The IP personalities of 2012 revealed, Part One 02 Jan 13
Normally IAM reveals its IP personalities for a given year in one go; but for 2012 we are giving a little more space to our explanations, so this time it will be done in two stages of six, with alphabetical order deciding who gets into parts one and two.
We take a very broad view of what “personality” means; this lets us name anyone or anything we want; and helps us to avoid too many editorial contortions. Those we do come up with reflect the coverage we give to issues, rather than an objective, weighted overall view of the entire IP world. As our focus is mainly on patents, value creation strategies and the transaction marketplace, you’ll find most of our personalities have an impact on one or more of these. So with all that in mind, following is Part One.
Aggregators and privateers
Neither are new, but in 2012 both clearly showed that they are now integral and major players in the IP marketplace. For a multiplicity of reasons, a growing number of operating companies are deciding that using NPEs as surrogate patent enforcement vehicles is a far more attractive and cost-effective way of driving revenues (and inconveniencing competitors) than doing it directly themselves. After all, why incur the on-going costs of undertaking what is always a risky venture if there is another way of doing it, even if it does mean having to share some of the revenue? NPEs such as Acacia, MOSAID, IPCom, Sisvel, Rockstar, RoundRock and, most recently, Suffolk Technologies – all of which have been publicly associated with some of the world biggest technology companies - are probably the tip of the privateering iceberg. And it is worth noting that their activities are not confined to the United States.
As for aggregators - which can also be NPEs of course, but not always – they have been closely associated with some of the biggest patent transactions of the last 12 months. Just before Christmas, it was announced that Intellectual Ventures and RPX were behind the purchase of a portfolio of patents from Kodak for just over $500 million. The deal was financed in part by licences which had been agreed with 12 operating companies, so sparing each of them from having to bid outright for the rights at much greater cost. A little earlier in the year it emerged that a consortium of companies spending $350 million on acquiring just under 500 patents from microprocessor architecture developer MIPs Technologies are doing it through a vehicle established by defensive patent aggregator Allied Security Trust. Doing it that way gives the purchasers the opportunity to recover a good deal of their investment without the additional cost of having to look for licensees or buyers further down the line – AST will do it for them.
The rise of the privateers and the developing role of aggregators demonstrates the growing sophistication of the IP marketplace, and the inter-dependency of so many of the players within it. There is no black and white; there are no good guys or bad guys; there are just myriad entities working out ways in which to leverage potentially very valuable assets.
In 2008, the Financial Times described the European Commission as the “regulator-in-chief of the global technology industry”. It went on: “The European market is so important – technology companies clearly have to do business there. And the global nature of the industry means decisions in Europe have ramifications for products around the world.”
In 2012, Joaquín Almunia, the current Commissioner in charge of competition policy and enforcement, made a number of speeches warning smartphone warriors about their use of patents to leverage market advantage, especially those which cover standards. In December, the Commission announced that it “has informed Samsung of its preliminary view that Samsung's seeking of injunctions against Apple in various Member States on the basis of its mobile phone standard-essential patents ("SEPs") amounts to an abuse of a dominant position prohibited by EU antitrust rules”. In a briefing paper published at the time of this announcement, the Commission stated it “is investigating a number of other cases relating to SEPs but cannot divulge details at this stage”. One we do know about, though, relates to Motorola and was launched in April 2012.
If the Commission, which acts as judge and jury in these cases (subject to appeals to the courts), ultimately decides that a party has abused a dominant position it can fine it up to 10% of its annual worldwide turnover. Should this happen to Samsung or any other player in the smartphone/tablet sector, it could have a material affect on the final price of their products, while also giving companies such as Microsoft, Apple and Nokia, which are not so reliant on standards-essential patents, exceptional leverage in cross-licensing negotiations with those that are. It is to be hoped that as part of their deliberations, Almunia and his colleagues consider how such a situation will benefit consumers and spur innovation.
The British Prime Minister has not been noted for his interest in patents, but in June he came close to scuppering the creation of the unitary EU patent with a last minute intervention in the negotiations. This saw him insisting that London be an integral part of the litigation system supporting the new right and also that sections of the proposed regulation dealing with the role of the Court of Justice of the European Union be dropped. Prior to this, the UK had only been notable for its almost complete lack of meaningful input into discussions on the patent and its willingness to let other member states do the heavy lifting – a position that had been severely criticised by a committee of MPs.
Cameron got what he wanted in June, something which caused consternation at the European Parliament and a further few months of negotiation before a final deal was secured. Those reading the fine print of this may well wonder what Cameron has ended up achieving with regard to the CJEU, while domestic politics may also make the UK’s ultimate acceptance of the deal problematic. Without the UK, the EU patent will not get off the ground.
The single biggest IP event of 2012 was arguably the registry application process for new generic top level domains (gTLDs) as part of a major and on-going expansion in their availability. This controversial process, that continues to cause any number of headaches for brand owners and their trademark advisers, reached an important milestone in June 2012 when it was announced that ICANN had received 1,930 requests from diverse organisations, including many companies, to become gTLD registries. The implications of this will be far-reaching, with many businesses perhaps still not realising just how much they are likely to be affected.
With his tireless efforts to improve quality and efficiency at the US Patent and Trademark Office, as well as the office’s impressive and on-time implementation of the many changes brought about by the America Invents Act, David Kappos had another very good year in 2012. Throw in his advocacy of IP as a lever for job creation and economic growth (a belief that was surely validated by the publication of the landmark Intellectual Property and the US Economy in April 2012), his patient explanations to critics of the US system of why they are wrong, his call for greater transparency when it comes to patent ownership and his focus on international harmonisation, and it is easy to see why so many in the US believe the country’s the PTO has never had a better leader.
Given Kappos’s many achievements, even Republican IP practitioners found solace in his continued tenure at the office following Barack Obama’s re-election as president in November. Imagine, then, the shock they felt when the news emerged just a few weeks later that Kappos is to stand down later this month. Along with the many tributes he received came anger, as well as some worries that the resignation indicated policy splits in the administration. This has been strenuously and plausibly denied, and the prosaic truth is probably that after more than three years in a hugely demanding job to which he has dedicated every waking hour, Kappos feels it is time to take a break and to give some attention to his family. It is to be hoped that he returns to IP sooner rather than later. One thing is for sure: whoever he ends up with in his professional life will have a very precious asset on its hands.
Judge Lucy Koh
The judge who presided over the Apple v Samsung trial in the Northern District of California which ended with a jury award of more than $1 billion to the American company. That in itself was news enough, but Koh really hit the headlines in December when she ruled that despite being found to have prevailed so clearly in the case Apple was not entitled to injunctive relief:
Weighing all of the factors, the Court concludes that the principles of equity do not support the issuance of an injunction here. First and most importantly, Apple has not been able to link the harms it has suffered to Samsung’s infringement of any of Apple’s six utility and design patents that the jury found infringed by Samsung products in this case. The fact that Apple may have lost customers and downstream sales to Samsung is not enough to justify an injunction. Apple must have lost these sales because Samsung infringed Apple’s patents. Apple has simply not been able to make this showing.
In one 23-page judgment, Koh completely changed the dynamics of the global patent litigation battle in which the two companies are engaged. Not many people were expecting her to do that, but if Apple fails to have Koh’s ruling overturned, it will have to rethink its entire strategy for dealing with Android. And that really would be big news.
Part Two of the list is made up of one CIPO, one VP of engineering, one judge, two academics, one trademark counsel and one institutional investor. It will be published tomorrow (Thursday, 3rd January).
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