IP market news highlights

A rundown of the top news stories on the IAM platform in September, October and early November

Patent suit against real estate website shows no change yet in the IBM playbook

If you needed a reminder of the long shadow that IBM’s patent portfolio casts over large parts of the tech industry, then it came in the shape of the lawsuit that Big Blue filed in the US District Court for the Central District of California against US website Zillow.

The company has accused the online real estate listings business of infringing seven patents after licensing approaches dating back to 2016 failed to produce a deal. IBM’s complaint claims in no uncertain terms that “Zillow has built its business by infringing IBM’s patents”.

18 September

Huawei picks up activity tracking portfolio from US firm

At IPBC Global in Boston earlier this year, Huawei signalled that it was still open for business when it came to transacting patents because these are publicly disclosed; therefore, they do not fall under US export controls. Now the company appears to have made its first purchase of a US patent portfolio since restrictions were first introduced against it in May.

USPTO transaction records show that Huawei acquired 28 patent assets from an entity called DP Technologies at the end of August. The portfolio originally belonged to Santa Cruz-based sensor technology company Fullpower, which claims that its platform as a service is backed by a portfolio of more than 125 patents.

The rights involved in the transaction appear to cover sensors and activity tracking for applications such as health and sleep monitoring (“System including a sleep detection mechanism”, “Human activity monitoring device with distance calculation”). Other rights are directed toward devices such as smart watches, which Huawei manufactures.

19 September

Nokia becomes the latest to target Lenovo

Just weeks after being on the receiving end of a pair of lawsuits filed by InterDigital, Lenovo has once again been accused of patent infringement by one of the giants of the wireless industry.

In a complaint filed yesterday in the US District Court for the Eastern District of North Carolina, Nokia has accused the Chinese tech company of infringing 10 patents relating to H.264 video compression technology. In the filing, the Finnish company revealed that it has agreed licensing deals with more than 50 businesses for video decoding essential patents on rates that are reasonable and non-discriminatory.

In March, Nokia notified Lenovo that its technology infringed more than 20 video decoding patents; after several months of back and forth between the duo, licensing discussions failed to produce a deal and the wireless leader filed suit.

26 September

New PTAB cases drop dramatically in latest sign that recent changes are having an impact

The number of new proceedings at the PTAB fell significantly in the third quarter of 2019 to 325 petitions – a drop of 22% year on year according to data from Unified Patents.

Unified’s figures show that the total volume of inter partes reviews, covered business method reviews and post grant reviews has been falling steadily through the year, indicating that reforms introduced by USPTO Director Andrei Iancu and a series of court decisions are having an effect on the appeal of the PTAB.

2 October

Shenzhen government to launch China’s latest IP fund

The government of Shenzhen has published plans to raise an IP fund. The move is the latest by a Chinese municipality to pump public money into promising companies in IP-intensive industries – at least that is the most likely outcome of a planning document that also discusses more exotic IP finance concepts such as the securitisation of IP rights.

A draft proposal was circulated this week by the local market regulation bureau – an affiliate of China’s catch-all regulator and top IP body, the State Administration for Market Regulation. It said that it will partner with a financial institution to raise an initial trial fund of Rmb210 million (around $30 million) throughout 2020, before commencing operations in 2021. If judged a success, additional funds could be launched.

10 October

A shift in focus at Microsoft sees part of its IP team head for the exit

Microsoft has made a round of cuts to its IP group, further signalling how the tech behemoth’s patent priorities have shifted in recent years. IAM understands that 24 members of the team have been let go, many of whom were in the group’s licensing operation.

Despite generating billions for the company, licensing has become less of a priority in recent years as Microsoft’s overall strategy has seen it deepen its roots in the open source software community and shift its focus to the Cloud. In a statement, a company spokesperson commented: “Microsoft continues to evolve its IP practice in response to changes in the industry and in alignment with the company’s growing business and the needs of customers.”

14 October

WIPO report: US patent filings dip for first time since 2009

WIPO has published its annual report on the state of the global IP system; as ever, it is full of interesting data points on a whole range of asset types.

There is plenty to unpack from the report but perhaps the biggest headline is that US patent filings dropped in 2018 for the first time since 2009. Overall, the office received 597,141 applications in 2018 – down 1.6% year on year. This follows 12 months in which new applications were essentially flat. Although this was still enough for the country to take second place in the global rankings, it is well behind China, which clocked up 1.5 million new applications. Japan took third place but also saw its total number of applications drop by 1.5% to 313,567. Meanwhile, South Korea and the EPO – the remaining members of the IP5 group of the largest patent offices – saw both their numbers increase.

16 October

Ericsson and Xiaomi strike global licence

After nearly five years of litigation, Ericsson and Xiaomi have ended their patent dispute in India. The parties told the Delhi High Court of the amicable settlement last Tuesday and the court order dismissing several cases between the companies was published today.

An Ericsson spokesperson confirmed to IAM that the two companies have inked a global patent licence agreement but indicated that the terms are confidential and Ericsson will not be releasing a statement. It is the Swedish company’s second deal with a Chinese smartphone maker this year, following its pact with Oppo.

22 October

The Federal Circuit’s Arthrex decision is clearly a blockbuster, now comes the fallout

Among the multitude of decisions that the Court of Appeals for the Federal Circuit hands down each year there are always a few that rightly qualify for the ‘blockbuster’ tag. On Thursday last week the court undoubtedly issued one such judgment when it ruled on Arthrex v Smith, declaring that the appointment of judges to the PTAB violates the appointments clause of the US Constitution. According to the court, administrative patent judges (APJs) are “principal officers” – a class of government appointee that must be chosen by the president and then confirmed by the Senate (as applies to the director of the USPTO).

Presumably conscious of the carnage that might ensue if more than 200 APJs suddenly found themselves out of a job, or at least waiting to be confirmed, the three-judge panel issued a handy workaround suggesting that the part of the Patent Act that limits the removal of APJs be deleted, potentially handing the powers that be at the USPTO much broader scope to fire them.

4 November

Monsanto prevails in key $7.7 billion Brazilian licensing lawsuit

A federal appellate court in Brazil recently ruled that Monsanto is entitled to collect royalties on soybeans grown by farmers from saved Roundup Ready seeds.

With $7.7 billion of disputed royalties on the line, the decision is a huge financial relief for the Missouri-based agriculture giant, whose herbicide-resistant crops account for roughly 85% of soybeans produced by Brazilian farmers. The first-of-its-kind opinion also has broader significance, providing a securer basis for agricultural biotech innovators to enforce a range of similar rights.

The judgment was handed down by the Superior Court of Justice – Brazil’s highest appeals court for non-constitutional issues – on 9 October. It relates to a long-running class action lawsuit, launched in 2009 by Brazil’s farmers’ unions, which claimed that Monsanto’s royalty collections on Roundup Ready soybeans were illegal. Monsanto owns patents relating to the genetically modified seeds, which are tolerant of glyphosate, the herbicide used in its Roundup products.

5 November

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