Joff Wild

I have just received the following press release from Intellectual Ventures. It is, I believe, the first of its kind the firm has ever put out:

Intellectual Ventures files three separate patent infringement complaints against nine companies

BELLEVUE, Wash. — December 8, 2010 — Today Intellectual Ventures (“IV”) enforced its rights and filed patent infringement complaints in the U.S. District Court of Delaware against companies in the software security; dynamic random access memory (DRAM) and Flash memory; and field-programmable gate array (FPGA) industries.

“Over the years, Intellectual Ventures has successfully negotiated license agreements with some of the top technology companies in the world. However, some companies have chosen to ignore our requests for good faith negotiations and discussions,” stated Melissa A. Finocchio, Chief Litigation Counsel, Intellectual Ventures. “Protecting our invention rights through these actions is the right choice for our investors, inventors and current licensees.”

The complaints were filed against the following companies:

In the software security industry:

Check Point Software Technologies, Ltd.

McAfee, Inc.

Symantec Corporation

Trend Micro Incorporated

Lead attorney for this action: Parker Folse of Susman Godfrey, LLP in Seattle

View the full complaint here.

In the DRAM and Flash memory industry:

Elpida Memory, Inc.

Hynix Semiconductor, Inc.

Lead attorney for this action: Jared Bobrow of Weil, Gotshal, & Manges, LLP in Redwood Shores, Calif.

View the full complaint here.

In the FPGA industry:

Altera Corporation

Lattice Semiconductor Corporation

Microsemi Corporation, who recently acquired Actel Corporation and its FPGA business

Lead attorney for this action: John Desmarais of Desmarais, LLP in New York

View the full complaint here.

Joe Farnan of Farnan Law, LLP is Intellectual Ventures’ Delaware counsel in all three actions.

Well that is a development. In 2006, Nathan Myhrvold, IV's co-founder, told Business Week that "litigation is a huge failure". It is, he went on, "a disastrous way of monetising patents". For a long while the firm made a major play of never having launched an action, though earlier this year it emerged that patents formerly owned by IV were being litigated. Then when I interviewed Joe Chernesky, the firm's head of hardware licensing, he told me that IV always wanted to negotiate, but "if we can't reach an agreement, we are prepared to litigate". And so it has come to pass.

Interestingly, two of the lawyers IV is using in its actions are closely associated with NPEs. John Desmarais is well known to readers of this blog as the founder of Round Rock Research, the NPE that bought over 20% of the Micron Technology portfolio last year and is now in the process of monetising it. He also set up Oasis Research, an NPE that is currently busy in the Eastern District of Texas enforcing patents it acquired from IV. For its part, Susman Godfrey - whose Parker Folse is acting for IV in the software security case - is well-known for representing NPEs. I suppose that if you are going on the attack, it makes sense to use counsel who know exactly what they are doing.

Anyway, however you look at it, IV has today crossed the Rubicon. There is no going back now: it is just like any other patent owner that has discovered sometimes the courts are the only option - especially if a key part of your business is licensing patents. What the firm will be hoping for, I expect, is a quick settlement of all the cases now, before they end up in court. Getting involved in US litigation is a very big step, even if it is unavoidable. Not only could the discovery process throw a lot of unwelcome information into the public domain, but there is also the chance that at the end of it IV might lose. With a few court victories behind it IV will be an even more intimidating beast than it is currently. But should the firm fail to enforce its rights at the first time of asking it will undoubtedly lose a lot of its lustre. The stakes are high, are they not?