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3 Intellectual Property Lawsuits Every Business Owner Should Understand

3 Intellectual Property Lawsuits Every Business Owner Should Understand

 

Intellectual property lawsuits are a reality of maintaining a productive IP portfolio. As one facet of your patent monetization efforts, you should be prepared to actively protect your patents – via legal proceedings, if necessary – to ensure other companies don’t use your patented invention to earn revenue.

Patent litigation requires an understanding of some of the landmark standards that have been seen in major, recent intellectual property lawsuits. The following three lawsuits have changed the game for patent infringement, licensing and injunctions.

1. Microsoft v. i4i: Supreme Court Rules Against Microsoft

If you are a smaller company experiencing patent infringement from enterprise organizations, you do not have to accept being pushed around the playing field.

Back in 2011, there was a high-profile intellectual property lawsuit in which the Supreme Court unanimously upheld a lower court ruling that software behemoth Microsoft infringed the patents of a small Canadian company, i4i. The ruling hinged on the strength of the presumption of “validity” for claims of a patent allowed by the USPTO.

Although Microsoft attempted to paint i4i as a “patent troll,” the small company withstood the legal fees and came out on top. An alleged infringer needs to show “clear and convincing” evidence in order to invalidate the claim in question at trial. Microsoft was forced to pay out $290 million for patent infringement.

If Microsoft had won the intellectual property lawsuit, however, it would have established a new precedent making it easier to invalidate a patent.

2. Ebay v. MercExchange: No Guarantee Of Injunction

Once you’ve proven before the court that someone has infringed upon your intellectual property, that doesn’t necessarily mean you are granted an injunction so they permanently cease infringing.

Back in 2000, eBay began negotiations to outright purchase MercExchange’s online auction IP portfolio – eBay had already been using practices from their patents at the time. Sometime in the middle of negotiations, eBay abandoned the purchasing effort and MercExchange sued eBay for patent infringement … and won.

After the verdict, MercExchange sought an injunction to prevent eBay’s continued use of its intellectual property. This time, the District Court denied their request. However, the Federal Circuit reversed the District Court, stating there was a “general rule that courts will issue permanent injunctions against patent infringement absent of exceptional circumstances.”

That being said, the Supreme Court ultimately overturned the Federal Circuit’s approval of the injunction, determining that an injunction should not be automatically issued based on a finding of patent infringement. Then, it also ruled that District Court originally erred in denying an injunction based on the fact that MercExchange does not practice their patented invention.

3. Microsoft v. Motorola: Jury Puts End to Patent Shenanigans

Not all intellectual property lawsuits are about patent infringement.

Back in 2011, Google bought Motorola Mobility for $12 billion. Many say the motivation of this purchase was Motorola’s IP portfolio – Google wanted to use it to fight back against certain Microsoft lawsuits. However, the Western District Court of Washington instructed Motorola to pay Microsoft $14.5 million for abusing those patent royalties by refusing to license standards-essential, “FRAND” patents at reasonable terms.

The verdict in this intellectual property lawsuit was a landmark decision and contributed to a growing list of regulators and courts sending the message that the best patent policies encourages use of patented, standards-essential subject matter paired with reasonable and non-discriminatory licensing practices.

Patent litigation simply comes with the territory of effectively managing your IP portfolio. However, there’s nothing simple about intellectual property lawsuits.

Whether you have in-house or outside counsel to guide your legal proceedings, it’s incredibly helpful to partner with a patent litigation support team that allows your legal team to focus on patent law by offering comprehensive support in the technical and legal aspects of a patent infringement lawsuit. Pre-trial planning, reverse engineering, invalidity analysis and excellent technical experts make all the difference in a verdict.

Ready to learn more about intellectual property lawsuits and find the right patent litigation support? Contact TechPats today.


IP Management: 5.5 Critical Reasons You Need An IP Consulting Firm

IP Management: 5.5 Critical Reasons You Need An IP Consulting Firm

Intellectual property means much more than just innovative inventions and patents. To realize and enable different income streams, your IP portfolio must be properly managed to safeguard proprietary technologies and help maintain a competitive advantage in the marketplace, while also attracting interest and investments.

An IP consulting firm is an important ally when building or strengthening your patent monetization efforts.

Partnering with an IP consulting firm go hand-in-hand with a robust IP strategy that aims to identify, evaluate, capture, protect and attain valuable IP assets. Here’s why:

1. You Find Engineers And Analysts With Years Of Experience

A good IP consulting firm has engineers and analysts with years, if not decades, of industry experience. They know how to take a 30,000-foot view of your patents and their related technology, but are also able to get up close and identify key patents that form the basis for a solid patent monetization strategy.

2. You Secure The Absolute Best Blueprint For Patent Monetization

As a leader of your corporation, you do not necessarily have the dedicated resources it takes to develop a comprehensive roadmap for successful IP management.  When you partner with an IP consulting firm, they are focused fully on realizing the potential of your IP portfolio, leaving no stone unturned. With an underlying awareness for integrated, exhaustive patent mining, the right IP consulting firm gives you the absolute best blueprint for patent monetization.

3. You Easily Adapt To Industry Trends For Strategic IP Management

Industry, technology and applications are ever changing, and it is often difficult for company leaders to stay ahead of the curve where the future of their patents are concerned. To truly get the most from your IP portfolio, it requires strategic IP management that is best attained with an experienced IP consulting firm that’s able to predict future industry trends. This high level of strategic patenting is going to give your company an edge over competitors.

4. You Gain Reverse Engineering Services And Teardown Capabilities

When your company faces competitor threats to your intellectual property, you need patent litigation support. The right IP consulting firm has reverse engineering services with experts in technology teardown tactics. The evidence these experts uncover is commonly a deciding factor in court.

5. You Receive Patent Litigation Support For Legal Proceedings

Whether you are protecting your IP against infringers or defending your products against the infringement claims of competitors, an IP consulting firm provides highly experienced patent litigation support services to work with either in-house or outside counsel. The firm acts as a silent partner for legal counsel. With attorneys on staff, the firm understands the position that you may be stuck in and tailors the work product for use by those acting in a legal capacity.

5.5. You Get Efficiency And Value

Effective IP management requires a quick, proactive team to get through a portfolio, comply with a docket or find EoU. When you partner with an IP consulting firm, they provide all the IP services you need, as they have the team already built and ready to go to work. This level of efficiency and expertise equals value by saving your time and money both in the short- and long-term.

While providing your business with a proactive approach to IP management, an IP consulting firm also assists in mitigating significant risks resulting from poorly considered or reactive approaches to patent monetization.

Ready to partner with the right IP consulting firm and receive long-term, successful IP management for your corporation? Contact the patent experts at TechPats today.



5 Patent Monetization Mistakes That Could Cost You A Fortune

5 Patent Monetization Mistakes That Could Cost You A Fortune

Patent monetization has emerged as a promising way for many businesses to generate a significant amount of revenue. However, there is no single, guaranteed strategy, and determining exactly which path to take when attempting to monetize any one given patent is never clear-cut.

When it comes to patent valuation and efforts to monetize your intellectual property, there are plenty of possible mistakes to make along the way. If you want to get the most value for your patent, try to avoid the following five mistakes.

  1. Not performing an IP valuation, or not acting on it at all.
    If you do not know what your patent is worth, how are you going to monetize it appropriately?

    The IP valuation process requires an in-depth understanding of the market, industry that directly affects the value of your patent – as well as related industries. One of the first steps in patent valuation is assessing the necessity of the patent’s underlying invention to products and services in the market. For instance, is the claimed features core to your industry and widely used to generate revenue? Or, is the subject matter of your patent a minor function that is easily designed around to solve the same market demand?

    Is your patent a transformative invention or an incremental invention?

    In any case, to assess your patent’s worth, you want to also examine the state of the art at the time of invention, if possible. This means determining how your patent may be different from or innovative over other similar, contemporary patents.

  2. Not having the right patent monetization strategy.
    Once you have conducted a patent valuation and understand the strength of your patent, the next step is to extract the value and get that patent generating revenue.

    Patent monetization generally happens in one of three ways:

    • Patent licensing: In return for a negotiated royalty, patent owners allow a potential infringer to develop, manufacture and/or market the claimed invention.
    • Patent litigation: When patent owners cannot strike a royalty deal, or want to enforce their right to exclude a competitor from infringing behavior, owners may bring a patent infringement lawsuit and ask the court for monetary damages.
    • Patent acquisitions: Sometimes patent owners find a suitable buyer who offers the right price, at the right time and in the right situation. A potential partner may want to share the risk of licensing and litigation, or a buyer may even offer you a license to continue using the invention.

    These options are far more intricate and complex than they first appear on their faces and are often part of the same strategy.

    For instance, licensing negotiations could break down and a lawsuit may be initiated to bring the parties back to the table, or a multi-year lawsuit could end in settlement of a non-exclusive license and a hefty annual royalty.

    When making goals, you must remember that all strategies require at least some investment and a fair amount of patience.

    Do you want to try to recover your investment via licensing your patent, attempt to secure a competitive advantage by excluding a competitor or begin to build recognition as an innovative leader by developing a larger portfolio? The end goal for your patent monetization effort helps determine your strategy, but a solid patent monetization strategy should be able to adapt.

  3. Not thoroughly analyzing the market and industry.
    Patents are often very complex, and IP valuation is an extremely detailed process that requires the input of both lawyers and expert advisers with specific technical knowledge.

    Market-based patent analysis takes into consideration similar market transactions of comparable patents. This process may also evaluate utility and technological specificity, along with the market perception of the patent.

    Look at your potential competitors and determine if your technology is being applied. Also, consider other industries where your patent may have crossover appeal. You do not want to leave any stone unturned!

  4. Not choosing the right targets for patent monetization.
    It is not uncommon for businesses to have difficulty identifying companies to approach about monetizing their patents. Depending on the technology of your patent, there could be hundreds or thousands of companies to consider. Identifying the right companies for patent monetization is complex and time-consuming.

    Some patent monetization strategies start with citation analysis to discover what companies own patents and patent applications that cite your patent. This may not always be good for your specific monetization needs. The theory behind citation analysis is that a more-highly cited patent would cover technology that is core to the market. Citation analysis could potentially yield a list of companies who own patents that cite your patent and may be supplemented with corresponding products and services that infringe your patent.

    However, reliance on citation analysis may also be misleading because the citations refer to a patent’s specification and not necessarily the claimed subject matter. Patents can be cited for a number of reasons during the application process and there are no simple ways to determine which features were referenced or which owners are practicing any or all of the cited features. Unfortunately, citation analysis is not capable of producing “magic lists” that identify and rank potential targets, without human intervention.

    Therefore, choosing the right targets to approach for licensing discussions or potential lawsuits should be based on an intimate understanding of the subject matter claimed in your patent. Because claims are the only enforceable part of the patent, choosing potential targets for a patent monetization strategy can only prosper with claims-based analysis combined with expertise in the industry and in-depth knowledge of the market. It is wise to use caution when considering any lists of targets produced by software alone.

  5. Not having an experienced IP consulting firm to package all of this together.
    Patent monetization is a complicated landscape to navigate on your own. For instance, IP valuation, revenue strategies, patent litigation support, and buyer identification are all practiced in an intricate world of patent codes, laws and worldwide databases. Not to mention, the various technologies can be difficult to grasp, sometimes, as well.

    Partnering with an experienced IP consulting firm with on-hand experts is vitally important for getting the right advice on how to effectively maneuver all of your patent monetization efforts.

Conducting a successful patent monetization process requires the proper knowledge and experience in the area of your intellectual property. Without deep-detailed information about the companies and patents being offered on the market, you have no framework for moving forward in a strategic and meaningful way.

Making critical mistakes in how you go about patent monetization could end up costing your business a lot of time and money.

Ready to learn more how to enhance your patent monetization efforts and jumpstart significant revenue generation for your business? Contact the Patent Miners at TechPats today.