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Top IP Management Mistakes: Saving Money on Maintenance Fees

By: Fernando Torres, MSc

Challenges of IP Management

Managing an organization’s IP portfolio is full of challenges in the context of global competition, which turn particularly acute in the current economic dynamics of the turnaround from the financial crisis.

There are a few good information sources on the Best Practices for IP management. The International Trademark Association (INTA) and the World Intellectual Property Organization (WIPO) serve the global community of large companies and SMEs respectively. Something that is often missing, however, is learning from the mistakes of others. This may be because organizational culture has a way of suppressing mistakes from public view, or because emphasis is often placed on the case-specific nature of such problems, rather than abstracting the general lessons from the experience.

In any case, aside from maintaining a current inventory of intangible assets including intellectual property, designing and enforcing quality controls with internal and external publics, IP managers must continually ensure the organization’s IP policies support and advance the company’s mission and strategic directives.

When the latter process goes wrong, most IP managers can learn a valuable lesson. In this post, we address a critical mistake that we witnessed at a corporate restructuring client some years ago, dealing specifically with global IP.

Mistake #1: Saving Money on Maintenance Fees

In the last few years before a Chapter 11 filing was necessary to restructure the business, the subject company’s IP managers had finally inventoried the complete patent portfolio that had accrued in both the USA and Europe as a result of the company’s growth and M&A activity. The key and elusive piece of puzzle was a matrix, cross referencing the individual patents and the specific product lines and respective factories in which they were applied.

Simultaneously, a central piece of the strategy the company’s top management tried to implement was cost savings across non-essential activities.

Armed with their summary matrix, when the harried IP managers decided on their contribution to the cost saving measures, they identified European patent annuities (yearly maintenance fees) as a material target and proceeded to rationalize the portfolio by suggesting to stop paying those maintenance fees on patents in those European jurisdictions were they did not have significant levels of sales (Italy was a big offender).

The problem here was informational. The IP management summary did not clarify that the patents in those jurisdictions were covered manufacturing processes, not end-products. A couple of years later, in the aftermath of the bankruptcy filing, the company negotiated to settle debts of its European subsidiaries while holding on only to the IP, namely the European patents.

The prior mistake reared its head: the manufacturing plants and their advanced technologies were unprotected in several European countries and the assumed European Patent Portfolio was full of holes and phantom patent assets that had lapsed due to unpaid fees. Thus, regardless of any negotiation prowess, the competitive advantages of proprietary technical advances in the manufacturing plants were discounted by the bidders for the plants, and the company could only sell a few disjointed and not very valuable patents that covered final-product features that change very often in the fast paced markets in used to dominate.

Thus, a superficial understanding of the IP inventory gave way to a substantial loss of value for the restructured company. Needless to say, the US operations were liquidated and the European factories were sold for a fraction of the going concern value.

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The 25% Rule is legally inadequate — CAFC

Yesterday, the Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential ruling to the effect that, among other issues in the Uniloc v. Microsoft case, as a matter of Federal Circuit law the 25 percent rule of thumb is a fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation. Evidence relying on the 25 percent rule of thumb is thus inadmissible under Daubert and the Federal Rules of Evidence, because it fails to tie a reasonable royalty base to the facts of the case at issue.

The appeals court was very explicit in stating that Uniloc’s damages expert Joseph Gemini’s starting point of a 25 percent royalty had no relation to the facts of the case, and as such, was arbitrary, unreliable, and irrelevant. The use of such a rule fails to pass muster under Daubert and taints the jury’s damages calculation.

Consequently, as the jury’s damages award was fundamentally tainted by the use of a legally inadequate methodology, the CAFC affirmed the grant of a new trial on damages.

A rule is found

In the late 1950s, Robert Goldscheider performed an empirical study of 18 commercial licenses involving the Swiss subsidiary of a large American company (see e.g.- R. Goldschider, “Litigation Backgrounder for Licensing,”Les Nouvelles, 29 (March 1994), p 20-25). Those licenses referred to the transfer of intellectual property rights to a portfolio of patents, the flow of know-how, trademarks, and copyrights to marketing materials (Goldscheider, Jaroz, and Mulhern, “Use of the 25% Rule in Valuing Intellectual Property”, Chapter 22 in G. Smith & R. Parr, Intellectual Property, Wiley & Sons, 2005). The licensees paid royalties of 5% of sales and typically generated operating profits of 20% of sales. Thus the 5/20 or 25% rule was “discovered.”

The Uniloc damages story

Uniloc’s patent (US5,490,216) covers a system for software registration which Microsoft is allegedly infringing by the way software activation works in Microsoft’s Product Activation feature that acts as a gatekeeper to Microsoft’s Word XP, Word 2003, and Windows XP software programs.

Uniloc’s damages expert arbitrarily picked out an unexplained value attribution of $10, at a minimum, for a Product Key in the context of Microsoft’s business. While it is clear that software piracy prevention measures are valuable, this initial approach completely ignored any specific analysis of the contribution of the software registration algorithm. Dr. Gemini then applied the 25% rule to this $10 amount and posited that $2.50 per activation was the proper royalty due to the patent holder. Multiplying this amount times the number of the accused Microsoft Office and Windows activations, 225,978,721 in all, generates the purported “reasonable royalty” of $564,946,803. The jury found Microsoft willfully infringed the ‘216 patent and awarded $388,000,000 in damages. (The expert then performed a “reality check” of this number by misapplying the Total Market Rule. This is an additional topic we shall touch on in a later post).

Why it is wrong

Over the years, the 25% Rule has been used without much attention being paid to its significance and applicability. From the outset, the “rule” reflected a post-fact measure of the contribution of a complete bundle of intellectual property rights which included all four major categories of IP (trade secrets, patents, copyrights, and trademarks) in a specific industry and economic environment. Based on our collective experience in valuation, licensing, and damages calculations, the specific facts and context of a transaction, license, or case are the arbiters of the value of intellectual property. To adequately reflect the fair market value of a patent, as in this situation, attention must center of what specific contributions are made from an economic perspective, e.g. does it reduce the cost of production, enable new applications, attract market demand? In fact, the determination of a reasonable royalty as the base measure of patent infringement damages has a well-established process that lists the multitude of factors to be considered (the Georgia-Pacific Factors). It is also well established that the 25% Rule of Thumb is not an appropriate guide line for the determination of a reasonable royalty rate under a Georgia-Pacific analysis. A proper patent infringement damages expert analysis must carefully tie the damages amount to the invention’s market significance and this cannot be accomplished with a rule of thumb.

Next

A new trial on the question of damages has been ordered by the CAFC and we shall expect a reconsideration of the economic analysis behind the reasonable royalty attributable to the ‘216 patent. But, more than that, this opinion raises the bar for all future intellectual property damages analyses that must determine a reasonable royalty; no longer can superficial applications of pre-determined percentages be passed-off as “expert testimony.”

(Simultaneously published on the IPmetrics Blog)

PETA accused of copyright infringement

The IPmetrics blog reports Victor Schonfeld has threatened to sue animal rights group PETA over the copyright infringement his copyrights in the film ‘The Animals Film’.

The film maker’s UK legal team has reportedly sent a letter to PETA informing them of his intention to sue them for the equivalent of US$760,000.  The dispute arises from the claim that the animal rights group used footage from ‘The Animals Film’ in various internet videos without Schonfeld’s permission or a licence.  Of interest is that the damages claimed are derived from a reasonable royalty calculation representing the hypothetical royalty fee the parties would have agreed upon on the eve of the infringement (see an explanation in terms of US copyright law), had they sought a legal way of using the film.

Read the full article at: Solicitors UK Blog.

Software Copyright Litigation Issues

Software commercialization began to accrue significance in the early 1960s and it presented a challenge to the U.S. Copyright office when the first registrations were submitted in 1964. Since that time, until the 1976 Copyright Act, the required registrations of software were accepted under the general assimilation of software as a “how to” book. The Act made it clear that Congress intended software to be copyrightable. Yet the very nature of software requires that copies be made in the ordinary course of using the software. First, the software is generally installed on the users’ computer system by copying it from a distribution medium (such as a computer disk, compact disk, or downloaded from the internet) on to a storage system (typically a hard drive). Secondly, another copy of the software is made to the computer’s memory in order to execute the software or, when viewing a page on a web site, a copy is transmitted (downloaded) to the computer’s memory and/or storage system.

Thus, in principle, the rightful possessor of software would generally be expected to be able to make copies, and Congress considered the need to set some limits to the exclusive right of copyright owners. Specifically, section 117 was added allowing, among other rights, the making of archival copies by the owner of a copy of a computer program. However, industry practice since the sixties had been to protect software through contractual means, i.e. by licensing instead of selling software. Thus, software copyright owners generally aim to limit copying by licensees, claiming they have not acquired the rights of an owner. One concern fueling this tendency is the principle of “first sale,” which generally limits the copyright owner’s rights to that first sale, but allows the buyer to resell the work without consideration being due to the author. Finally, the law does not distinguish between data and instructions when describing software only as instructions, where the former may well represent other types of information, including images.

Generally, when we think of copyright infringement, we think of somebody duplicating a work, either all of it or at least enough of it as to appropriate much of its value. Sometimes we even remember that a copyright can be infringed by publicly performing or displaying a work without permission, or by translating the work into another language or another form. But with software it is possible to infringe a copyright without copying all, or even a major part, of a work.

 

(1) Whelan v. Jaslow

The first appeals court to confront what copyright protects for a computer program beyond direct copying was the Third Circuit, in the case of Whelan Associates v. Jaslow Dental Laboratory. But the Third Circuit recognized that the dichotomy between idea and expression, codified in Section 102(b) of the Copyright Act of 1976, limits what might otherwise be found infringing. Jaslow argued that “the structure of a computer program is, by definition, the idea and not the expression of the idea, and therefore that the structure cannot be protected by the program copyright.” The mere idea or concept of a computerized program for operating a dental laboratory would not in and of itself be subject to copyright. Copyright law protects the manner in which the author expresses an idea or concept, but not the idea itself. Copyrights do not protect ideas – only expressions of ideas. There are many ways that the same data may be organized, assembled, held, retrieved and utilized by a computer. Different computer systems may functionally serve similar purposes without being copies of each other. There is evidence in the record that there are other software programs for the business management of dental laboratories in competition with plaintiff’s program. There is no contention that any of them infringe although they may incorporate many of the same ideas and functions. The ‘expression of the idea’ in a software computer program is the manner in which the program operates, controls and regulates the computer in receiving, assembling, calculating, retaining, correlating, and producing information either on a screen, print-out or by audio communication. The conclusion is thus inescapable that the detailed structure of the Dentalab program is part of the expression, not the idea, of that program.

(2) Kluge v Gentra

As we have seen in other cases, and other types of intellectual property, an important component or dimension of economic damages that can be recovered by plaintiffs are lost profits measured by a “reasonable royalty.” The determination of such royalty rate is not straight forward in most cases, and an expert’s experience is crucial to the determination of a suitable rate that does not fall into the trap of speculation.
An illustration of such a situation is the litigation involving Kluge Design, Inc. (“Kluge”), in relation to their intellectual property dispute with Gentra Systems, Inc. (“Gentra”) in 2003. In that case, the software involved was a specific type of embedded software, i.e., software incorporated into the circuitry of specific devices. The biggest challenge for the assessment of damages in this approach is to analyze a hypothetical situation without leading into speculation.
The analysis of a reasonable royalty typically begins by considering the range of royalty rates derived from a series of comparable arm’s length transactions in the marketplace. Naturally, however, few licensing agreements in intellectual property in general, and software in particular are perfectly comparable. Thus the appropriate comparable range can only be derived after an expert consideration of contextual factors such as the growth prospects of the device within which the software is used, in terms of the market dynamic and the competitive advantages the software may represent, exclusivity, scope of territory or application, among others. These additional factors allow the full range of royalty rate to be narrowed down to a more likely range where a hypothetical negotiation between willing buyer and seller would have taken place. In this case, the full spectrum of rates was found to range from a low of 2.5% of sales, to a high of 15.0% of sales. The more appropriate range for the case, however, was determined by the plaintiff’s experts to be 5.0% to 8.0%.

Furthermore, even a hypothetical negotiation has additional limits. The licensor cannot be assumed to be “willing” to enter into a transaction unless profitability meets the level of their full costs plus the prevailing market-driven profit. The licensee, on the other hand, must also find the license cost still allows for a reasonable profit. Within those limits, the negotiation ensues in the context outlined in the analysis of the royalty rates. Both aspects of the analysis are important to give a sound basis to the royalty rate conclusion, thus minimizing the risk of having the damages award dismissed on grounds of being speculative.


Thus book authors would not be entitled to the additional market value of first editions re-sold at higher prices some time after publication. This is not expected to translate directly to software.

Trademark Damages After Mattel v MGA

The recent opinion from the Ninth Circuit Court of Appeals in the long-running Mattel v MGA Entertainment [Bratz(R)] case reiterates an important, and often overlooked, aspect of trademark damages calculations: the apportionment of damages attributable to the specific item of Intellectual Property at issue.  This aspect of trademark infringement damages is susceptible of being overlooked by plaintiffs’ experts focused of strictly proving lost revenue, and is of prime importance to defendants’ experts proving suitable deductions from revenue to derive lost profits.

This important topic is one of the three main points made in the Appeal Court’s opinion, which is discussed further in the IPmetrics website .  Other lessons for business are highlighted on the IPmetrics Blog.

Patent value of business methods and software at the SCOTUS

The patentability and, therefore, the value of business methods and software are in the balance as oral arguments in the Bilski v. Kappos case are heard at the Supreme Court.

The future of software and business method patents still hangs in the balance, after oral arguments were heard by a Supreme Court with significant unknown factors as far as Intellectual Property law is concerned.

Few IP cases have had the breadth of potential consequences for industries like finance and software as the Bilski case. The economic value of myriad companies can be significantly affected if the Supreme Court refines the interpretation of what is patentable.

In essence, the Bilski patent claims to cover a method of hedging risks in commodities trading. The PTO’s Board of Patent Appeals (BPAI) found that Bilski’s such claimed “invention” of a business method does not satisfy the patentable subject matter requirements of patent law (35 U.S.C. § 101).

In Re Bilski (Fed. Cir. 2008)(en banc) the Federal Circuit affirmed this coclusion and, in doing so, the nine-member majority opinion spelled out what is known as the “machine-or-transformation” test as the sole test of subject matter eligibility for a claimed process. The “test” at issue here is: “A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.”
Mr. Bilski appealed to the Supreme Court earlier this year, and a total of 68 amicus briefs were filed, a third of them in support of neither party, thus reflecting the importance of the ruling per se, more than the fate of the specific patent.
Positions on the matter are quite definite, for example, The Electronic Frontier Foundation considers business method patents are harmful and asks in its brief that such patents should not be allowed to stand. Rather, to be patentable, an invention must be a technological advance. Justice Sotomayor seemed to express this concern during the hearing when she asked a question regarding the difficulty in where to draw the line if there is no tie to science/technology, remarking that, otherwise, why not patent the method of speed dating?

The Software and Information Industry Association, on the other hand, argues that the patent eligibility of software is well established and should not be disturbed. The consequences for the software industry are clearly dramatic, but it borders on stretching the original concept of the “useful arts,” those activities suitable for patentability, beyond the comfort zone for both Justices Scalia and Ginsburg, for example. The latter, in particular, explicitly asked Mr. Jakes, representing Bilski’s side, why the U.S. should not limit patentability to science and technology, as in Europe.
In a well known position, the American Bar Association’s position is to support the elimination of patents covering tax planning methods in particular, and generally, that Patent law should not interfere with the exercise of human intellect by granting a monopoly on processes in which thinking is central.

Numerous corporations from banking to the internet also seek to have the Supreme Court rule against the patentability of accounting methods, tax mitigation techniques, financial instruments (like Bilski’s), among other methods.

We await with great interest, on behalf of our clients, the Supreme Court’s decision on this important issue.

Top Three Lessons From The Woody Allen Lawsuit

Woody Allen wins the largest amount ever paid under the New York Right to Privacy Act from American Apparel. What lessons can be drawn from the $5 million settlement?

First Lesson: In a saturated advertising market, the need to stand out is extremely powerful. With the level of attention celebrities get in consumers’ minds, some advertisers succumb to the unauthorized use of celebrities, increasing the commercial gain. In this case, for the past two years, American Apparel brought significant attention to its brand, beyond the bounds of its target customer base, at a time when it became publicly traded and expanded publicity was welcome by investors. Even if an unauthorized campaign is “quickly” withdrawn, it will have reached the bulk of its potential audience. Legitimate brands pay top dollar for immediate recognition and attention-grabbing graphics.
Second Lesson: The fair market value of celebrity endorsements and advertising may be negotiable, but it is not getting any cheaper to use iconic celebrities. Few celebrities come to mind with greater iconic association as New York and Woody Allen. Despite its claims to the effect that Woody Allen’s negative publicity in the wake of his 1992 break-up would have reduced his commercial value, American Apparel ended up settling for a landmark amount rather than risk losing even more in a trial.
Third Lesson: Celebrity – Brand pairings work both ways. Associating any brand to a famous celebrity is not only commercial speech, but it also transfers the brand’s attributes and reputation to the celebrity. “A brand is much more than its products” is the mantra of marketing executives worldwide; it also includes attitudes and public reputation. The risk of tarnishing a celebrity’s image with unwanted associations will undoubtedly increase the fee, if not kill the deal.
The lawsuit was brought about because of the California-based clothing company’s unauthorized use of Woody Allen’s image and likeness for advertising purposes on billboards and the Internet. I had the opportunity of being asked to review the facts of the case and prepare a report quantifying the amount of damages due Woody Allen.
After performing an extensive value analysis of the celebrity advertising market, I was able to determine a fair market value range for the misappropriated advertising services. In most cases involving rights of publicity, a key challenge is defining the suitable market and obtaining relevant market data.
With the settlement, American Apparel avoided the risk of being found liable for punitive and other damages, in addition to the fair market value of the misappropriation. Given the characteristics of the market, I would expect Woody Allen’s fair valued fee to be no less than the third quartile of the market distribution, approximately $5 million, and may certainly be more considering the negative connotations of the unauthorized use.