Tag Archives: Sony

A record number of major holders were granted far fewer US patents

Many significant tech companies experienced dramatic declines in US patent grants, fueling speculation about the reasons why. 

While total patent grants were virtually flat, according to USPTO data, down just 53 patents from 326,032 to 325,979, and utility patent grants and applications were up, many top US holders received significantly fewer US patent grants in 2015. Patent reform and uncertainty are the most likely reasons why.

Notable declines in patents received include Microsoft, off 17.2%, Sony, down 23.8% and AT&T, which dropped 31.3% after increasing 14.4% in 2014. The immediate result has been a noticeable drop in US patent grants received in 2015 by information technology companies, both domestic and foreign based. Japanese companies led the foreign declines.

Businesses of foreign origin were issued a record of 52.8% in 2015 US patents. US company patent applications abroad was likely up.

Digesting the Declines

Fifteen of the top 26 US patent recipients (58%) were granted fewer patents by the USPTO in 2015 than in 2014.  Even IBM, a leading patent recipient for more than two decades, was down by 0.5%. (See IPO top 300.)

Bucking the trend with net increases among top ten patent recipients include Qualcomm, Google GE , Intel and Samsung Display. Biggest percent increases among the top 300 were from NXP Semiconductor (147.9%), Amazon Technologies (53.3%) and Ford Global Technologies (49.1%).

These are in contrast to 2014, when top US-based patent recipients were all up (see 2014-2013 chart below).

6a00d83451ca1469e201b8d1317de1970c-450wi

 

Litigation Down, Too

It is too early to be certain about why the issuance declines among major IT holders are occurring, but if it is in keeping with the recently announced 30.7% drop in patent litigation for the first half of 2016 (see IAM story), a pattern may be emerging.

What this means for some major technology companies is that patent quantity is no longer king. The arms race may be abating, somewhat. It also indicates that US patents mean less today to many companies than in the past, and paying to secure and enforce all but the best few may no longer makes sense. (I will try to cross-check this with US company foreign filing in a future IP CloseUp.)

Decreases in IT company patent filings can be interpreted in several ways.

The Intellectual Property Owners Association (ipo.org) list of top 300 US patent recipients for 2015, published recently, illustrates a downward trend, with some exceptions noted above. It is difficult to tell whether NXP, Amazon and Ford are playing catch up or see an opportunity that others do not. Also, is it that semiconductors, e-commerce and financial transactions, and automotive are inherently more innovative and potentially combative.

“A combination of factors”

Clearly there are many IP rights in portfolios that should never have been issued, and would be invalidated under further review. Also, patents are less reliable than ever, so why bother? It may be that some companies want to rely on fewer, better quality patents, for freedom of action, but it also may be that they see less value in obtaining them or in identifying new inventions.

“It is a combination of factors,” one veteran patent attorney and analyst told IP CloseUp. “Businesses are seeking better patent quality, and chartoftheday_4260_top_10_patent_recipients_n
USPTO examinations are getting somewhat tougher. Also, there is 
pressure on software patents from the courts, frequent PTAB invalidity rulings, and a general anti-patent environment. Weaker corporate balance sheets also have led to cost cutting.”

The America Invents Act and PTAB reviews have made it much more difficult to license patents, and have diminished their defensive value, too. Patents role in some businesses’ corporate strategy and ROI is under scrutiny.

Interestingly, despite the 2015 drop in patents to top holders, corporate patent buying activity was relatively high. Rock bottom prices may have made portfolio purchases attractive to some.

Patent-dubious Google, which has been an active buyer through various programs (e.g. experimental Patent Purchase Program), as well as a more active filer, experienced a 10.9% increase in patents received in 2015. In 2014, it was up by 31.6%.

Image source: patentdocs.com; aulainip.com; statista.com

 

 

 

The “new normal” is focus of IP Business Congress in Barcelona

With traditional patent strategies under pressure to show that they are still relevant, business as usual in the IP space is no longer the same.

Patent-adverse laws and more circumspect courts have forced owners worldwide to rethink how best to obtain, evaluate and utilize patents. The added scrutiny also has encouraged new, more collaborative IP business models and to reconsider ways of generating ROI.

This year’s IP Business Congress (IPBC Global) at the Arts Hotel in Barcelona, June 5-7. 6a00d8341c1ad253ef019aff9b0225970d-800wi 2016 will be host to more than 75 presenters and 600 attendees. It marks the ninth IPBC Global, the leading event for the business of IP value creation.

The keynote session, “Welcome to the new normal,” will feature the head or co-head of IP at Microsoft, SAP, LG and Google, and the former director of IP business at Sony. An IP executive from Ericsson will moderate.

Rapid Evolution

“New challenges posed by a rapidly evolving global IP market have caused many affected by IP to re-think ways of doing business,” said Joff Wild, Editor of IAM magazine and lead IPBC Global producer. “Developments in Europe and Asia are creating a more international ecosystem, and assertion-based monetization programs are becoming harder to implement in the U.S.”

This year’s IPBC Global sessions include:

  • Welcome to the new normal
  • Meeting the Chief IP officer challenge
  • Peace not war
  • Insider the inter partes review regime
  • Quality trumps quantity
  • Adapt or die
  • The Alice effect
  • Europe’s chance to lead
  • Buyers’ market
  • Debate: Patents as an asset class

Bruce Berman (yes, me) has been asked to moderate a debate on a controversial topic, “Patents as an asset class.” I will have my work cut out for me: It has frequently been claimed that patents are an asset class and should be treated as such by owners and investors. However, others vehemently disagree. They argue that promoting them in this way does more harm than good. Who is right?

Make Your Voice Heard

Readers who plan to attend the conference are encouraged to stop by the IP asset discussion. Members of the audience will be equipped with devices that permit them to cast their vote for against patents as assets at the end of the debate.Logo120x60

IP CloseUp readers who register will receive as 20% discount if they use the registration code IPBC16IPCU.

As usual at IPBC, there will be a host of good networking and private meeting opportunities, and the Catalan back-drop ought to make things even more intriguing. Barcelona is one of Europe’s top technology hubs, and recently was named the world’s “Most Wired City.”

For program and speaker information go here. To register go here.

Image source: ipbusinesscongress.com; http://superflat.typepad.com/

Panasonic, NEC & Sony are battling with IBM for patent sales leadership

Despite dramatically lower patent valuations, some big companies, including under-performing foreign holders, have taken the number of U.S. sales to new highs.

While IBM still leads, over the past three and a half years, it has been joined by IP-conservative firms from Japan, notably Panasonic/Matsushita, NEC and Sony. All four of these companies have something in common: poor recent financial performance.

In the January IAM Magazine, the Intangible Investor looks at the latest trends in patent sales among the biggest sellers. Activity is up and emerging are new leaders, like Panasonic, which leads even IBM in U.S. sales for the first half of 2015.

Analysis conducted by Brody Berman Associates in conjunction with Envision IP, a law firm that specializes in patent research, reveals that “for the three-and-a-half year period from 2012 to early August 2015, the leading seller by far was IBM, with 5,356 patents. Buyers include Google, Facebook, Alibaba and Twitter. In 2014 alone, IBM sold 2,187 patents, the most in any year over the period by any of the 12 leading tech companies analyzed.

Leading Patent Sellers

“Surprisingly, the number two, three and four patent sellers in the 2012-2015 period were all Japanese companies,” writes this reporter. “Panasonic/Matsushita, NEC and Sony, with 4,203, 2,131 and 1,578 respectively. This is a dramatic shift for conservative Japanese electronics giants, which rarely litigate patents to generate revenue or enable others to.”

Subscribers can link to IAM’s January issue here.

Intellectual Venture’s 70,000 patent portfolio appears to contain no patents originally owned by Apple, Google or Qualcomm, as Envision’s findings indicate. Several patents owned by IV investors appear in its portfolio, including those of Nokia, Verizon, Microsoft and Sony. Only 268 of the 19,559 US patents owned by IV were identified as having a litigation history, representing less than 1.5% of the portfolio.

Top 4 Patent Sellers

Among the top companies IV purchased from are Kodak (1,057), American Express (643), AT&T (358) and Philips (313) and Ericsson (273).

A list of IV’s 35 top sources for acquisitions can be found here.

Image source: Envision IP, LLC

Patent Troll “Witch Hunt” Slammed; IP Litigation Tactics, Too

Companies and lawmakers who bash businesses that license patents got a dose of their own bitter medicine this week when their techniques were compared with those of fear-mongering, 1950s anti-communist demagogue Joe McCarthy.

“Villains of the new millennium” is how Jamie Siegel, an Acacia Research Group’s Senior Vice President, characterized the portrayal of non-practicing entities NPEs, also known as patent “trolls,” by those that stand to gain from their demise and who routinely disparage them in the press.

Speaking at the second annual Benchmark Litigation U.S. awards dinner in New York, Siegel was quoted in a story by reporter Michael Loney that appears in the Managing Intellectual Property blog as saying.

“[J]ust as McCarthyism sought to unfairly tag so many with the ‘red’ moniker, Congress, the press, many giant software companies, and even our president, today Jaime-Siegel-retouchedseek to slap the moniker of ‘troll’ on attorneys and business people who are doing nothing more than monetising assets that they own – assets whose very existence is protected by Article 1 Section 8 of our Constitution.” Siegel joined California-based Acacia from Sony last year.

Siegel added that the hysteria around NPEs has been further inflamed by a lack of knowledge, including from the U.S. president. He said Barack Obama showed a lack of understanding when he issued executive directives to change the patent system. Contrary to public perception, he reminded the audience of lawyers, NPEs are good for innovation.

[Gene Quinn in IP Watchdog ran well-linked piece this week that took a deeper look at the sources of NPE-bashing, “Obama on Patents: The One-Sided USPTO Patent Ligation Beta.”]

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In a separate but related development this week, Hon. Randall Rader, Chief Judge of the Court of Appeals for the Federal Circuit (CAFC) provided his strongest and most vocal defense of patent holders’ rights to date.

At a global IP conference in California Law.com reported that he said that  the problem of so-called patent trolls really boils down to a problem of excessive litigation costs. And it’s lawyers who are driving up those costs by spending millions on discovery in search of elusive “smoking-gun” documents.

“You yourselves should be going to your trial judges and requesting restrictions on discovery,” he added. “We cannot tolerate $3 million in discovery expense.

randall-r-rader2While chastising lawyers Judge Rader did not challenge their clients who can afford to pay the exorbitant legal bills and make it increasingly difficult for plaintiffs to file a legitimate complaint. No mention was made of the role recent legislation, which effectively forces holders of even the best patents to sue first to get the attention of an alleged infringer and prevent a declaratory judgement, and negotiate a license later.

“The problem isn’t the patent system. The problem isn’t even trolls,” Judge Rader said, and any effort to single them out will inevitably penalize universities, research clinics and other legitimate contributors to the U.S. innovation system.”

Doug Croxall, CEO of Marathon Patent Group (MARA), a patent licensing and management company, said that “the focus should be on patent quality not ownership. Many companies are unaccustomed to having good patents enforced by knowledgeable parties. We need to embrace good inventions, not fear them.”

Image source: daylife.com/photo/09r76Bpdgh003; patlawcenter.pli.edu; acaciaresearch.com

Rockstar’s Deal with Spherix Could be a Game-Changer for IP Investors

The emerging public IP company space took an an unexpectedly positive turn last week.  

Rockstar Consortium, with a portfolio of more than 4,000 communications patents, has struck a deal with a tiny public patent monetization company, Spherix (SPEX), that is certain to increase the already growing interest in public IP-centric companies, or PIPCOs. 

Spherix, with a market cap of only $5M, said in an announcement that it has entered into a deal with Rockstar, one of the world’s leading patent holders, to acquire a suite of patents. The announcement did not specify the patents being acquired, or the number, nor did it disclose the terms of the transaction. The press release did state that Rockstar has agreed to become a shareholder in Spherix, and that Spherix intends to bring its first enforcement action on the Rockstar portfolio within 30-60 days. 

Rockstar has said that it has been actively licensing its portfolio, but, to date, has not filed any suits. It could be using Spherix as a privateer, or third-party, to do its nasty bidding. However, a rockstar-consortium-247x180successful patent monetization executive close to IP CloseUp told me that would be unlikely, “because without shell companies obscuring ownership, as some patent holders have been known to do, the source of the IP rights in this case is fairly clear.” Rockstar may be merely testing the waters to see how public ownership will affect its portfolio value and licensing potential, and if access to the capital markets can make a difference.

IP CloseUp readers will recall that Rockstar bought most of the patent portfolio from bankrupt Canadian telecom company Nortel for $4.5 billion in 2011. The transaction constitutes what is probably the most expensive patent acquisition ever. The genesis of it was thought to be a collective move against technology rival and Android champion Google. Rockstar is owned by Apple, Microsoft, Ericsson, Blackberry, Sony and EMC.

It’s important to remember that Apple, with a $2.6 billion investment, owns some 58% of Rockstar and, presumably, had some input in the Spherix deal. There may be something on Apple’s agenda that makes the Spherix deal particularly attractive. Time will tell us if this is in fact the case. A few weeks ago in IP CloseUp I wrote about an IEEE Spectrum story that showed how Apple was involved in acquiring a Mitisubishi-originated patent that was eventually turned over to an NPE, presumably more for competitive leverage than cash.

The IAM blog wrote that “On the face of it, then, what we have here is a classic privateering arrangement; but it is possible there is more to it than that. As a Spherix shareholder it is not only assertions of its own patents that Rockstar will benefit from, but also of other portfolios Spherix owns and may acquire in the future.” 

IAM also reported that Anthony Hayes is expected to become CEO next month. Previously a partner at law firm Nelson Mullins Riley & Scarborough, Hayes “was one of the people behind JaNSOME IP Management, a New York-based IP advisory and monetization outfit launching a $30 fund that would invest ‘in global opportunities in the patent market’. Whether his move to Spherix is fund-related, or whether Hayes has cut his links with JaNSOME is not clear.”

60710_spherixSpherix announced a restructuring in December 2012 when it effectively became an IP monetization company. In Seeking Alpha, Adam Gill reports that “[Spherix] had no patents to speak of before this Rockstar deal, but its wholly owned subsidiary Nuta is about to merge with North-South Holdings, which brings $2 million in cash and a portfolio of 222 patents acquired from Harris Corporation (HRS), another company known to have a robust patent portfolio.” Details on that deal can be found here.

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It will be interesting to see if other large patent holders, including operating companies, will seek to test the patent licensing market the via the public equity one.

There is nothing to stop a public company that owns IP rights from taking an equity position in another one, putting it in a better position to monetize its IP rights. In fact, this may be a more efficient and financially rewarding for shareholders.

If I am not mistaken, a 5% or greater stake in a public company is subject to a 13D filing with the S.E.C., disclosing the owner. It could be Rockstar directly or a representative, or Rockstar could own its stake through several entities. We’ll have to wait and see how this plays out.

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Both Spherix (SPEX) and Global Options Group (GLOI), which began trading on Monday after announcing a deal with the group that holds the Walker Digital patents, have been added to the IP CloseUp 30

Illustration sources: thecarecompany.com; techweek.co.uk; sepherix.com 

Patent Valuations: Why do they Differ from Selling Price?

Owners and buyers are frequently out of sync w/ investors

Valuations that are either too high or low underscore the need to provide more bracketed price scenarios when it comes to selling a patent portfolio.

The frequent disconnect between seller, appraiser and buyer suggests a more flexible approach might be needed that anticipates a variety of conditions, contexts, types of buyers, and possible deployments.

Under the best of circumstances, providing an accurate patent valuation is difficult. Valuations typically are conducted for litigation purposes, licensing, taxes and M&A.  A cash flow model applied to patents that are already licensed may not help much. Encumbrances or prior licensing agreements can make these patents less valuable to a new owner. So can an inability to enforce agreements. (Kodak says its patents have generated more than $3B in licensing revenues since 2001.)

Buying and selling whole portfolios is a relatively new phenomenon. Patents are a veritable moving target, with the price of portfolio and individual rights in constant flux. A buyer’s perceived level of need plays a significant role in driving price, not abstract reasoning from accountants or Ph.D.’s. How one or more specific buyers plan to use a particular group of assets will help determine the price it eventually sells for, as well as perceived need, cash position, strength of their current patent coverage, etc.

Reasons for Buying

Large operating companies often buy for strategic (defensive) reasons, i.e. for leverage to counter-balance a potential enforcement against them. A few have started to think about also acquiring patents for their revenue-generating potential. The Rockstar Consortium may have been formed for defensive leverage in mind, but it is clearly in the licensing business. Based on what Apple contributed to the Nortel purchase price, $2.6B, it appears to own 58% of Rockstar. It likely would like more than a strategic ROI.  

Sometimes keeping patents out of the hands of a competitor or competitors is sufficient value to pay a premium to market, especially if the buyer already has a lot of cash and is conducting less R&D that it might. This may have been the motivation behind Google’s $12.5B acquisition of Motorola Mobility and its some 17,000 patents and 6,000 patent applications.

Was Google certain about what it wanted to do with the MMI and its portfolio before purchase? Who knows? Given Google’s cash position and probably need it was not likely to overpay at any price. Foremost, the purchase kept the assets out of the hands of companies who could possibly harm them. (Apple, Microsoft, etc.) After losing out on the Nortel patents the company’s strategy likely changed, as did its willingness to pay a premium to acquire the next “essential” portfolio. There is no disputing that with the MMI purchase Google went overnight from patent have-not to a serious player. (My mother used to say, “rich or poor, it’s nice to have money.”)

Valuations can under-estimate as well as over-estimate price. Here are some recent patent valuations and sale prices or offers:

Kodak, $2.21B – $2.57B –  CNET auction bids to date, $150M-$250M
(Valuation by 284 Partners)

AOL, $290M + $1.1B – Sale to MSFT for $1.1 B (and in turn to Facebook $550M)
(Valuation by M-CAM and MDB Capital)

Nortel, (Stalking Horse minimum bid by Google, $900M) – Sale price $4.5B to Rockstar Consortium
(Apple, ($2.6 B), Microsoft, Ericsson ($340M), Sony, RIM ($770M), EMC)

Motorola Mobility $7.9B market value
(Google paid $12.5B, a 63% premium per share over its stock price, largely for its 17K patents and 6K applications )

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More the Exception Than the Rule

While patent valuation is far from merely throwing darts, it is very difficult to come up with a number for what a buyer will pay for a group of rights at a given time. One could say hitting the sales price target, today, is more the exception than the rule.

If Wall Street and retail investors are to take patent portfolios and transactions seriously, more standardization of terms and methodology will help. There at least needs to be a common vocabulary in discussing patent attributes and possible impediments. Best-case scenarios are not typical. (Perhaps patent valuations should come with a glossary of terms and conditions?) At a minimum, the source of the valuation (paid private firm, investment banking firm, independent appraiser) should be made clear.

In real estate, where there is almost always well-defined body of comparables, mis-targeting the final selling price by much more than 10% is rarely acceptable. For now, missing the final selling price of a patent portfolio by 100% or more is. This does not a market make. Worst of all, it confuses those investors who attempt to make rational stock decisions based on the opinion of valuation professionals. What inventors fail to remember is that intangible assets are much less predictable, and so are their buyers.

Nice-to-Have vs. Need-to-Have

Valuing for litigation damages has always been more art than science. Still, each side has its expert and the court may have one, too. Triangulation often is the result, and it can work in a damages scenario where compromise is acceptable to both parties. Competitive bidding is wonderful for some sellers, but it is only occasionally a realistic option.

Nice-to-have patents are one price; need-to-have another; litigation quality still another. Some but not all of this is in the eye of the beholder.

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Lest we forget, patent valuations for the purpose of a sale may have more to do with goosing the stock price  and enhancing the anticipated offer than establishing a true selling price. For now, surprises in on the high or low end are likely remain the norm. The most useful patent valuations will anticipate the unexpected.

Image source: axialmarket.com; gaebler.com


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