Patent Law

Intellectual Ventures Takes First Overt Legal Actions to Enforce its Mammoth Patent Portfolio

By Dennis Crouch

By Dennis Crouch

In a bold move, the patent holding company Intellectual Ventures has filed three separate patent infringement lawsuits against major industry players.

Over the past several years, Intellectual Ventures has amassed a large patent portfolio that is held by a complex web of subsidiary companies. According to its court filings:

Intellectual Ventures has purchased more than 30,000 patents and patent applications and, in the process, has paid hundreds of millions of dollars to individual inventors for their inventions. Intellectual Ventures, in turn, has earned nearly $2 billion by licensing these patents to some of the world's most innovative and successful technology companies.

In the first suit, Intellectual Ventures sued Check Point Software, McAfee, Symantec, and Trend Micro for infringement of Patent Nos. 5,987,610, 6,073,142, 6,460,050, and 7,506,155. These patents were originally owned by Ameritech which merged with SBC. According to USPTO assignment records, SBC assigned its rights to the University of Texas which then assigned rights to Verve, an IP broker. Verve then assigned its rights to AUCTNYC8. The assignment to Intellectual Ventures itself has not been recorded. To be clear, the case caption actually states that the plaintiff is "Intellectual Ventures I LLC." The other two lawsuits involve some combination of Intellectual Ventures I, II, and III, respectively. Other defendants include Hynix Semiconductor, Elpida Memory, Altera, Lattice Semiconductor, and Microsemi (Actel). At least some of the patents being asserted against Altera and Lattice Semiconductor were originally owned by AMD, and then transferred to Legerity. At least one other patent asserted in the lawsuits was invented by noted chip designer Bob Proebsting. After his death, the patent was held by the Proebsting estate. Although Intellectual Ventures (I - III) claims ownership in their complaints, PTO records do not reflect that ownership.

In a press release, Intellectual Ventures issued a warning blow to other potential defendants:

Over the years, Intellectual Ventures has successfully negotiated license agreements with some of the top technology companies in the world. However, some companies have chosen to ignore our requests for good faith negotiations and discussions. Protecting our invention rights through these actions is the right choice for our investors, inventors and current licensees.

Intellectual Venture's chief litigation counsel is Melissa Finocchio who was previously with Micron, Orrick, and Cooley. The company's outside counsel include an all-star cast of Former Delaware Judge Joseph Farnan; John Desmarais; Jared Bobrow; and Parker Folse. All the suits have been filed in Judge Farnan's hometown District of Delaware.

Notes:

• IV Press Release
• Searchable Complaints:
• File Attachment: Intellectual-Ventures_v_Altera_Complaint.pdf (278 KB)(United States Patent Nos. 5,675,808; 6,993,669; 5,687,325; 6,260,087; and 6,272,646).
• File Attachment: Intellectual-Ventures_v_Checkpoint_Complaint.pdf (370 KB)(United States Patent Nos. 5,987,610; 6,073,142; 6,460,050; and 7,506,155).
• File Attachment: Intellectual-Ventures_v_Hynix_Complaint.pdf (539 KB)(United States Patent Nos. 6,373,753; 6,462,998; 6,455,937; 7,444,563; 5,581,513; 5,598,374; and 5,583,822).
• Others Writing on the Topic:
• WSJ Report by Don Clark
• NYTimes Report Steve Lohr

Full post as published by Patently Obvious on December 08, 2010 (boomark / email).