3 Jan
2018

The IAM IP personalities of 2017 - part two

Yesterday, we named our first five IP personalities of 2017. Today, we complete the line-up by naming the final five. Here they are:

Arvin PATEL - The December announcement that Technicolor is in the process of negotiating a potential sale of its patent licensing business throws into sharp relief the decision by Arvin Patel to resign his post as the company’s chief IP officer and to take the same position at his old TiVo/ROVI stomping ground. Under his leadership in 2016, Technicolor achieved licensing revenues of €285 million, up over 25% on the previous year’s figures. This led the company’s CEO Frederic Rose to hail a “fantastic performance by the licensing team in 2016 in terms of signing new deals and new contracts” in a call with analysts in February 2017. Four months later came the news that Patel was on his way back to Silicon Valley. At a time when the global licensing environment is uncertain, and the one in the US is actively hostile, a company like TiVo that commits to strategic IP value creation would have a large pool of talent from which to recruit. That shows the confidence the company’s board has in Patel’s abilities; and they quickly showed this in practical terms by green-lighting Patel’s move to beef up his operation, with the recruitment of former IBM dealmaker Marc Ehrlich as senior vice president of patent strategy in October. Speaking in the same month, TiVo CEO Thomas Carson stated: “We believe there are multiple significant opportunities for our IP licensing business, where we can grow recurring revenue. This includes making further progress with international Pay TV operators, especially in Canada, signing additional deals in the mobile and OTT spaces, and opening some new adjacent verticals.” In 2018, Patel will begin to deliver on this.

Qualcomm - As one of the world’s most significant patent licensors, Qualcomm is a perennial major player; but in 2017 the company excelled itself. The year began with a double whammy that saw it sued by both Apple and the Federal Trade Commission (FTC) over allegation of unfair licensing practices. While there was no real response possible against the government agency except to present a case and hope for the best, Qualcomm reacted to Apple with all guns blazing – launching suits against the company in multiple courts in the US and at the ITC, as well as in other jurisdictions – including China. But it wasn’t just the Cupertino company and the FTC that Qualcomm found itself up against during 2017. As has also become customary, there were foreign competition authorities to deal with as regulators in Taiwan imposed a hefty $773 million fine and a court in Seoul confirmed a $912 million charge levied by the Korean Fair Trade Commission in 2016. On the deals front, by far the biggest story was Broadcom’s $130 billion bid for Qualcomm in early November. That was swiftly rebuffed, but Broadcom looks likely to try again. Certainly, the patents that Qualcomm would bring to the party should Broadcom eventually emerge triumphant would be worth their weight in gold. Not only does the company possess a huge portfolio overall, but it is also top tier in terms of quality in multiple sectors. In May, for example, Relecura identified Qualcomm’s Internet of Things-related patents as chart-toppers.  

Michael SHORE - It would be fair to say that the Saint Regis Mohawks were not widely known in US patent circles at the start of 2017. By the end of the year, though, the Native American Indians were on everybody’s lips. That this was so was largely down to lawyer Michael Shore and the deal he did on behalf of the tribe with Allergan. What Allergan was after, of course, was the protection it believed the Mohawk’s sovereign immunity would offer the Restasis patents from review at the Patent Trial and Appeal Board (PTAB) – a prospect that Shore held out having previously worked on other sovereign immunity cases involving the University of Florida. Since the Allergan deal was announced, there has been a Congressional hearing on the subject, while one US Senator – Clare McCaskill of Missouri – has proposed legislation that would prevent Indian tribes from asserting sovereign immunity at the PTAB. If Shore’s aim was to set the cat amongst the pigeons and to get people in high places to look closely at the current way in which the PTAB operates he has certainly achieved his goal. However, in a decision just before Christmas, an expanded board panel (Ericsson v Regents of the University of Minnesota) ruled that an entity waives its rights to sovereign immunity if it has previously filed a lawsuit in which it claims the relevant patents have been infringed. If that judgment stands, Shore’s gambit may end up a footnote rather than a game-changer.

Ingve Björn STJERNAAs a new year begins, the future of the Unified Patent Court (UPC) remains up in the air; not because of Brexit but due to a complaint currently before the German Constitutional Court asking it to rule that the country’s ratification of the UPC agreement would be illegal. The case was brought by IP lawyer Ingve Björn Stjerna, a long-time critic of the UPC, and has a number of strands - including alleged flaws in the vote to ratify taken in the German parliament and concerns over the independence of the UPC and its judges. In April 2017, it caused the constitutional court to ask Germany’s president to suspend implementation of ratification. Then, later in the year, it requested that interested parties should submit comments – so delaying consideration of the arguments. If the court now decides that the case should proceed it is likely that it will not be heard until the summer, at the earliest, with a decision not to be expected until months later. That would effectively torpedo the UPC in its current form, as even a ruling that membership of the system is compatible with the German constitution is unlikely to leave time for the country to ratify the agreement before the UK leaves the EU in March 2019 (currently, UPC member states also have to be EU member states). One man can move a mountain, so the saying goes: in 2018, Stjerna could well prove this to be true.      

XI Jinping – It is unlikely that the Chinese president spends his waking hours worrying about intellectual property, but it is also the case that unlike almost every other world leader you can name, Xi gives every impression of having a thorough understanding of just how important it is to his country’s future. Since he became general secretary of the Communist party in 2012 and president of the People’s Republic a few months later, China has seen a rapid acceleration in the development of its IP system – including the creation of specialist IP courts in 2014 – and become remarkably pro-patent. That may be dismissed as coincidence by some, but a speech given by Xi in July in which he called for further strengthening of China’s IP regime and the toughening of enforcement penalties, would seem to indicate the opposite. “Wrongdoing should be punished more severely so that IP infringers will pay a heavy price,” he said. And if that was not enough, a Communist party policy committee chaired by Xi identified judicial IP reform as a national priority in November. Like many of his colleagues in the Politburo, Xi is an engineer by training. That may give him insights into IP which leaders in the West, who tend to lack such backgrounds, just do not possess. That is likely to work to China’s advantage over the coming years.

Joff Wild

Author | Editor

jwild@GlobeBMG.com

Joff Wild