Efrat's
Message
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Happy World IP Day to all our colleagues, friends and clients!
World IP Day was first instituted by the World IP Organization (WIPO) 19 years ago, and is celebrated annually on April 26th. The Foresight in the Media section of this newsletter features my insights on the state of the market for IP rights, as published by IP Watchdog, under the theme: "Where We've Been and What's to Come". It is only appropriate that in close proximity to World IP Day, one of the most significant legal disputes surrounding patent licensing - the Apple/Qualcomm royalty dispute - ended up in an epic settlement. This story is covered in our IP Digest section, along with other notable developments, including the new EU Copyright Directive and the Supreme Court's interpretation of "offensive" trademarks.
The Foresight blog this month features the
Foresight team's take on Toyota's recent announcement
that it will grant royalty-free licenses on nearly 24,000 patents related to its hybrid electric vehicle market. We particularly looked at the implications on the valuation and positioning of Toyota's patent portfolio, as well as how this move stacks up against a similar patent gesture made by Tesla. We also feature the first installment in a new series of
Trade Secrets Damages Expert Blogs,
where we cover the Court's flexible approach to damages calculations. This blog series is very timely as we see instances of trade secret litigation on the rise, as workforce mobility and data vulnerability contribute to the ease of trade secret misappropriation in the workplace.
As always, I hope we can see as many of you in person in some of our upcoming events. Coming up on May 22nd is Part 2 of the series on Startups Financial Fundamentals, hosted at the law offices of Procopio in Palo Alto. The following month, on June 24th, I will join the faculty of the IP Watchdog Patent Masters SymposiumTM, taking place in Washington DC. The symposium brings together a group of experts to discuss the status of patent eligibility in the US five years after the Supreme Court's decision in Alice v. CLS Bank.
Warmly,
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Foresight in the Media
Foresight president, Efrat Kasznik, weighs in on the last two decades of patent dominance in the market for IP rights, and on the future rise in prominence of other types of IP rights. Efrat predicts that the path from "euphoria" through "hangover" will lead into new directions, driven by the key role that data is expected to play in the future.
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Foresight Blog Highlights
Toyota has recently announced (April 2019) that
it will grant royalty-free licenses on nearly 24,000 patents related to its hybrid electric vehicle (HEV) market.
In the
announcement
, Toyota stated that its goals were to promote widespread adoption of electrified vehicles in an effort to help governments, automakers and society at large accomplish goals related to climate change. Toyota's new patent announcement raises a number of important questions related to the value of these patents and the end goal of Toyota's move. In this blog we examine the potential motivations for Toyota's bold move, its implications on patent valuation and brand valuation, and how Toyota's patent move is very different from what appears to be a similar move made by Tesla.
This is the first blog in a series on trade secrets, where we will focus on a number of cases that shed light on the methodologies involved in calculating trade secret damages and use the outcomes of those decisions to provide best practices that should be utilized in calculating trade secret misappropriation damages and to highlight, when appropriate, steps that should be taken by the trade secret owner to be in the best position to extract the most value from their trade secrets. In this first blog in the series, we review the
DSC Communications v. Next Level Communications case where the entire purchase price of the misappropriating company was utilized in the determination of trade secret damages.
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IP News Digest
One of the biggest and most covered IP lawsuits ever has ended in a settlement agreement after only 1 day. The trial was anticipated to take weeks, or even months, but the two sides were able to quickly agree to terms that included a lump sum payment by Apple, and the agreement to end all litigation between the two tech giants worldwide. After nearly 2 years of buildup, the settlement has major implications on the balance of power in the industry as it readies to deploy 5G mobile technology at scale.
Full Story Here
The Council of the European Union has officially signed off on the new EU Directive on Copyright in the Digital Single Market. The update to the European copyright laws aims to safeguard copyrighted content on the internet and ensure that rights holders are paid their fair share. Opposition, however, sees the new rules as a "censorship machine" that will resist free speech and make it nearly impossible for digital platforms to comply. The debate can largely be boiled down to 2 key Articles in the new directive: 1 which gives rights holders the right to be paid by online platforms and aggregators when those sites share just small portions of their content, and another which compels content-sharing services to directly license copyrights material.
The Supreme Court is set to rule again on a trademark issue dating back to the '90s. A Los Angeles brand was originally denied trademark protection on the grounds that the mark contained "immoral" or "scandalous material. The U.S. Court of Appeals for the Federal Circuit overturned the Trial and Appeal Board's original decision, ruling that the ban on "immoral" and "scandalous" trademarks is a violation of the 1st Amendment. In a similar case in 2017, the Supreme Court further struck down parts of the Lanham Act (the original act cited to deny the trademark in L.A.).
The highly controversial tactic used by Allergan to prevent review of its patents by the USPTO has been rejected by the Supreme Court. Back in 2017, the pharmaceutical company transferred patents covering its dry eye medication, Restasis, to the Saint Regis Mohawk Tribe, in turn signing a license agreement for those patents in exchange for ongoing payments. Allergan argued that the sovereign status of the tribe under federal law made the patents immune from administrative review. The Supreme Court refused to hear the company's appeal, and upheld the decision made by a lower court to deny the tactic.
Full Story Here
WIPO is releasing a new AI-powered image search technology which it says will provide significant labor-cost reductions for examiners, attorneys and paralegals, industry practitioners, and researchers. Traditional image search tools rely primarily on identifying shapes and colors in trademarks, while WIPO's new tool uses deep machine learning to identify combinations of concepts. As a result, the tool produces a far narrower and more precise group of potentially similar marks. The tool also deploys a robust search functionality, covering collections of 45 trademark offices that are already participating (representing almost 38 million trademarks).
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Upcoming Events
When: 2 part-series: Wednesday, April 17 & Wednesday, May 22, 2019
Where: Procopio, Cory, Hargreaves & Savitch LLP, 1117 California Avenue, Palo Alto.
Efrat Kasznik,
Foresight President, Lecturer at the Stanford Graduate School of Business, and Chair of the High Tech Sector of the Licensing Executives Society (USA-Canada), will share insights from her 25 years of experience as an IP valuation and strategy expert, as well as a Silicon-Valley entrepreneur, CFO, investor and startup advisor.
This two-part series explores the fundamentals of financial modeling and valuation involving startups and emerging technologies, and how to leverage your intellectual property (IP) portfolio for funding and growth. The talks will be given in Palo Alto (hosted by the
Procopio office in Palo Alto) and broadcast to a broad international audience. Registration links are coming up on
Access Silicon Valley.
Part 2
:
Wednesday, May 22, 2019 @ 6:00pm-9:00pm
The second installment of the series,
Monetizing Innovation: Leveraging Intellectual Property for Funding and Growth,
explores the interaction between IP assets and corporate value, and how to manage your IP portfolio to support funding and growth.
When: June 24-25, 2019
Where:
750 9th Street NW,
Washington, DC
Foresight President, Efrat Kasznik, will join the faculty of this two-day symposium, focused on the status of patent eligibility in the US five years after the Supreme Court's decision in Alice v. CLS Bank. Efrat will be addressing the value of software patents post-Alice, including topics such as: the impact on real-world patent valuations, monetization strategies for software patent holders, and IP strategies for technology startups.
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