management application, a digital camera application, a digital video camera application, a Web browsing application, a digital music player application, and/or a digital video player application.

Since the patent only mentions a digital video camera and doesn’t provide any further detail, all anyone can do is speculate.  The patent also mentions potential apps for video-conferencing and many other cool features, but some are wondering if Apple included these potential features just to cover all their bases.  Until the release of the new iPhone, everyone will have to play the wait and see game.

Micron and Mosaid Settle Patent Dispute

In July 2006, Mosaid filed a lawsuit in a U.S. District Court against Micron, claiming that it had infringed on 9 of its U.S. patents.  However, according to EETimes, the two companies have settled all litigation by entering into a patent cross-licensing agreement.

Under the terms of the agreement, Mosaid will acquire 400 Micron patents.  Conversely, Micron receives a 10-year license to certain Mosaid patents, life-of-patent licenses for all patents through a defined capture period, and a term license for subsequent patents.

Micron’s DRAM, flash, and other memory and image sensor products are licensed under the agreement, and Micron will make a series of cash payments to Mosaid.

“The transfer of a large number of patents from Micron—an innovative company that is known for the strength of its patents—will contribute greatly to Mosaid’s semiconductor patent licensing program,” said John Lindgren, Mosaid president and CEO, in a statement.

USPTO Will Host Public Roundtable Discussion

As the United States Patent and Trademark Office announced on its website, the government agency will conduct a public roundtable discussion on possible deferred examination.  The meeting is in response to members and stakeholders of the IP community, who have suggested that the USPTO adopt a deferred examination procedure. 

The agency will conduct the public roundtable discussion on Thursday, February 12, 2009, at the USPTO’s headquarters in Alexandria, Virginia.  The stated goal of the roundtable is to obtain public input on deferred examination from diverse sources and differing viewpoints.  All who are interested in the topic will be able to attend the event, but only selected members will have the opportunity to speak.  However, everyone may access the event via a live webcast.

Former USPTO Director to Join Law Firm

For the unemployed these days, finding a job may be tougher than usual.  Not, however, if you’re the former Director of the United States Patent and Trademark Office.

In a press release, Foley & Lardner LLP announced today that former Under Secretary of Commerce for Intellectual Property and USPTO Director, Jon Dudas, will join their law firm.  Dudas will join the firm as a partner in their Washington, D.C. office, working with the IP and Public Affairs practices.

Nominated by President George W. Bush in March 2004, Dudas recently resigned from his post last month.  Although Dudas does have his critics, he spearheaded a number of patent cooperation and development missions with the EU, China, Japan, Korea and other countries.  Some believe these actions should be helpful to Americans establishing and enforcing patent rights globally.

As Dudas remarked, “Joining Foley was a natural next step after having the honor to serve at the USPTO.  The firm’s platform offers me a tremendous opportunity to continue fostering innovation and intellectual property at this crucial time.”

Reebok Battling Pair of Patent Lawsuits

Lacrosse equipment manufacturer, STX LLC, has filed a lawsuit against Reebok, alleging the Canton, Massachusetts-based company of infringing on patents for lacrosse sticks.  STX claims that their 6K ILL lacrosse sticks infringe on a 2004 patent, but Reebok began selling their own version this past fall.  According to the Patriot Ledger, STX is asking for an injunction plus other damages.

In another recently filed lawsuit, William Cummings and Jay Levine are claiming patent infringement for a “stabilizer athletic shoe.”  In addition to naming Reebok, the suit also names Reebok’s parent Adidas USA, as well as Nike, New Balance, and Under Armour.

Apparently, the patent in question describes an athletic shoe that includes features that increase foot and ankle stability to minimize injuries.  The lawsuit is seeking an injunction against the named companies, as well as damages and attorney’s fees.

Edward Haddad, New Balance’s vice president of intellectual property, said the following:

[Our company] respects the intellectual property rights of all individuals and companies.  During our development process, we do extensive research to ensure we do not infringe on the patents of others.  However, we will go through our due diligence to review Mr. Cummings’ claims and respond to the lawsuit accordingly.

Supreme Court Asked to Take Up Bilski Case

The Law firm Finnegan LLP is asking the Supreme Court to review a patent case decision which placed a question mark over the ability to patent software and financial strategies.  As reported by Reuters, the case is most commonly referred to as the Bilski case, and it involved whether an inventor can patent an abstract process which involves nothing more than thoughts.

Bilski and Rand Warsaw founded their company, WeatherWise, to sell services based on their hedging method that is used by some utilities.  The USPTO rejected their patent application in 2000, and the patent board upheld the rejection in 2006.  Next, the case moved on to the U.S. Court of Appeals on October 30.  Once again, the court upheld the prior decisions because the hedging method was not tied to a particular machine and did not result in a transformation.

Business methods were considered not patentable until a 1998 decision by the same appeals court.  One of the best known examples of a patented business method is Amazon’s one-click process to buy goods on the internet.

The original case was watched closely by software makers, Internet companies, investment houses, and many other businesses.  It is safe to say that all those who watched the first case, will again be watching this appeal, especially if it heads to the Supreme Court.

Chemical Engineer Professor Battling University Over IP

Many tend to think that Universities often support the research conducted by its professors.  Yet, which side possesses the rights to inventions that are developed in University laboratories?  That question is the subject of a current dispute.

The University of Missouri filed a lawsuit last Monday in a Kansas City Federal Court against chemical engineering professor Galen Suppes.  As reported by KansasCity.com, the University claims that Suppes will not release the rights to more than 30 inventions and 11 potential patents that were developed in his campus labs.

Meanwhile, Suppes argues that the University has failed to properly pursue commercial projects related to his research.  He claims that the school has a faulty process for deciding how to waive its legal rights to inventions, when they are deemed to lack the potential to make money.

This long-standing dispute between the two began in 2001, shortly after Suppes was hired away from the University of Kansas.  The outcome of this case could have vast-reaching effects for the world of academia regarding innovation on college campuses.  It can be assured that professors from all around the country will be paying attention to this suit.

Apple Awarded Touch Screen Patent

Palm has recently defended the upcoming release of the Palm Pre by stating that it can easily defend itself against any potential patent infringement lawsuit.  Well, the United States Patent and Trademark Office may have just thrown Palm a curveball.

The USPTO has granted Apple a key patent for the iPhone entitled “Touch Screen Device, Method, and Graphical User Interface for Determining Commands by Applying Heuristics.” The patent, which was applied for in September 2007 and granted on January 20, 2009, covers the product’s distinctive multifunction touch screen and all associated gestures such as pinch, swipe, and rotation.  According to Tech News World, it also encompasses technology behind the iPhone’s hardware, operating system and camera functions.

With Apple’s newest patent being so wide-ranging, it seems to give Apple the ammunition it needs to go after competing products.  Although there are differences between the Pre and the iPhone, most notably the Pre containing a qwerty keyboard that slides out from under the screen, many seem to think that the Pre is the device that will most likely be impacted in the near future. 

It remains to be seen whether Apple will litigate against any company, but many think it’s inevitable.  However, will Apple also go after products such as the Blackberry Storm?  It’ll be interesting to see how the industry reacts to this new patent.

Silicon Valley Law Firm Offering Patent Services for Free to Encourage Green Tech

Drawing upon Barack Obama’s message of service above self, Raj Abhyanker, founder of Ray Abhyanker LLP, is trying to bring new technologies to the market by creating an added incentive – free U.S. patent protection and legal services for Clean Tech & Green-Energy startups.

According to the Law Firm’s recent press release, it does say that only individuals and self-funded American companies, who also have a genuine desire to build a scalable business, will be considered for the program.  Companies will have to apply and be interviewed to be accepted in the program, and selection to receive the free legal services will be based on a number of factors, including the strength of the technology. As Raj Abhyanker said:

Energy usage and the environment are two issues that Obama speaks of that have a personal resonance with me. Having been both a Silicon Valley entrepreneur and patent attorney, I shall offer entrepreneurs, engineers, scientists, and self-funded small businesses a helping hand to extend my experience and expertise in intellectual property protection, corporate formation, and venture capital fundraising.

Raj Abhyanker is a 25-attorney law firm which represents clients in IP, patent applications, and high technology transactions.  They have offices in California, India, and China.

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