Jacob Schindler

In the patent world, at least when it comes to litigation, Australia’s largest public sector research body is best known for a yearslong effort to enforce a foundational wireless local access network (WLAN) patent that netted well over $400 million in revenue - as well as ludicrous accusations that it is a patent troll. In May, that effort finally came to an end for the Commonwealth Scientific and Industrial Research Organisation (CSIRO), almost five years after its last suit over the wireless technology. But a recent case filed by BASF Plant Science in a US district court sheds light on some of CSIRO’s more recent licensing efforts, and may potentially preview further assertions.

On the WLAN front, the most recent win for the Australian research organisation was a $16 million judgment against Cisco in the Eastern District of Texas. But, in a familiar story, the Court of Appeals for the Federal Circuit found fault with the decision, and vacated the damages award in December 2015, sending it back to the lower court for re-assessment. Finally, after nearly six years, the parties settled in May 2017, seemingly closing the book on the CSIRO WLAN patent for good.

With around 4,000 total patent assets, CSIRO has plenty more options for how to extract value from its IP assets going forward. Late last year, it announced it would be re-investing at least A$30 million ($23 million) of its WLAN assertion revenues into the CSIRO Innovation Fund, to support commercialisation of technologies developed within its own labs as well as Australian universities.

Meanwhile, a lawsuit filed two months ago by BASF Plant Science points toward another IP licensing initiative in a very different sector that CSIRO and its partners have been pursuing for several years. The organisation is working with Australian company Nuseed and the Australian Grains Research and Development Corporation to commercialise canola that contains long chain, omega-3 fatty acids – health-friendly fish oil. BASF has teamed with Dow AgroSciences and Cargill on a similar effort.

Beginning in October 2016, according to court documents accessed using Lex Machina, Nuseed has conducted negotiations with BASF, which it wants to take a licence to a portfolio omega-3 patents; these name CSIRO as the assignee. According to BASF, Nuseed has been clear about its intention to litigate if a deal could not be reached. By April 2017, talks appear to have reached an impasse. “With the numbers you’re talking about, there is no path forward,” a Nuseed representative is quoted as saying. BASF seemingly agreed, suggesting the parties “should be in court” if Nuseed was unwilling to revise its offer.

So, on that same April day, BASF brought an action for declaratory judgment of invalidity of eight US patents against Nuseed Americas. After a judge ruled that CSIRO, not Nuseed Americas, was the correct party to bring such an action against, it filed an action naming the research organisation in September, this time asking the court to invalidate 12 CSIRO-owned rights.

CSIRO CEO Larry Marshall, now in his second year at the helm, has called for the institution to get better returns from IP programmes. The effort to cross-license its omega-3 patents is probably just one of several IP-related endeavours underway at the organisation, alongside numerous venture activities.

CSIRO is just one of the leading Australian patent owners represented on the speaking faculty for the upcoming IPBC Australasia, which will take place in Melbourne on November 30th. There is still time to register at this link.