Tag Archives: i4i

O Canada, Ontario Rocks When it Comes to Patent Holders, Advisors

Ottawa, Toronto and Waterloo together comprise a leading center for valuable patents and IP expertise.

To most people Ontario conjures an image of ice hockey and maple leaves, not intangible assets. But the province bordering the U.S. on the north is among the most abundant areas globally for invention rights, strategists and investors.

Among the notable patent businesses in Ontario are UBM Tech Insights outside of Ottawa, an information services and consulting firm for technology companies that wish to leverage their IP assets. Chipworks, also in the Ottawa area, specializes in reverse engineering products like computer chips to identify infringement and difficult to identify prior art.

Canadian BoyAnother Ottawa company, MOSAID Technologies Inc.,  is a leading intellectual property management company. MOSAID, with 5,400 patents, monetizes IP in the areas of semiconductors and communications, and develops semiconductor memory technology. MOSAID was taken private in 2011 for $590 million by Sterling Partners, a U.S. private equity firm. Like UBM, and Chipworks, MOSAID has offices worldwide.

WiLAN (NASD: WILN) is an Ottawa-based, publicly traded IP licensing business. In 2011, it failed in an attempt at a hostile bid to acquire MOSAID. Both MOSAID and WiLAN (3,000 plus patents) are built on a tradition of R&D, and sell or have sold products, file patent applications, and acquire them from others.

Waterloo-based Research in Motion which makes the Blackberry, once the leading smart phone in the world.  Research in Motion (NASD: RIMM), has an extraordinary portfolio of some 3,600 patents said to be worth over a billion dollars.

Nortel, based in outside of Toronto in the western part of the province, in Mississauga, Ontario, filed for bankruptcy protection in 2009.  In 2011 it sold 6,000 of its patents for $4.5 billion to the Rockstar Consortium, comprised of Apple, Microsoft, Research in Motion, Ericsson, EMC and Sony.

Rockstar, located in Ottawa, is run by John Veschi, former Chief IP Officer of Nortel, and is actively licensing its lucrative portfolio. Recently Apple bought 1,024 patents from it.

In a case that made international headlines Toronto-based i4i, Inc., a leader in the design and development of collaborative, XML-based content solutions and technologies, won a patent infringement decision against Microsoft for damages in excess of $300 million. It was appealed to the U.S. Supreme Court, which rarely hears appeals of patent disputes, and affirmed 8 to 0.

Also Toronto-based, Northwater Capital (Northwater Patent Funding or NW IP Fund), helped to finance the i4i dispute against Microsoft. Northwater is a private investment company with offices in Toronto and Chicago. Northwater invests proprietary and client capital in intellectual property based investments, green energy endeavors and proprietary trading.

Canadians active in U.S. IP activities include Terry Dalzell (Quinn Pacific), Kent Richardson (former head of IP for Rambus), Kevin Rivette, formerly of IBM and Boston Consulting and Boyd Lemna, Senior Vice President of Licensing at Personalized Media Communications. Peter Misek at Jefferies & Company (and prior to that JP Morgan), one of the leading equity analysts in IT and storage, is from Toronto. (Apologies to the many people not mentioned.)

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What’s up with Canada? At one time the cheap Canadian dollar was attractive to U.S. businesses that required expertise-intensive reverse engineering, such as patent defendants and some plaintiffs. With the Canadian and U.S. dollars now worth about the same, there is still good reason to rely on Canadian IP talent.

Canadians appear to be less conflicted than their U.S. neighbors about monetizing intangibles, their own and others’, and they have many with the right combination of technical, legal and business experience to do so — a hat trick if there every was one.

Illustration source: youthsareawesome.com

Six Years of Talks Fail in Ford Patent Dispute

Flash(back) of Genius?

Ford Motor Company was sued twice in one week by businesses that say it is infringing their hands-free inventions, including the company’s popular SYNC voice-command technology

If it looks like we are having a flashback to the Kearns intermittent windshield wiper debacle, popularized in the 2008 movie, Flash of Genius, you may be right. However, this time there is a contemporary twist: a successful backer.

Eagle Harbor Holdings LLC and its subsidiary and exclusive licensee, MediusTech, LLC have filed a federal lawsuit against Ford Motor Company, accusing the carmaker of infringing on seven of their patents by selling Ford’s SYNC voice-command based interface that lets drivers seamlessly connect their car and mobile phone and other devices. (Eagle Harbor announcement.)

Eagle Harbor says that Ford cut off talks in 2008 after six years of discussion.

Wayne State (Michigan) University Law Prof Katherine E. White was quoted in the press as saying “Injunctions have become very difficult to get now for companies that don’t make anything. Big companies can afford to pay the damages later. What they can’t afford is to stop producing.”

The new twist: Eagle Harbor is backed by the Northwater Intellectual Property Fund, an investor in i4i, a Canadian company that was awarded $290 million in patent dispute against Microsoft that was upheld on June 10 by the United States Supreme Court.  Susman Godfrey is representing the plaintiffs in the in the matter.

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Many of you will recall that Ford agreed to pay $10.2 million to Robert Kearns, who invented intermittent windshield wipers, in a highly publicized 1990 case. The matter was the subject of  “Flash of Genius” a modest critical success starring Greg Kinnear about Kearn’s painful two decade-long battle with the auto industry. Kearns later also received $30 million from Chrysler.

Also last  week, reports Patent Connections, Ford was sued by Kar Enterprises, LLC who filed a complaint for patent infringement against Ford Motor Company for alleged infringement of patents US 7,959,177 (issued 6/14/2011) and US 7,757,803 (issued 7/20/2010) regarding a “Motor vehicle operator identification and maximum speed limiter.” The lawsuit specifically identifies Ford’s MyKey® technology as the offending product.

About a year ago, Ford settled a longstanding case brought by a Florida company, Paice, that accused the company of infringing on a 1994 patent for hybrid technology. Ford agreed to license the Paice technology, but the terms were not released publicly. Paice also had sued Toyota, which agreed to license 23 patented technologies.

Popular Mechanics ranked SYNCH number four on its list of “Top 10 Most Brilliant Gadgets for 2007.”  “SYNC” is a registered trademark of Ford Motor Company. Normally Ford does not apply the brand of its suppliers to the parts or systems the suppliers manufacture for Ford. However, the vehicle interior badges for cars equipped with the SYNC system include both the SYNC and Microsoft brands.

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The reporting on the SYNCH suit in The New York Times by an auto industry reporter Neil Bunkley was surprisingly solid. (As many of you well aware, when it comes to IP coverage the mainstream business press is not always fully up to speed the issues or aware of the various agenda of the participants it sources.) Matters of this nature often play out as a simple “troll” tale, a business attempting to extort money from a real innovator.

However, reporter Bunkley, who writes the Wheels blog for the The Times and has worked for The Detroit News, did a fine job resisting the simple story for what appears to be the correct one.

Illustration source: blog.dialaphone.co.uk


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