Japan’s sovereign patent fund may have notched up two big victories this month

IP Bridge’s patent portfolio broken down by previous assignees. Source: ‘Mobilizing National Innovation Assets: Understanding the Role of Sovereign Patent Funds’, DEEP Centre, Canada, May 2016

IP Bridge (IPB) — the company that operates Japan’s first and, so far, only sovereign patent fund (SPF) — announced last week that it had entered into a patent licensing agreement with an unnamed “multinational company”.

While most terms of the deal were undisclosed (as per usual), here is a snippet of what IPB does tell us in its press release confirming the agreement:

IP Bridge granted such company a license under IP Bridge’s portfolio of wireless telecommunications standard-essential patents (including the GSM, W-CMDA and LTE wireless telecommunications standards). The agreement grants the licensee a worldwide license to practice the claimed inventions in connection with its products and services (including smartphones).

So who might the new licensee be?

The SPF claims to have been generating licence and sales revenues from its patents, outside of a dispute context, for a number of years (it launched in 2013 with a mix of public and private money in backing). But it is only more recently that it has engaged in litigation in an effort to secure paying licensees.

  • In July 2015, IPB initiated its first US assertion campaign, suing Chinese electronics manufacturer TCL in a Delaware district court for infringing three of its patents which have been declared essential to the W-CDMA and LTE wireless telecoms standards. IPB acquired each of these patents from Panasonic in January 2014. TCL later dragged Panasonic into the case as a counterclaim defendant.
  • In February 2016, IPB filed suit against US-Singaporean chipmaker Broadcom in the Eastern District of Texas. It alleged infringement of six patents relevant to semiconductor technologies, five of which were originally owned by Panasonic, and the sixth by NEC.
  • In April 2016, the SPF sued OmniVision, a US developer of semiconductors for digital imaging products, in the District of Delaware. It accused the US company of infringing 10 patents; once again, all bar one of these were transferred from Panasonic, with the other one coming from NEC.
  • In January 2017, IPB sued US fabless chipmaker Xilinx in East Texas, claiming infringement of two patents. The following month, Xilinx responded by filing a complaint for declaratory judgment of non-infringement in the Northern District of California. In its suit, Xilinx made some extraordinary allegations, accusing the Japanese SPF of personally threatening its in-house counsel and of claiming that it would commence a litigation “war” against the company in Beijing, Tokyo, and Guam (yes, Guam).

The Nikkei reported (here, in Japanese) that IPB and Broadcom settled their patent disputes in China and the United States earlier this month after reaching an agreement on a licence fee.

Of the three other candidates listed above, TCL would seem the most likely to fit the bill according to Satoshi Watanabe, patent attorney and author at the Japan IP News blog. Watanabe-san figures that the Chinese company could be the unnamed party to IPB’s most recent patent licensing agreement as it is the only one that is known to have been sued in US court for infringing IPB’s W-MCDA and LTE standards-essential patents — which were specifically mentioned as the subject of the licence in IPB’s press release.

It is not possible to say that the settlements with Broadcom and the unnamed party are definitive victories for IPB without having more details of what was agreed upon. It may be the case that IPB ended up with far less in terms of licence fees and royalty rates than it had set out to get at the beginning of its campaigns, for example.

Nevertheless, the signing of two licensees in fairly quick succession does hint at something positive for the SPF. While it is facing down numerous validity challenges to its patents at the USPTO, securing these two licences will give IPB a boost as it presses ahead with continuing monetisation efforts — including its somewhat less contentious, Southeast Asia-focused startup IP programme.

Much of the information in this post on IPB’s previous activities is derived from my earlier article, ‘New priorities and strategies for sovereign patent funds’, which was published in issue 80 of IAM in October 2016.

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