Jacob Schindler

A few months entering the China market through a joint venture, Dominion Harbor Enterprises has confirmed that it plans to monetise its sizeable portfolio of former Kodak patents there. CEO David Pridham announced yesterday that the licensing company and its subsidiary Monument Peak Ventures would be working with Beijing East IP Law Firm to license the assets to local Chinese companies.

IP Hall of Fame inductee Dr Lulin Gao, Beijing East’s founder and chairman, said the “iconic” Kodak portfolio would form the basis of a new partnership between the two firms, adding: “Many Chinese firms will flourish worldwide with a license to this portfolio.” This gives some indication of the types of licensees Dominion and its local advisors will be looking to reach agreements with: domestic entities that have ambitions to grow beyond home soil. The 1,000+ families in the portfolio are said provide broad coverage in the US, Europe, China and Japan.

Dominion Harbor scored the Kodak portfolio in Intellectual Ventures’ biggest known divestment to date, back in February. The 4,000 or so total patents changed hands in a $525 million deal back in 2012, which was financed by a coalition of tech companies including Chinese giant Huawei, which received a licence to the portfolio in the process. That leaves plenty of potential customers in the market. Pridham told IAM in February that Asian smartphone manufacturers represented a major opportunity for the portfolio, which includes a wide range of imaging and camera technologies.

Dominion Harbor has long maintained that it sees litigation as a suboptimal way of monetising patents, and that holds just as true in Asia as it does in the US. It is expected that for the time being that its campaign to license the Kodak portfolio in China will focus on ‘soft’ licensing. Yet the choice of a Chinese law firm as partner indicates that further down the line, the option to litigate may be on the table.

Gao himself, speaking at IPBC Global 2017 in Ottawa last week, told attendees that US companies should “definitely” feel comfortable suing Chinese companies in China’s “efficient, cheap and fair” courts if they have made good faith attempts to offer them a licence. In March, Beijing East IP hired Erick Robinson, Qualcomm’s former head of patents for Asia, as director of patent litigation. It is relatively rare to see an American lawyer join a domestic Chinese law firm at a senior level; the hire suggests that Beijing East believes there is a significant commercial opportunity in persuading North American companies to pursue patent litigation in China.

In March, Dominion Harbor formed a joint venture with another Beijing firm, Paicheng International Technology Transfer (PITT). That partnership is aimed partly at reaching small and medium sized Chinese entities, which Dominion may involve in its efforts to facilitate transfer of patents from big businesses to start-ups through its Monument Bank of Intellectual Property. Pridham also told IAM at the time that PITT has access to a large capital pool and that down the road we might see the two launch patent fund aimed at acquiring Chinese assets.

So it appears the Dallas-based licensing company is pursuing a two-track strategy in China: relying on a local tech transfer specialist to facilitate collaborative relationships with smaller players, while enlisting a major law firm to help it license the major tech leaders. Dominion Harbor is being fairly transparent about its activities in China, and having enlisted respected partners like Gao – who served as SIPO’s founding commissioner – they have every reason to be. Many licensing companies tout China as a significant revenue opportunity but few seem to have figured it out. This may be the most comprehensive approach we have seen yet.