Conversant is pleased to be one of a group of leaders in intellectual property and open data that have contributed to the newly launched ORoPO (www.oropo.net), the world’s first Open Register of Patent Ownership. ORoPO aims to provide an open data register of patents, accessible to all at no cost. Voluntary, non-profit-making, and freely accessible online, ORoPO offers a simple solution to significant problems with the accuracy of current patent ownership records. Today, information as to who owns the world’s patents is recorded at 180 patent offices worldwide. But a combination of data entry and translation errors, a lack of corporate naming harmonization, delays by certain patent offices to register assignments and the absence of regulation mandating that changes in ownership be recorded means that an estimated 25% of this information is inaccurate, incomplete or out of date. This situation has created unclear lines of sight to ownership of patent assets, which many in the patent profession would argue retards evolution and efficient operation of the patent asset marketplace. For example, if a patent owner and a potential patent licensee want to enter into negotiations regarding the patent owner’s patent, certainly a prerequisite for the prospective patent licensee to agree to enter into any serious, in detail discussions should be that he can satisfy himself that the patent owner does indeed own that patent.
The economic benefit of clearing of the lines of sight to ownership of patent assets has been studied in a survey and a report commissioned by ORoPO: “Who Owns the World’s Patents?”
When ORoPO’s patent database comes on line soon it will include details of patents owned by Conversant and ORoPO’s other founder members – IBM, Microsoft, ARM, BAE Systems, Shazam, Patent Properties, and Finjan. As more companies join ORoPO its registry of patent ownership will become an even more invaluable resource.
Transparency of patent ownership is a fundamental basis of responsible patent licensing, as stated in the first of Conversant’s Patent Licensing Principles. We are pleased to be a part of ORoPO and we believe it will unquestionably benefit those companies which support and encourage ethical patent licensing.
This recent article, in which former U.S. Court of Appeals for the Federal Circuit Chief Judge Paul Michel calls licensing best practices “just not very realistic”, caught our eye. Conversant was the first company to publish a set of Patent Licensing Principles back in November 2013. We have received a lot of support for our initiative, and we have been especially pleased to see the Licensing Executives Society’s program to establish industry-wide patent licensing standards.
But to Judge Michel’s point: Are patent licensing principles unrealistic? The issue comes down to what we call Principle 9:
“Litigation should only be resorted to by a licensor when good-faith license negotiations prove unsuccessful or a potential licensee demonstrates an unwillingness to negotiate in good faith for a license.”
In other words, patentees should try to negotiate a patent license before filing a lawsuit. At Conversant, we remain committed to our belief that good-faith negotiations are the best way to resolve any business issue, and we have tried to follow that principle throughout our forty-year history. But more and more we see other companies taking advantage of this principle to avoid concluding a license agreement. As Judge Michel points out, trying to negotiate with a potential licensee that does not follow best practices becomes a “handicap” and in such situations, following best practices can “end up hurting good people, while the bad people who refuse to follow them go the other way”.
These are what IAM calls the patent ogres: “big companies – especially in the tech sector – that are all too happy to use their deep pockets to drive patentees that are short of resources into unfavourable deals, into walking away from disputes or even into bankruptcy”. As IAM explains, patent ogres are not interested in good-faith negotiations; they only negotiate to delay litigation and paying fair value for a patent license. At Conversant, we have experienced this behavior first hand when after over two years of negotiations a potential licensee refused to make any counter-offer for a patent license. We were told that if we wanted anything more than a nominal amount for our portfolio that we would have to sue them. So, we did. Those patent cases now are a small part of the total 2014 filings that some people decry as excessive. And, while we would have preferred a negotiated resolution, the reality is that we stayed true to our principles, because that “potential licensee demonstrate[d] an unwillingness to negotiate in good faith for a license”.
Is Conversant being unrealistic in sticking to its principles? No, but neither are we naïve. We simply have to recognize the realities of the current patent licensing market described by Judge Michel, where many potential licensees are not interested in a negotiated license and where, in the absence of real progress towards good-faith negotiations, patentees must decide whether to stop negotiating and resort to litigation to protect their interests. No company should expect license negotiations to simply drag on indefinitely. We still look forward to talking with companies who want to reach a license agreement through good-faith negotiations. But, for the other companies, whatever label IAM or others may give them, we have run out of patience with your delaying tactics.
China is enjoying a meteoric rise in the international IP marketplace, increasingly taking centre stage as the balance of global economic power shifts eastwards. Astute businesses operating in China recognize that they need strong patent portfolios if they are to continue to grow at their current rate. Ensuring that they have the necessary expertise to create, manage, commercialise and drive strategic value from their intellectual property is vital to their ongoing success.
Many Chinese companies are acting now to shore up their patents. The World Intellectual Property Indicators (2014 edition) published by the World Intellectual Property Organization shows that global patent filings extended a run of strong annual increases in 2013, powered largely by double-digit growth in China where a full third of the world’s 2.6 million patent applications were filed (trailed by the US and Japan as the next-largest recipients). China also had the overall highest year-over-year growth in the number of patent applications – a whopping 26.4 percent increase from 2012 to 2013.
It is against this dynamic industry backdrop that Intellectual Asset Management (IAM) will be holding the second IP Business Congress China (IPBC China) on April 21&22 in Beijing. Designed specifically for the Chinese marketplace, IPBC China will take the core themes of IP value creation and strategic corporate IP management and discuss these in a Chinese context, with a particular emphasis on IP monetisation and international IP expansion strategies.
Conversant is sponsoring IPBC China, and I’ll be attending the program, which includes sessions on IP-backed funding in Asia, China as a venue for patent litigation and FRAND, standards and antitrust in this market. There’s sure to be some insightful discussion and insights flowing from the presentations, and I’ll share my key takeaways with you on my return.
David Kappos recently made a no-holds-barred speech at the LeadershIP conference in Washington DC. His clear and well-supported rationale is a breath of fresh air and a valuable compilation of facts that should serve as a wake up call for Congress and the Senate. If you haven’t had a chance to read the full speech, here are a couple of the most salient points.
The patent system is not, in fact, in a rapid decline
The narrative that’s playing in DC right now is that, as a result of patent troll games and frivolous litigation, the nation’s patent system is in crisis. Quite the opposite is true, according to Kappos. He cites studies of 2014 patent litigation trends which show that, from 2013 to 2014, there was an 18% decline in the total number of patent suits nationwide. In fact, when adjusting for recent procedural changes brought about by the America Invents Act (AIA), patent litigation in 2014 was in line with 2009-2010 levels.
In Kappos’ view, the American patent system is the “greatest innovation engine the world has known” and it is in need of “perpetual upkeep and habitual calibration” through smart reform, not broad-stroke changes:
Addressing today’s issues—which are real but not dire—through a massive overhaul of the system is like addressing a hangnail with an amputation the immediate problem will be obviated, but a slew of graver, irreversible problems will arise in the solution’s wake.
Blanket fee-shifting legislation isn’t necessary
Fee shifting is what hung up patent reform at the last go-around. Yet there’s still a hard push for legislation that awards attorney fees (loser pays) in “nuisance” patent litigation. Kappos argues that federal courts have always had the discretion to award attorney feeds to the prevailing party in exceptional cases. And two recent decisions, Octane Fitness v. Icon and Highmark v. Allcare have made it a requirement for courts to consider attorney fees more readily. It is early days, but the numbers seem to show that this case-by-case approach is working well, and that further legislation is unnecessary.
This is just a brief summary that highlights a couple of Mr. Kappos’ excellent points. I applaud Mr. Kappos for his direct and honest commentary and encourage everyone in our industry to read the full speech. Let’s have this conversation; one that’s based on facts, not rhetoric.
David Kappos is the former Director of USPTO. He is currently a Partner at Cravath, Swaine & Moore LLP and is considered a leader in the filed of Intellectual Property.
IAM Magazine hosted a successful NPE 2015 conference in New York last week, with over 200 industry delegates taking part. This conference, the industry’s first to focus specifically on the NPE community and our important role in the business of patent licensing, was an inspiring forum where we discussed the most pressing issues and explored how we can work toward a more positive view of our industry. Here is what I saw as the conference headlines:
Collaborative engagement in patent reform is essential for our industry
NPE 2015 attendees including senior leaders at NPEs, inventors, investors, lobbyists, analysts and lawyers agree: our collaborative participation is foundational to ensuring that proposed patent reforms are structured to stimulate, not stifle, ongoing innovation. We’re in this together.
“Licensing is under attack and industry needs to be more visible and voluble.” – Russ Merbeth, IV
Educating legislators on patent reform issues is well worth the effort
I took part in the opening panel, which focused on the current operating and policy climate. We had a frank discussion about how patent law is simply not a priority for most on The Hill. It takes a lot of time and effort to s how up and educate our legislators about both sides of the story; we’ve not got as deep pockets as our opponents, but we need to keep trying.
“What we have come to understand is that most people in DC are well-intentioned and work extremely hard, but they just do not have the time to research issues deeply. What they hear is what people tell them, so if you don’t go to make your case they will never hear it.” , Conversant
A sneak peak of Kappos’ critique of the Goodlatte Innovation Act
David Kappos, former USPTO director and a senior advisor to the Partnership for American Innovation, spoke out frankly on the Innovation Act. He made striking remarks which we now know were a warm–up for his no-holds-barred speech in Washington DCat the LeadershIP conference. He argued that current proposed legislation has the potential to devalue the patent system and cause decrease in investment in innovation.
“The Innovation Act is such a damaging piece of legislation. It will cause the mass devaluation of the patent system, which in turn means the mass devaluation of innovation. And when that happens you will get much less investment in innovation – that’s how the free market system works.” – David Kappos
Creative opportunities: NPE business models and markets
There was a recognition that NPEs who are in the business for the long game have to be creative about long-term growth strategies, building quality portfolios, and entering global markets. Germany was highlighted as a jurisdiction that is particularly promising to patent licensing entities. Numerous panelists commented that Germany was tops on their list of venues. Countries mentioned as strong opportunities alongside Western Europe, Japan and the US, were Indonesia, India, Turkey, Brazil and China.
“One result of this push across the Atlantic is that while US patent prices may be falling, in Europe they are starting to edge up.” – industry source to IAM’s Joff Wild
Conversant will be at IPBC China in Beijing this April. Watch this space for our highlights from this key event, themed ‘Maximising IP value’ in the Chinese marketplace.
A new report by technology consulting firm iRunway looks at the semiconductor largest patent holders, the growing presence of NPEs and the increase in patent litigation over the last 20 years. The report also looked at the owners of the highest quality semiconductor memory patents, which it describes as seminal. Among NPEs, Conversant has a particularly strong portfolio with 154 seminal patents, putting it at number six in the top 15 assignees. The research points to the development of a more complex licensing dynamic, fuelled by the growing number of NPEs that have become significant players, led by Round Rock and Conversant, but also include others like Longitude Licensing. Read the full blog post from IAM Magazine here.
I read with pleasure the recent feature on IAM Magazine’s blog, calling out a unique and emerging character on the patent licensing stage – the Patent Ogre. This is defined as a large product company who is wilfully and systematically infringing on the rights of small patent owners. The patent ogre is a character in that needs a bright spotlight shone upon it – and, asserts the post, perhaps the very reason that some bad actors – patent trolls – exist. As IAM writes (quoting author and inventor Fatih Ozluturk):
Small inventors are more important today than they have been in recent memory. This makes it imperative that we preserve and strengthen the intellectual property laws that protect small inventors. It is also imperative that while attempting to fix the patent troll problem we don’t undercut small innovators and give a free pass to patent ogres.And the fact is that a huge reason why patent trolls exist is because patent ogres exist.
The post goes on to discuss the various trends and reforms that large product companies systematically exploit to stonewall small inventors, including fee shifting, IPR proceedings, and the high burden of proof of willful infringement:
This treatment of small inventors by patent ogres is unfair and abusive. I say we level the playing field for the small inventors by forcing patent ogres to have to give due consideration to claims and requests from small inventors. A patent ogre should be required to answer a request from a small inventor within a reasonable time and have a credible process for doing so. In failing to show this in court, should the patent holder prevail, treble damages should automatically kick in. Let’s give the patent ogres an incentive to not shut out legitimate inventors and patent claims by stonewalling them.
Couldn’t agree more. As I referenced in a blog post from last fall, we believe that a few “bad actor” global product companies are hijacking the legitimate work of lawmakers in curbing trolls by expending huge resources on lobbying and media relations to propagate false claims about the patent system. They’re also engaged in a process of steadfastly stonewalling reasonable licensing conversations.
IP licensing is a legitimate and necessary business. And we believe that licenses have ethical obligations as a part of this process, including:
- To investigate the licensor’s claims fairly and honestly, and if it determines that the licensor is likely to have valid and enforceable claims, conduct good faith discussions with a willingness to take a license on fair and reasonable terms.
- To engage in good faith discussions with the licensor and make reasonable, good-faith efforts to timely meet with and respond to the licensor. Individuals acting on behalf of the licensee must have the authority to negotiate with, and if appropriate, reach an agreement with the licensor.
- To be willing to take a fair and reasonable license where appropriate. This means that the licensee must fairly acknowledge that if its activities use, or are likely to use, the invention claimed in a licensor’s patent, then the licensee owes the licensor reasonable compensation for the use of that patented technology. A licensee should not take a free ride off another’s patented innovation.
Simply put, principled patent licensing is a two-way street that requires licensors and licensees alike to conduct themselves ethically and responsibly in order to achieve mutual economic benefits. Maybe 2015 is the year when the playing field will begin to be levelled.
IAM sums it up best:
When did you last see the EFF or the CCIA, for example, ever issue an angry press release about, or take up the case of, a small company being run into the ground by a big company that refuses to engage in equitable patent licensing negotiations? It’s not something I can ever remember them doing. Maybe they should, because it happens all too frequently and does significant harm to talented innovators and the people who back them. Giving the ogres even more power through imbalanced legislative patent reform is not only wrong, it is utterly foolish. Let’s hope that at some stage soon, before it is all too late, US legislators see sense and start to focus on the little guy.
U.S. military doctrine requires the country to be ready to wage war in two theatres simulataneously.1 Patent assertion entity (PAE) Vringo has decided to go to the next level, and fight Chinese cellular equipment maker ZTE on ten fronts.
Using standards-essential patents it acquired from Nokia, Vringo sued ZTE in the United Kingdom (October 2012), Germany (November 2012 and again in September 2013, with an injunction granted in December 2013, and upheld in February 2014), France (April 2013, with an injunction sought but not granted), Australia (June 2013), Spain (September 2013), India (November 7, 2013, with an injunction granted on November 22 but vacated on August 5, 2014), Brazil (April 2014, with an injunction upheld in June 2014, and seizures ordered in October 2014), The Netherlands (May 2014 and again in August 2014, with an injunction upheld in October 2014), Romania (June 2014, with an injunction granted, but temporarily suspended in October 2014), and Malaysia (July 2014). Vringo is also suing ZTE in New York over a breach of an NDA.
This is a notable strategy. To the best of my knowledge, it’s the first time a PAE has forsaken a U.S.-centric approach and launched suits in so many countries against a single company. Thanks to a history of innovation, as well as strong legal support for the protection of patent holders’ rights, the United States leads the world in patent filings. Accordingly, many portfolios that PAEs license will consist solely or primarily of U.S. patents. But even when a portfolio has broad geographic coverage (that is, patents from many different countries), while initial negotiations may be for a worldwide license, if talks collapse and the patent owner must resort to litigation, suits tend to be filed in one or two countries at the most.
The second noteworthy aspect of Vringo’s strategy is its use of injunctions – requesting courts to bar the sale of ZTE’s infringing products. A patent confers the right to bar other people from “practicing” or using your invention within their own product. While this is a reasonable remedy for an operating company, PAEs prefer the alternative approach of signing revenue-generating licenses to infringers. An injunction can be a good tactic for gaining the attention of a reluctant licensee, and can significantly speed up settlement discussions.
The central question, of course, is how well Vringo’s strategy will succeed. Courts are generally reluctant to grant injunctions, especially to PAEs, due to the obvious damage it inflicts on the licensee. Long-time patent industry watchers will recall the famous injunction against Research in Motion (RIM) won by NTP, Inc., which would have shut down every Blackberry device in the United States, and that motivated RIM to reach a $612.5 million settlement in March 2006, shortly before the deadline expired. But the original injunction was awarded in 2001, with RIM able to delay its enforcement by various means. Vringo, however, has been successful in convincing a number of courts not only to grant injunctions, but (as can be seen in the Brazil case) to enforce them. This is likely due to the strength of Vringo’s Nokia-sourced patents.
As Vringo’s various cases make their way through the courts, we can be sure that other patent holders are watching closely to see how this strategy works out.
I read with interest a recent IAM Magazine blog post which, heading into the final quarter of 2014, makes eight predictions for the NPE market in 2015. North American editor Richard Lloyd identifies these key issues:
1. Consolidation among NPEs – there has been remarkably little M&A activity but deals could now happen, possibly in the form of distressed restructuring transactions.
2. For PIPCOs we’ll see a number of take-privates – the public markets still don’t make sense for a lot of these businesses.
3. Licensing is king – those with the best licensing strategies and negotiating teams will come out on top.
4. Less chance to leverage the litigation process for advantage – we’re arguably seeing this already as more and more NPEs emphasise their commitment to reducing their litigation exposure. But with less incentive for defendants to settle, litigation is still going to be a key driver of revenue.
5. More focus on prevailing with high quality patents as a result of 4.
6. Greater need to embrace transparency.
7. Diversification will be more important than ever – moving into new sectors such as medical devices and energy should be high on the agenda for management teams.
8. Higher pressure to create returns for increasingly demanding investors; ‘plus ça change’, some cynics might say to this – but expect to see more NPEs trying to sell assets as a result.
I agree with most of this list, but it will be interesting to see if the first two trends come to light in 2015. In my view, consolidation of NPE companies is possible, but currently there are few NPEs who are sizable and cash-rich enough to lead this type of activity. Likewise, I’m not convinced there’s strong interest in the private equity community in taking publicly traded NPEs private. Finally, I don’t share the view that there’s pending NPE sell-off of patent assets in 2015. Patent sales don’t generate recurring revenue, so although investors may be eager for companies to divest low-performing patent families for a quick return – and a reduction in prosecution costs – it’s not a strong argument for an overall long-term business strategy for most NPEs.
I’m sure these issues will be among those hotly debated at IAM’s newest event, NPE 2015, just announced to take place on March 12 in NYC. We’re pleased to be a sponsor of this important conference, billed by IAM as:
…a forum for NPE decision-makers to come together with other parts of the IP transactions ecosystem to discuss not only the way the market is developing in the US, but also to look at how business models can adapt to reflect the changes. On top of this, NPE 2015 will identify emerging finance options, as well as new opportunities in different technological areas and jurisdictions outside the US.
NPE 2015 is not an event about or for the “patent extortionists” Conversant chief IP officer Scott Burt wrote about so compellingly on the IP Watchdog blog last week; instead it is aimed at serious entities that seek to play a positive role in fostering sustainable, transparent practices which are built around the licensing of high-quality patents.
We believe that these are very different to the trolls of popular imagination – and we also believe that those who work in IP transactions, in all types of entity, understand this too (whatever some might say for public consumption). The fact is that NPEs are an important part of the IP marketplace, they bring liquidity to it, they have played an important role in changing perceptions about patent values and, increasingly, they work closely with any number of operating companies. They are not going to go away.
We’re looking forward to meeting with our peers in NYC and having some great conversations. Here’s the information for registering:
NPE 2015 is being held at the Convene Conference Center in the Financial District at the bottom of Manhattan. It’s a great venue, but space is limited. For that reason, if you want to attend the event you are strongly advised to book your place as soon as possible. Go to the registration page on the NPE 2015 website.
Some time ago, I had a lively conversation with Kristen Osenga, a professor of law at the University of Richmond School of Law, Virginia. As part of Prof. Osenga’s research for a forthcoming paper, we discussed Conversant’s business model and where we fit within the broad landscape of companies who engage in patent licensing. Prof. Osenga was interested in breaking down the “patent troll” category to better understand the actual numbers of companies willfully engaged in abusive or predatory behavior verses those whose behavior is perfectly reasonable.
As a lead-in to her upcoming paper, Prof. Osgenga wrote an opinion piece in the current issue of IAM Magazine. She strongly challenges mainstream research into the scope of the patent troll problem:
If you accept the mainstream story, this bad behaviour by patent trolls is a serious problem. Academic work by Professor Colleen Chien estimates that over 60% of lawsuits in 2012 were brought by patent trolls; Professors Jim Bessen and Mike Meurer have claimed that defending against patent troll lawsuits cost companies over $29 billion in 2011. However, there is a serious problem with these accounts and one that is not being reported in the media. The patent trolls that Chien, Bessen and Meurer and other scholars include in their research are not based on a company’s behaviour. Rather, the research takes a very broad definition of ‘patent troll’ which includes any entity that can be considered non-practicing, such as a university, an individual inventor who does not manufacture a patented innovation, a start-up forced to sue a larger company which stole its patented innovation before it had a chance to get it off the ground, large licensing companies such as IBM and even manufacturing companies that license patented innovation outside their primary areas of business.
Prof. Osenga argues that it is more accurate to define patent trolls by specific problematic behavior and not just apply this derogatory label to anyone with a licensing-based business model. She says trolls are easily identified because their actions “amount to a shakedown or a tax on doing business.” Prof. Osenga also states that when looking at the IP industry overall, it’s vital to clearly understand the various business models, because they are quite varied, and intrinsic to how companies operate.
As an example, Prof. Osenga explores a fresh category that she calls Formerly Manufacturing Entity or FME. This is a grouping of businesses that were not formed as licensing firms. These FMEs (Conversant is one) began as technology development companies. (We note that technology innovation has continued to be important to Conversant. In fact, since 2008 our engineers have filed more than 900 patents related to our inventions in flash memory technology.) FMEs, she says, are far less likely to engage in patent troll behaviors for a variety of reasons:
Formerly manufacturing entities tend to share three common characteristics that distinguish them from the rhetorical trolls that have captured the attention of media, Congress and the courts. First, they had or still have a product that is available on the market – Conversant invented, made and sold actual chips… Second, these companies operated in the business world and were subject to the business ethos that goes with being part of an industry – Conversant was, and still is, part of the chip industry as it is still developing technology in the space… Third, these companies continue to develop and/or support their technology.
Prof. Osenga goes on to say that FMEs actually benefit the innovation ecosystem:
In addition to not engaging in abusive behaviour, formerly manufacturing entities provide unique benefits in the match-making and market-making areas. In particular, because they either did or attempted to commercialize the technology themselves, they are in a better position to know its true value. Patent trolls are often condemned for seeking a quick settlement of cases by seeking low-ball royalties or damages that are not worth the trouble of fighting in court. However, a knowledgeable formerly manufacturing entity could be seeking a low figure precisely because it knows that that is what the technology is worth.
Prof. Osenga’s observations come as a breath of fresh air in a debate marred with rhetoric and inexact “research”. Her astute observations about the ever-shifting and often unfair definition of “patent troll” is one of the reasons that we think it important for licensing companies to publicly articulate their business models and practices.
Unfortunately, the patent licensing industry has contributed to its own poor reputation. Until very recently, most legitimate patent licensing firms remained silent about the abuses committed by the relatively small handful of true patent trolls. Many feared getting embroiled in public controversy, or sought to avoid tarnishing the industry’s reputation even further by a public airing of its dirty laundry.
Whatever the intent behind this silence, its result has been to merely reinforce the perception that a small number of trolls in our business represent the mainstream of our industry. This in turn has further eroded public support for the patent system itself — and for the demonstrable value of patents as stimulants to American innovation and economic growth.
Recognizing that our silence was only compounding the problem, Conversant released a set of guidelines for ethical patent licensing practices — including explicit promises not to sue small businesses or hide behind shell companies. Since then, a number of other patent licensing firms such as Finjan Holdings and Dominion Harbor Group also committed themselves to ethical licensing practices.
Now, the industry’s main professional organization, the Licensing Executive Society of the U.S. and Canada (LES), has taken strong steps toward creating an industry-wide code of conduct for patent licensing transactions. An initial workshop was held in Chicago two months ago to discuss ways to rein in abuses within the industry and codify ethical business practices.
If we want policy makers and the public to recognize the difference between a patent troll and a legitimate NPE (or FME) It’s time for patent licensors to step up to the plate and do our part to help curb abuses in our own industry, just as responsible members of other industries do. Only then will we be able to begin to restore faith in the patent system.