OSO-IP is a byword for excellence when it comes to patent monetisation – to what do you attribute this success?
We attribute our excellence-driven success to a few select factors unique to our firm.
First, we have been working in patent monetisation for a very, very long time, and nothing matters more than experience in this market. We were monetising intellectual property over a decade before the America Invents Act was enacted, and we have been continuing to do this in the 10 years since the act was passed into law. The act was designed, in large part, to stymie actors who were abusing the patent system by seeking nuisance-value settlements on low-quality patents. We were largely unaffected by these intended consequences because OSO-IP has never operated in that space. Thus, when many of our competitors either pulled back on their IP investments or got out of the market altogether, we doubled down by overhauling our methodologies and developing new best practices that enable our inventors and patent owners to thrive in the toughest of environments, including the one in which we currently operate.
Second, our tenacity is unparalleled. It has to be, if we are serious about maximising the value extracted from the intellectual property within our purview. For each case, we are in it for the long haul, no matter how much time it takes, until the infringer becomes serious about paying a reasonable royalty rate. We have seen cases all the way up to the US Supreme Court and back down to the District Court level.
The unintended consequences of the America Invents Act have been a nightmare for small businesses and individual inventors. Defendants frequently abuse the PTAB system by filing multiple inter partes reviews against each asserted patent. In one recent case, the defendants filed six inter partes reviews against a single patent, which was issued on a continuation that was filed after 11 other IPRs had been filed against family members and in which all prior art was disclosed and considered by the patent examiner. All six newly filed inter partes reviews were denied institution, but it still placed a burden on the patent owner in terms of time and cost to defend. Only teams like OSO-IP, who are in it for the long haul, can thrive in such an environment.
Third, it very much helps that our team comprises patent attorneys who have strong technical backgrounds and vast licensing/litigation experience. While the business side of patent licensing is important (in terms of selecting the proper infringer(s), prioritising such infringers for licensing and selecting royalty rates, and so forth), the biggest barrier between a patent grant and earning a royalty, is litigation, both at the district courts and at the PTAB. Patent litigation, when you combine the complexity of both the underlying technology and the law/venue itself, is loaded with intricacies that can only be successfully navigated with a full brain trust of patent attorneys that are able to meet the challenge.
What are some of the biggest pressures acting on your clients right now and how is the firm helping them face these?
As with all those who are currently trying to monetise their patents, our inventors and patent owners are facing their biggest pressures from inter partes reviews under the PTAB and venue challenges.
With regard to inter partes reviews, entrenched, well-funded infringers are not only challenging ‘weak’ patents, which was the original intention of the America Invents Act when it created these tools. Instead, such infringers are challenging all patents, with the strategic advantage of leveraging their deep pockets to apply an extra layer of pressure on inventors and patent owners who are attempting to license their inventions. These can, in some campaigns, exceed over 10 inter partes reviews challenges, which amounts to an incredibly large cost pressure. To help our patent holders and inventors in this respect, our firm has developed expertise in counselling, with regard to dealing with their inter partes reviews. Further, we also leverage our patent prosecution backgrounds to rely heavily on strategic continuation practice in parallel with litigation.
As for venue challenges, it is still very difficult in this country to find a venue that is available to a patent holder under TC Heartland, has extensive experience in trying patent cases and is not relatively more hostile to patent-owner plaintiffs (as evidenced by comparative statistics). Moreover, even if you identify a suitable venue in which to file, the Federal Circuit appears to have taken a keen interest in managing the dockets of certain judges. To this end, our firm has spent time and effort developing expertise in both selecting and holding a venue to minimise some of the biggest pressures on our inventors and patent holders.
What changes have you observed in the US licensing landscape over the last decade – and how has this affected the services that you offer?
As mentioned earlier, one of the biggest challenges for our inventors and patent owners is the creation of inter partes reviews under the America Invents Act. In view of these relatively recent changes, the way that we do business has changed in concert. Make no mistake about it: for patent holders, inter partes reviews only add to the cost of monetising intellectual property. In view of this additional cost, our deal structures have needed to be adjusted in order to accommodate the same.
More importantly, inter partes reviews represent yet another barrier that patent holders must overcome in order to be rewarded for their efforts. To this end, we not only offer inter partes reviews-related expertise, but also rely heavily on strategic continuation practice in parallel with litigation. Specifically, in our monetisation strategies, we incorporate a deep emphasis on continuation practice. Sometimes, such continuation practice is leveraged before licensing or litigation even begins and, in any case, is often used, when available, in parallel with litigation. In our view, such continuation practice is one of the most effective tools that can be leveraged upon to mitigate the negative impact of inter partes reviews on patent owners.
When it comes to enforcement, what common mistakes do companies make when enforcing their intangible assets and how can they avoid these?
Selection of litigation counsel is imperative. Each patent monetisation campaign must take into account overall licensing strategy, prosecution (continuation practice) strategy, PTAB strategy and so forth. While the litigation firm is just one component of the overall monetisation strategy, it is perhaps the most important. Many traditional IP litigation firms, for example, typically only work on static IP portfolios and are simply focused on district court litigation. To succeed in today’s environment, all aspects of the campaign must be considered. There are truly a lot of moving parts and having a good litigation partner is critical to a successful campaign.
OSO-IP boasts a broad range of clients – from individuals to Fortune 500 companies. How do you tailor a suitable strategy to such a broad array?
While most fundamental monetisation strategies are shared between individuals and Fortune 500 companies (in terms of involving the patent(s) itself), such strategies diverge when one is engaging with a Fortune 500 company. For example, a Fortune 500 may be more concerned with patent counter-assertions that could arise in response to attempting to monetise its own intellectual property. Further, the financial expectations may be slightly higher, and a grant back licence may be more important. Each of these differences may require our firm to adapt our engagement, proposed patent ownership structures and plan for staffing the campaign.
What are some of the advantages to taking a whole lifecycle approach to IP assets?
When we say that we engage in a whole lifecycle approach to intellectual property, we are referring to a concerted effort to engage earlier on in the invention/IP process. Ideally, our team is engaged before a patent application is even filed. Given the challenges that we have outlined already, there are benefits to spending more time on patent application drafting. In view of the commoditisation of patent prosecution services over the last couple of decades, it has been rare to find mature assets (which are ready for monetisation) that have been the subject of more than $10,000 of attorney-billable work products. From our experience, a winning licensing strategy very much depends on a properly drafted patent application. Thus, we cannot emphasise enough the need to document the invention in as much excruciating detail as possible, to thereby provide the basis for the strongest claims possible.
What does inspiring leadership look like at OSO-IP – and how has this evolved over the last 10 years?
OSO-IP’s leadership team has been consistent over the past 10 years. With that said, our leadership has also consistently progressed. This evolution has been necessitated by the changes to the patent monetisation landscape over the same time period. In terms of inspiration, it is now more important than ever that leadership incorporates a winning attitude along with a willingness to do the work necessary to get to the finish line, despite the speedbumps and even roadblocks that have been erected in the path of inventors and patent owners.