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Patent licensor Uniloc Luxembourg SA—among the top patent buyers in the U.S.-brokered market in the second quarter of 2017—has already gone to court to enforce them, according to data reviewed by Bloomberg BNA.
Just a few weeks after adding new patents to its intellectual property arsenal, Uniloc began asserting them in infringement complaints filed in U.S. district courts against companies, including software giant Apple Inc., Bloomberg Law data show.
Uniloc acquired 68 U.S. patents from server technology company Hewlett Packard Enterprise Co. That was the largest deal in the quarter for U.S. patents and brought Uniloc’s ranking up to fourth, overall, in total patent assets, including applications and foreign patents, data provided to Bloomberg BNA by Richardson Oliver Law Group LLP showed.
So far, only 13 U.S. patents from that transaction, including those being asserted in court, have been recorded in the Patent and Trademark Office’s assignment records. The patents broadly cover wireless communication and battery charging technologies, the records show.
ROL Group tracks the reassignment of U.S. patents from various listed packages comprising U.S. and foreign patents, and patent applications for sale, to identify when a sale is executed. Due to a lag in recording reassignments at the PTO, the group assumes that a given package is sold if any U.S. patents listed in it are shown as reassigned in the PTO’s system.
Uniloc, which has been in the patent-assertion business for a long time, has acquired the skill of licensing and litigating patents, Kent Richardson, an ROL partner, said. “The Uniloc team is now applying that skill to new technology areas, markets and potential licensees,” by acquiring diverse patents, Richardson said.
Luxembourg-based Uniloc and its subsidiaries have as many as 272 U.S. patents and pending applications, according to the assignment records.
In August, Uniloc filed a suit against software giant Apple in the U.S. District Court for the Eastern District of Texas, asserting a patent it bought from HPE covering technology that lets a palm-sized computer control network devices. Apple’s iOS smartphones and tablets that control devices such as Apple TV infringe its recently-acquired patent, Uniloc said in its lawsuit.
The patent licensor also sued Samsung Electronics America Inc. in the Eastern Texas district. Its complaint alleges that the consumer electronics maker infringes another patent purchased from HPE covering technology that lets mobile devices communicate with personal computers to autodial stored telephone numbers.
The U.S. Supreme Court ruled in TC Heartland LLC v. Kraft Foods Grp Brands LLC in May that patentees can’t file lawsuits solely based on where an alleged infringer sells a product in order to get their cases heard in purportedly friendly jurisdictions like the Eastern District of Texas. Even so, Uniloc has continued to file suits in the district on the grounds that companies like Apple have retail stores that constitute a “regular and established” place of business in the district for venue purposes.
Uniloc and its American unit, Uniloc USA Inc., have filed approximately 318 infringement suits—95 percent in the Eastern District of Texas—since filing their first complaint in 2003 against Microsoft Corp. that ended in a settlement, according to Bloomberg Law data.
In June, Uniloc was the top filer of infringement suits in the East Texas court with 11 lawsuits—including complaints against Apple over motion sensor technology, and against Google over online voice communication patents.
Ride-hailing service Uber Technologies Inc., for the second quarter in a row, was the largest buyer of patent assets, including patent applications and foreign patents. Uber has been aggressively buying patents to defend against potential infringement lawsuits.
Second-quarter purchases covered 110 assets, including 59 U.S.-issued patents from HPE and business software company ManyWorlds Inc., according to the ROL data. Twenty-four HPE patent assets, bought in June by Uber, involve communication-server technology, the PTO assignment records show. The 12 ManyWorlds patents, also acquired in June, cover technology that helps match people based on common interests and geographical proximity.
Uber has recently begun challenging patents through the PTO’s Patent Trial and Appeal Board. The PTAB reviews the validity of issued patents, giving defendants in infringement cases an opportunity to cancel patents asserted against them. In August, it filed petitions challenging two patents related to location-based tracking technology in response to a 2016 infringement complaint filed by software developer X One Inc.
On the other hand, one patent Uber bought in the second quarter through the Industry Patent Purchase Program run by Allied Security Trust, which buys patents to safeguard its members from infringement suits, was invalidated after a challenge from the Texas Association of Realtors. The PTAB found in August that “displaying points-of-interest on a digital map” claims in the patent were not patentable.
The number of patent assets listed in the market totaled 1,611, up 9 percent from the first quarter of 2017 but down 41 percent from the same period a year ago.
The number of patent-deal packages listed totaled 105, relatively unchanged from the first quarter and down 51 percent from the same period a year ago.
The median asking price, per new asset listed by patent brokers, was $150,000 in the second quarter. That reflected a drop of 30 percent from the previous quarter, and 10 percent from the second quarter of 2016.
“People are constraining their asking prices to a narrower range,” Richardson said. “People trying to differentiate themselves from a price point of view are having to work harder.”
Brokers matched buyers and sellers for 40 deals on packages of related patents during the quarter, according to ROL data. Those deals totaled 764 assets, including 491 granted U.S. patents.
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