Innovation by universities is moving strong and bright under the limelight. This is now empowering universities to exercise their rights to protect their inventions from infringers, and what better way to do so than assert their patent rights. Even since the Bayh-Dole Act came into existence in 1980, universities in the US are on a freedom march, ensuring infringers of their patented inventions are brought to book and compensate varsities monetarily.
WARF vs. Apple
Apple’s ongoing tribunal against Wisconsin Alumni Research Foundation, a university patent licensing organization, adds ample credence to the preceding statement. Earlier this month a Wisconsin jury issued a verdict that Apple infringed WARF’s US Patent No. 5,781,752. The trial entered a separate damages phase. WARF contended that the patent improves the A7, A8, and A8X chips Apple uses in newer iPhones and iPads. While in earlier orders, US District Judge William Conley had written that the maximum damages claim was $862.4 million, recent trial has determined Apple to be an infringer, though not wilful, and has ordered Apple to pay the damages amounting to $234.3 million to WARF.
The WARF vs. Apple verdict is likely to encourage more universities to turn to using their patents in court to seek revenue.
Carnegie Mellon earns $1.54 billion from Marvell Technologies
In another interesting university versus corporate patent trial, Carnegie Mellon University filed a case against Marvell Technology in 2009 for infringing two hard disk drive patents. With Carnegie Mellon University winning the verdict in its favor, Marvell Technology was first asked to cough up initial damages of $1.17 billion. However, another jury decided that Marvell must also pay at least $278.4 million, representing a 50-cent-a-chip royalty on $556.8 million chips imported into the United States for use in the drives. This increased the damages award to $1.54 billion on account of willful infringement by the chipmaker. The Federal Circuit vacated the largest damages judgment in history for patent infringement—$1.54 billion. It concluded that the accused chips not made in, or imported into, the United States may nevertheless be included in the damages analysis if the United States is the location of sale.
University of Minnesota vs. wireless communication service providers
The University of Minnesota has once settled lawsuit against Glaxo Wellcome, Inc. and got paid royalties amounting to 450 million on the worldwide sales of Ziagen (an antiviral drug for AIDS). The University of Minnesota again came into focus when it filed infringement lawsuits against the leading wireless communication service providers, namely, Verizon, AT&T, Sprint and T-Mobile in 2014. The lawsuits accuse the carriers of violating US Patent Numbers 7,251,768, 8,588,317, 8,718,185, 8,774,309 and RE45,230. The university has asserted that the defendants are using the patented technology which improves the speed and reliability of 4G LTE service. This case is still awaiting the judgement.
Patent litigation trends – universities vs. corporates
While the Bayh-Dole Act set the stage for universities to fight for patent and IP rights seeking appropriate monetary compensation from infringers. The below graph shows that while there has been a steady rise in patent litigations between universities and corporates, the year 2014 witnessed a drop. This could be accounted for changes in the patent litigation landscape in recent years owing to the Supreme Court’s verdict in the Alice v. CLS Bank case in June of 2014.
Patent litigation filed by universities follow a trend similar to the overall filing post 2011. The number of litigations filed after 2011 has increased tremendously, compared to the period preceding 2011.
Trustees of Boston has been playing an active role since 2009 filing the maximum of 43 cases against infringing companies. Of these, 39 cases were filed against technology giants such as Apple, HTC, Lenovo, Acer, Dell, Amazon and Microsoft. National Cheng Kung University is another active plaintiff having filed around 12 cases in the recent past against high profile companies such as Apple, Cisco, Qualcomm, Nokia, etc.
Apple and Samsung top favourites
Apple and Samsung seem to be the sweet spot for universities that are looking at patent monetization through infringement litigation. While Apple has been fighting the battle against Wisconsin Alumni Research Foundation, National Cheng Kung University, Rensselaer Polytechnic Institute et al, and Trustees of Boston University, Samsung is dealing with Washington Research Foundation, Queens University at Kingston et al, The Penn State Research Foundation, Trustees of Boston University.
Given the rising number of patent litigations filed till now, it seems universities are more inclined towards monetizing their innovations through licensing agreements or by filing lawsuits to protect their inventions aggressively. While the monetary benefits are often redirected towards research and innovation, universities are increasingly developing and building a brand value that adds credence to their efforts of innovation and excellence.
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