Jack Ellis

Barely a week after KAIST sued several major tech companies in what appeared to be the first ever patent infringement action initiated by an Asian university in the United States, another Korean educational institution has launched its own assertion campaign in the Northern District of California.

An affiliate of South Korea’s Sungkyunkwan University filed the suits earlier this week, targeting German optical imaging company Carl Zeiss and Vancouver-based LMI Technologies, which develops and markets 3D imaging products. In both complaints, SungKyunKwan University, Research & Business Foundation is alleging infringement of US patent 7,957,639 – ‘Method and system for determining optimal exposure of structured light based 3D camera’.

As reported by IAM last week, KAIST’s Eastern Texas lawsuit against GlobalFoundries, Qualcomm and Samsung Electronics appears to be the first time that an Asian university has launched patent infringement litigation – in its own name, at least – in the US courts.

Despite broadly negative public perceptions surrounding patent assertion, the danger of being painted with the ‘troll’ brush and advocacy from the likes of the Electronic Frontier Foundation, the general trend seems to be that universities are becoming bolder in their efforts to recoup value from their research activities. As KAIST and Sungkyunkwan have shown, Asian institutions – which are among the most prolific patent filers in the world – are no exception to this.

You’d think that many executives in that other part of the NPE landscape – the patent assertion entities, sovereign patent funds (SPFs) and aggregators – as well as brokers and intermediaries will be rubbing their hands with glee at the thought of the vastly increased number of assets that could come into play as a result of this. The huge numbers of research sector patents being created by Asia’s universities could represent a goldmine for them.

But both KAIST and Sungkyunkwan have decided to initiate their assertion campaigns themselves, in their own name, with no obvious help from third party NPEs. Many US universities have done the same. Some observers may ask: are NPEs being cut out of the picture?

It may be the case that the ‘troll’ label is simply too toxic for the universities; and, by pursuing these claims in their own name, the PR battle of arguing that they are seeking rightful compensation for their research investments is made easier.   

Another concern might be that, by partnering with an NPE and transferring their patents to it, a university cannot exercise as much control over the way in which its assets are deployed, and will have to give up at least some of the returns that they may generate.

All in all though, I think it is safe to assume that most NPEs will see the Korean university litigation as heralding a huge opportunity, rather than a threat to their business models. The simple fact is that for the most part universities, much like operating companies, cannot commit the resources needed to run multiple assertion, licensing and sales campaigns. Many will not have the requisite expertise in-house; and so dedicated private-sector patent monetisation companies will still very much have a part to play.

However, the situation is perhaps a little different when it comes to their public-sector counterparts, the SPFs. Korea, of course, was the first country to set up such an entity, with a significant injection of public funding; and one of Intellectual Discovery’s aims at its conception was to assist universities and other public research organisations to enforce and monetise their patent rights.

Intellectual Discovery has had a torrid time lately, with the resignation of its CEO in October just after the spotlight had been shone on its disappointing 2015 financial performance (in Korean, here), with an operating loss of 6.839 million won ($6 million) - almost three times as much as its earnings.

The SPF may well have a role in KAIST’s and Sungkyunkwan’s US lawsuits that is not immediately obvious; assignments records at the USPTO show that both universities have transferred patents to it in the past (Sungkyunkwan as recently as August this year). But if KAIST and Sungkyunkwan have set off on their litigation battles without any involvement from Intellectual Discovery, then the Korean public and their politicians will be quite right to ask questions about where their money is going.