Archive for November, 2008

Reel/Frame: 021906/0775

Sunday, November 30th, 2008
Buyer: RESEARCH IN MOTION LIMITED - Seller: LITTLE, HERBERT A. - RANDELL, JERROLD R. - MADTER, RICHARD C. - HICKEY, RYAN J.Transaction Size: Small - Date Recorded: 12/1/2008 - Reel/Frame: 021906/0775

Reel/Frame: 021879/0169

Monday, November 24th, 2008
Buyer: EASTMAN KODAK COMPANY - Seller: PRENTICE, WAYNE E. - PARADA, JR., ROBERT J. - UEZONO, TETSUJI - NAKAJIMA, KENICHI - FINTEL, WILLIAM V.Asset Size: Small - Date Recorded: Monday, November 24, 2008 12:00 AM PST - Reel/Frame: 021879/0169

Reel/Frame: 021915/0398

Friday, November 21st, 2008
Buyer: CANON AVELVA CORPORATION - Seller: PHYZCHEMIX CORPORATIONAsset Size: Medium - Date Recorded: Friday, November 21, 2008 12:00 AM PST - Reel/Frame: 021915/0398

Reel/Frame: 021876/0013

Friday, November 21st, 2008
Buyer: QUALCOMM INCORPORATED - Seller: APPLIED MICRO CIRCUITS CORPORATIONAsset Size: Large - Date Recorded: Friday, November 21, 2008 12:00 AM PST - Reel/Frame: 021876/0013

Reel/Frame: 021849/0047

Tuesday, November 18th, 2008
Buyer: MARVELL INTERNATIONAL TECHNOLOGY LTD. - Seller: AVAGO TECHNOLOGIES IMAGING IP (SINGAPORE) PTE. LTD.Asset Size: Large - Date Recorded: Tuesday, November 18, 2008 12:00 AM PST - Reel/Frame: 021849/0047

Reel/Frame: 021861/0111

Tuesday, November 18th, 2008
Buyer: INTERCONNECT PORTFOLIO, LLC - Seller: NOVIAS, LLCAsset Size: Medium - Date Recorded: Tuesday, November 18, 2008 12:00 AM PST - Reel/Frame: 021861/0111

Wasted Maintenance Fees

Thursday, November 13th, 2008

Dan Buri, JD

As the economic downturn continues, individual households have been forced to forego planned expenditures. It has been no different for businesses. Many companies have found themselves in similar new budget realities. Budget cuts and layoffs have become a common theme recently in the business world. For many companies, reducing patent maintenance fees is a less obvious way of decreasing expenses.

For those companies qualifying for small entity status, the maintenance fee schedule for a patent issuing today will run about $4,000 for a single patent–$490 at 3.5 years, $1240 at 7.5 years, and $2,055 at 11.5 years. Few organizations, however, have the small entity luxury of discounted patent fees. The standard maintenance fee for a patent issuing today is more than $7,500 over the life of the patent–$980 at 3.5 years, $2,480 at 7.5 years, and $4,110 at 11.5 years. With many experts estimating that between 10 to 35 percent of any company’s patent portfolio is non-core, the maintenance fee savings can be significant. In fact, if you take into account foreign filings, maintenance fees can account for 2/3 of a patent’s overall cost.

While your company is looking at budget cuts, it may make sense to review the patents on which you are currently paying maintenance fees. You may find patents that are not core to your business—and letting them expire can save you considerable funds. Alternatively, you may find that your non-core patents hold significant value for another company. In this case, a patent sale may be a valuable option. A simple patent house cleaning could not only end up saving a significant amount of money in maintenance fees for your company, but may even bring in important unexpected revenue.

Reel/Frame: 021807/0215

Monday, November 10th, 2008
Buyer: MICROSOFT CORPORATION - Seller: JU, YUN-CHENG - ODELL, JULIAN J.Asset Size: Small - Date Recorded: Monday, November 10, 2008 12:00 AM PST - Reel/Frame: 021807/0215

Flash of Genius: Lessons Learned from Robert Kearns

Sunday, November 2nd, 2008

Andrew Godsey, VP Sales

I am consistently impressed with the modern-day inventors GTT represents. While GTT’s patent brokerage clients are generally large or mid-size companies, a significant portion of GTT’s clientele represent the classic inventor. These inventors immediately came to mind as “Flash of Genius”, the story of Robert Kearns, was released in movie theaters last month.

Robert Kearns was the inventor of intermittent windshield wipers (patent numbers: 3,351,836; 3,602,790 and 4,544,870). After an unsuccessful attempt to license the technology to the “Big Three”, Kearns went on to sue Ford and Chrysler for patent infringement. The case eventually ended up being reviewed by the Supreme Court. Kearn’s uphill legal battle lasted from 1978 to 1995 and cost him approximately $10M in legal fees but eventually netted him around $30M in damages.

There are a few thoughts I take away from the story of Robert Kearns:

There is a market now that wasn’t there 40, 20, or even 10 years ago. Transferring patents has become incredibly common. Most major corporations have staff and processes in place dedicated to reviewing intellectual property acquisitions. Were Robert Kearns around today, he would have many more options available to him that could have alleviated some of the costs associated with his battle against Ford and Chrysler. Which leads me to a second thought….

If Kearns would have known that his litigation would last nearly 20 years, cost $10M and take the toll on his professional/personal life that it did, would he have still chosen to litigate?

How would Kearns’ case have held up in light of KSR (KSR v. Teleflex)? Given that the primary legal defense against Kearns in the Ford case was that his patent was obvious, would the verdict have changed today?

Every day GTT advises its inventor clientele on the best path forward and gives solid advice on likely monetization outcomes regarding their patent assets.