The following is a guest post by Patrick Anderson of Patent Calls. Patrick originally published this on his own blog, GametimeIP.
Intellectual Ventures made a name for itself by (originally) negotiating patent licenses outside of litigation. However, when those prospects started to run dry, IV launched a warning shot–which later appeared a bit underwhelming for a mass aggregator holding tens of thousands of patents. This opening blow was followed by a series of targeted rifle shots, like their ITC enforcement action against Hynix and Elpida. What these lawsuits collectively lacked was shock-and-awe, like Jay Walker's bold protestation against widespread, uncompensated use of his company's IP. Until now, that is.
Intellectual Ventures has now sued AT&T, T-Mobile, and Sprint Nextel in a single lawsuit over fifteen different patents. Breaking the news on its IV Insights Blog, the patent owner provided a copy of a complaint and a relatively simple statement noting that the aggregator "previously attempted to discuss licensing options with each of these companies, but none were responsive." The technology appears to mainly deal with techniques for managing cross-carrier text and multi-media messages, hence the combination of carriers in a single suit despite patent reform's partial ban on the practice. Perhaps even more interesting are the various original sources of patents used in IV's most recent attack.
This week's lawsuit, more than the others IV previously waged, demonstrates the obvious power of massive patent aggregation. The fifteen patents identified in the suit come from at least 10 different sources, including major companies, research institutions, one university and some individual inventors. Separately, any given patent could be vulnerable to non-infringement arguments, or susceptible to a momentum-killing reexamination. Combined, however, the patents are inherently much stronger. Assume, for example, that for each patent asserted, the wireless carriers believed they had a 90% chance of invalidating all relevant claims at trial. To prevail, the carriers must prevail in fifteen independent events, which carries only about a 20% likelihood of success. And there is good reason to treat invalidation and infringement of each patent as an independent event because, although the patents are all related in general subject matter, most come from different sources and thus describe distinct inventions.
In fact, only three patents come from the same original owner–Conexant–who provided 6,977,944, 7,343,011 and 7,136,392. Remaining contributors to IV's pool of asserted patents are responsible for only one patent each, and include Verizon (the only major wireless carrier absent from the suit), Motorola, Nokia, Telecordia Technologies (formerly BellCore, the Baby Bell's version of Bell Labs), and Hong Kong University of Science and Technology.
Interestingly, while Verizon contributed patents to IV's collection, and managed to avoid this latest lawsuit, Motorola's deal with IV apparently did not come with rights, at least to some portfolios. Motorola's contribution was part of a 344-asset sale to Torsal Technology Group back in 2008. Torsal subsequently transferred the Motorola patent to Antozskij Research LLC, which merged with Intellectual Ventures I LLC earlier this month. All three transactions used the same law firm to record the deal: Schwabe, Williamson & Wyatt in Portland. Telecordia's contribution is part of a transaction involving 45 assets sold to TTI Inventions B LLC in 2010. TTI Inventions merged with Intellectual Ventures II, LLC earlier this month as well. Telecordia is currently owned by Ericsson, but the sale to IV's holding company occurred during the ownership tenure of two notable private equity firms: Providence Equity Partners and Warburg Pincus.
Listed as lead counsel for IV is Martin Black of Dechert LLP, marking the sixth different law firm used as lead counsel for the aggregator. Several are large, well-known law firms (including Susman Godfrey Weil Gothshall, and Irell & Manella). This is the first lawsuit filed in 2012 for IV, and the first in nearly four months (John Desmarais' firm sued Nikon over five different patents in late October). While IV's next move remains to be seen, it's safe to say things just got a lot more interesting.
