April 2012

April 20, 2012, by Mandour & Associates, APC

Los Angeles – Samsung has filed a counterclaim against Apple with the U.S. District Court in Northern California that accuses the iPhone maker of infringing on eight of its patents. This move was made in response to Apple’s lawsuit against Samsung, which was originally filed in February of 2012. Apple accused Samsung of patent infringement and “seeking an injunction and damages on sales of the Samsung Galaxy Nexus.” Samsung has since denied Apple’s allegations and has now filed the counterclaim accusing the company of the same type of infringement.

Samsung, originally founded in South Korea, now has multiple subsidiaries and owns approximately 30,665 U.S. patents. It is accusing Apple of infringing on its U.S. patent numbers 7,756,087; 7,551,596; 7,672,470; 7,577,757; 7,232,058; 6,292,179; 6,226,449 and 5,579,239. Samsung claims that the infringed patents are “essential to European Telecommunications Standards Institute (ETSI).” Two of the patents are referred to as “FRAND (fair, reasonable, and non-discriminatory)-pledged.” A FRAND patent allows companies to “develop open standards by sharing information and technology.”

Three of the eight infringed patents were originally owned by Hitachi and other companies but were eventually purchased by Samsung.

Although both companies are said to be in litigation in multiple countries for separate matters, it was just last year that the two companies were in a lawsuit against each other in a separate patent infringement claim. Apple sued Samsung in April 2011 claiming infringement on patents related to the iPhone and iPad. Just this week U.S. District Judge Lucy Koh ordered that the two innovative companies meet to discuss a settlement agreement in this lawsuit. Judge Koh ordered that along with the patent attorneys, Apple chief executive Tim Cook and Samsung CEO Choi Gee-sung also participate in the discussions.

It is possible that there will be a settlement in the Apple v. Samsung case that was filed last year. However, the latest action of Samsung in filing a counterclaim against Apple may make it more difficult to reach an agreement on its most recent case.

April 19, 2012, by Mandour & Associates, APC

Los Angeles – The flailing Internet service provider America Online (AOL Inc.) has sold approximately 800 technology patents to Microsoft at a recent patent auction. Patent fire sales are becoming more and more popular as floundering companies try to raise the funds to stay afloat and for financially sound companies to increase their market share and earn licensing royalties.

Microsoft would not comment on what technology the patents cover, however technology analysts believe they relate to Internet technology, including advertising, search, and mapping. If that is the case with the patents purchased from AOL, Microsoft will have a chance at competing with Google, which dominates the market in all three areas.

“There is a fight for market share occurring on multiple fronts – technology, patents, and advertising,” stated Colin Gillis, an analyst with BGC Partners, who covers Microsoft. “Microsoft, more so than others out there, has been using its patent portfolio as a way to generate license fees. This should strengthen that.”

In recent years, the high-tech industry has become a hot bed for patent sales as well as for messy litigation. Many companies, such as Apple, Microsoft, and Samsung have used their patent artillery for suing their competitors for patent infringement as well as for disputing infringement claims against them by trying to invalidate their competitors patents.

A recent example of this is social networking giant Facebook acquiring 750 patents from IBM, which aided the company in defending itself after being sued for infringing 10 Yahoo patents. With the newly acquired patent portfolio, Facebook was able to respond to Yahoo’s complaint with a counter complaint, accusing Yahoo of violating ten of its patents.

Just after the announcement of the patent sale, AOL’s stock rose $7.98 or 43% per share, to $26.40. The iconic Internet service provider says it plans to pay out a portion of the proceeds as dividends to its shareholders. Once the sale is final, AOL should have about $15 per share of cash on hand.

AOL will still retain more than three hundred patents covering a wide array of technologies, including advertising, search, content generation, social networking, mapping, multimedia, and security.

April 11, 2012, by Mandour & Associates, APC

Los Angeles – Taiwanese smartphone manufacturer HTC has recently signed a patent licensing deal with Intertrust Technologies Corporation that will give it rights to use the company’s patents for digital rights management.

HTC reportedly also walked away with a twenty percent share in SyncTV, a subsidiary company of Intertrust, for an undisclosed amount. SyncTV offers a cloud-based streaming service that is compatible on several different platforms, including Android, Windows Phone, Xbox, iOS, and Internet-enabled televisions. Many are speculating that this move could potentially catapult HTC into many other consumer technology markets besides the mobile media device market.

Other handset manufacturers such as Motorola, Samsung, and Huawei, have entered into patent licensing deals with Intertrust in the past, however the company stated that this is the first time that a partner has negotiated a stake of one its subsidiaries into the agreement. Intertrust has termed its deal with HTC as a “broad strategic technology partnership.”

Intertrust Chief Executive Officer, Talal Shamoon, commented that HTC is now “licensed to do anything with our IP,” with its mobile devices and potentially other consumer electronics products. He also pointed out that HTC has historically been involved with a broad range of products. In the past, Intertrust has been mainly involved in developing patented technologies in areas such as distributed computing, including cloud-based services, as well as digital rights management.

In its patent deal with HTC, Intertrust’s Marlin DRM software will be used “to protect and manage content in various national video distribution ecosystems in Japan, China, and Europe.”

In order to compete with technology giants like Apple, HTC has been building up its patent portfolio of content and service investments over the past year with the potential to enhance its product line and distinguish itself apart from other smartphone manufacturers. Its decision to purchase twenty percent of the SyncTV subsidiary will allow it to fulfill its goal of growing its product line because of the company’s ability to cover streamed video services to more than just mobile devices.

Luckily for HTC, Intertrust has had a successful history in the technology industry when it comes to protecting its intellectual property. In one particularly notable patent infringement litigation dating back to 2004, Intertrust settled a lawsuit with Microsoft, collecting damages of $440 million.

Posted in: Patent License
April 2, 2012, by Mandour & Associates, APC

Los Angeles – As Facebook prepares for a legal battle against Yahoo over patent infringement, it has just recently boosted its intellectual property portfolio by purchasing hundreds of patents from International Business Machines Corp., better known as IBM. Facebook purchased about 750 technology patents from IBM including patents ranging from software to networking.

The purchase comes at a high-profile time for Facebook. Last month, Facebook received notice from Yahoo claiming that it had been infringing on about 10 patents including advertising and online messaging patents. Unable to reach any sort of agreement, earlier this month Yahoo filed a lawsuit against Facebook for patent infringement. It would appear as if Facebook is looking to reach a settlement with Yahoo before its up and coming IPO. Facebook has said that it is “puzzled” by the lawsuit. Yahoo has asked the court for an order which would bar Facebook from any further infringement on its patents as well as compensation for damages. According to LegalMetric.com, in 2011 Facebook was faced with 22 patent lawsuits.

Not only is the social networking giant facing a legal battle in court but it is also nearing an initial public stock offering which is said to be valued at about $100 billion.

Although Facebook, an eight-year old company, has about 850 million active users, at the end of 2011 it had only 56 U.S. patents. This isn’t the first time a company from Silicon Valley has turned to IBM to beef up its intellectual property. Thousands of IBM patents have been purchased by Google as well. There is no question that IBM has an extraordinary track record when it comes to patents. It not only received about 6,100 new patents just in 2011 alone but IBM has also made it to the top of the U.S. patent recipients list for almost twenty years straight.

A Facebook representative confirmed the purchase from IBM but declined to comment further. IBM has declined to comment on the report.