Tag: patents

Posted on

Cloudflare rallies the troops to fight off another so-called patent troll

Nearly four years ago, we wrote about a battle between Cloudflare, the San Francisco-based internet security and performance company, and Blackbird Technologies, a firm that quickly amassed dozens of patents, then began using them to file dozens of patent infringement lawsuits against companies, including Cloudflare.

The suit was typical in every way, except how Cloudflare responded to it. Unlike many targets of similar lawsuits that opt to settle, Cloudflare fought back, asking very publicly for help in locating prior art that would not only invalidate the broad patent that Blackbird was using to sue Cloudflare, but to invalidate all of Blackbird’s patents. The public answered the call, and two years and 275 unique submissions later, the case against Cloudflare was dismissed and Blackbird’s operations were diminished.

The hunted becomes the hunter: How Cloudflare’s fight with a ‘patent troll’ could alter the game

One might surmise that given the stink that Cloudflare raised, other patent trolls might choose an easier target. Yet last month, Cloudflare was sued yet again, this time by Sable Networks, a “company that doesn’t appear to have operated a real business in nearly ten years — relying on patents that don’t come close to the nature of our business or the services we provide,” as says Doug Kramer, general counsel of CloudFlare.

Unsurprisingly, Cloudflare isn’t going to take this newest action lying down. This morning, after revealing the lawsuit publicly, it invited the engineering community to again “turn the tables” on patent trolls by inviting them to participate in a crowdsourced effort to find evidence of prior art to invalidate the “ancient, 20-year-old patents” that Cloudlflare says that Sable is is “trying to stretch . . . lightyears beyond what they were meant to cover.”

Cloudflare is also offering a $100,000 bounty to be split among entrants who provide the most useful prior-art references that can be used in challenging the validity of all of Sable’s patents, not just those being asserted against Cloudflare.

The idea is to deal a big enough blow to Sable that not only is its case against Cloudflare hobbled but also future cases against other entities.

“We feel fortunate that we didn’t run into one of these cases earlier in our history, where it might have really taken us off our path,” Kramer tells TechCrunch. “Blackbird came along when we had a bit more stability, and we have even more stability now.”

Given that position of relative strength, he says, “We want to go about this in a way that will force [Sable] to define their claims and stand on their claims, and we want to do it in a way that leaves something behind for other folks, particularly smaller companies that may come behind us, so we want to put [Sable’s] entire patent portfolio under scrutiny.”

Certainly, Cloudflare is not the only company to attract Sable’s attention. Indeed, a quick search shows that Sable has also sued the cybersecurity business Fortinet, the data platform Splunk, and networking giants Juniper Networks and Cisco Systems, among roughly a dozen other companies.

Eight of those cases — including with Juniper and Cisco — have already settled. The reality is that most companies see infringement cases by non-practicing entities like Sable as a nuisance to be quickly resolved because they are a distraction and because the expense of fighting is often equal to or even more than the cost of settling.

The companies also lose oftentimes. Though in 2017, the Supreme Court ruled unanimously that patent holders suing corporations can’t seek out a friendly court — their venue of choice was long the Eastern District of Texas, where 2,500 cases were brought in  2015 alone, 95% of them initiated by non-practicing entities like Sable — business remains brisk in Texas, where legal teams bring in a lot of money and often successfully cast major corporations to local jurors as villainous.

A report in the Houston Chronicle last year noted that businesses and individuals filed 747 patent complaints in Texas during the first six months of 2020 — double the number from a year earlier and twice as many as any other state. To underscore the point, it noted that while patent infringement lawsuits jumped 16 percent nationwide in the first six months of last year, the number of new disputes in Texas soared 96%.

Some of those cases landed in the Eastern District of Texas (and mostly in Marshall, Texas, which boasts a population of 23,000). Some landed in the Southern District, which covers Houston and, according to that same Houston Chronicle report, experienced a 43% jump in new patent violation cases last year.

But Waco, the Western District of Texas, has become the new center for patent infringement cases. That’s largely because the district encompasses Austin, where many tech companies have offices, and notably, a key piece of that 2017 Supreme Court ruling limited filings to venues where the defendants have actual operations.

Cloudflare beat a patent troll. What now?

So-called patent trolls have also found a friend, seemingly, in U.S. District Judge Alan Albright, a former trial attorney who was nominated to become a federal judge in Waco in 2018 by former President Donald Trump. In the two years following his confirmation by the Senate, Albright has come to preside over the most popular court in the country to litigate intellectual property disputes, with a very high percentage of plaintiffs winning their cases.

It’s no wonder that outfits like Sable continue on their path. Scoring early settlement agreements can add up to big business. (Their continued success is also why litigation finance funds continue to spring into existence.)

Cloudflare is a much bigger quarry now, too. While Blackbird sued while it was still a privately held entity, Cloudflare went public in 2019 and currently boasts a market cap of $26 billion.

Kramer is acutely aware of the upward battle ahead. It’s why despite its resources, Cloudflare is reaching out to the public again. “I don’t mean to sound self-serving, but we have a very intense group of engineers and people in this space who read [our] blog regularly,” Kramer says of the detailed post he published this morning relating to the case. “I also think this really strikes a nerve with some people because they are so bothered by” the practice of patent infringement suits.

Kramer says it’s impossible to overstate the impact of these far-flung engineers in Cloudflare’s fight against Blackbird. “It wasn’t just people who thought, ‘Oh, it’s a chance to make some money and I’m gonna go do this.’ There wasn’t a lot of junk in [what they submitted]. Instead, we had people saying, ‘Hey, listen, I worked on this back in the ’90s when I was over at this company, and it’s crazy that they’re trying to say they invented this,’ and they would send us articles that they had written.

“We had people doing research at libraries and stuff like that,” continues Kramer, “but we also had people who had worked in the industry and said, ‘I worked on this three years before they ever got that patent; there’s no way they should be able to create this [trouble] based something that I did.'”

Cloudflare is hoping again that a lot of its followers will get energized, and “also the exact right people, who are motivated by this and and who are very, very knowledgeable in this space,” says Kramer. “We’re hoping to get the gang back together.”

It might need them more than ever.

Posted on

From dorm rooms to board rooms: How universities are promoting entrepreneurship

Earlier this year, 15 top U.S. universities joined forces to launch a one-stop shop where corporations and startups can discover and license patents.

Working in concert, Brown, Caltech, Columbia, Cornell, Harvard, the University of Illinois, Michigan, Northwestern, Penn, Princeton, SUNY Binghamton, UC Berkeley, UCLA, the University of Southern California and Yale formed The University Technology Licensing Program LLC (UTLP)  to create a centralized pool of licensable IP.

The UTLP arrives as more higher education institutions are beefing up their investment in the entrepreneurial pipeline to help more students launch startups after graduation. In some instances, schools serve as accelerators, providing students with resources and helping them connect with VCs to find seed funding.

To get a better look at the new program and more insight into the university-to-startup pipeline, we spoke to:

The UTLP initiative seems to be more focused on licensing IP to existing companies, rather than accelerating university startups.

Orin Herskowitz: The UTLP effort is really much more about licensing to the somewhat broken interface between universities and very large companies in the tech space when it comes to licensing intellectual property. But I know USC and Columbia and many of our peers, especially over the last three to seven years, have pivoted in a massive way to helping our faculty students fulfill their entrepreneurial dreams and launch startups around this exciting university technology.

The word “broken” jumped out at me. Historically, what has the problem been?

Orin Herskowitz: Universities have traditionally been a source of amazing, life-saving and life-improving inventions, for decades. There’s been a ton of new drugs and medical devices, cybersecurity improvements, and search engines, like Google, that have come out of universities over the years, that were federally funded and developed in the labs, and then licensed to either a startup or the industry. And that’s been great. At least over the last couple of decades, that interface has worked really, really well in some fields, but less well in others. So, in the life sciences, in energy, in advanced materials, in those industries, a lot of the time, these innovations that end up having a huge impact on society are based really on one or two or three core eureka moments. There’s like one or two patents that underlie an enormous new cancer drug, for instance.

In the tech space though, it’s a very different dynamic because, a lot of the time, these inventions are incredibly important and they do launch a whole new generation of products and services, but the problem is that a new device, like an iPhone, or a piece of software, might rely on dozens or even hundreds of innovations from across many different universities, as opposed to just one or two.

Obviously not every breakthrough necessitates the launch of a startup. I assume that the vast majority of these things that are coming would make the most sense to work with existing companies.

Jennifer Dyer: We’ve all had this renewed focus on innovation within the university and really helping our students and faculty that want to start companies, launch those companies. If you look at the space, helping educate our students that launching a company in a high-tech space may mean that they have to go out and acquire 100 different licenses, so maybe it doesn’t make sense. We’re going to be doing nonexclusive licensing, and it doesn’t preclude anyone from moving forward with this technology. This is probably the first pool for nonstandard essential patents in the high-tech space, which makes it somewhat unique. Because if you look back, most of the pools have been around standard essential patents.

The question of exclusivity is an interesting one. You wouldn’t grant exclusive rights for the right fee?

Posted on

Are subscription services the future of fintech?

Joshira Maduro Contributor
Joshira Maduro joined the LendingTree team in April 2020 and uses her background in market research and branding to write about credit card news and better ways to spend.

Subscription services are on the rise. During the pandemic, Americans have been spending more time at home and more money on the digital products that make navigating our new normal easier.

More than ever, Americans’ lives are aided by companies like Netflix, Instacart and, of course, Amazon, which reported record-setting earnings from its 2020 Prime Day savings event.

A recent survey even found that spending on subscription services had more than tripled since March, with one in three respondents saying they’d purchased a new online subscription while quarantining.

Now, a new concern lingers: Is the market getting oversaturated? The question doesn’t just apply to streaming services and food delivery companies — it’s an issue financial technology businesses can’t afford to ignore.

As subscriptions become an increasingly alluring business model, fintechs will be forced to consider whether this proven strategy is worth the risk.

Fintechs should take note of subscription services

In the CompareCards survey, two-thirds of respondents said they purchased a new streaming service mainly for entertainment. Still, that doesn’t mean there isn’t room for fintechs to carve out their own space.

Bradley Leimer, co-founder of the financial consulting firm Unconventional Ventures, said he’s certainly seen more fintechs exploring subscription models. As Leimer explained, the financial services industry may have not fully embraced the idea, but it’s “starting to take notice.” Leimer, who has more than 25 years of experience in the industry, believes fintechs can learn a lot from subscription services — provided they’re willing to look in the right place.

One major lesson? Transparency. Subscription services give companies an opportunity to be upfront about their fees, as well as their benefits.

“When we talk about subscriptions, the more clear and more transparent we are, the better,” Leimer said.

Acorns is an easy case study. The microinvesting app offers three subscription levels — lite, personal and family — each with a clearly explained list of features. For what it’s worth, the company added more than 2 million users between March 2019 and March 2020, according to Forbes.

Leimer said fintechs should also take note of the way subscription services collaborate. For example, he pointed out how Amazon users can add an HBO subscription to their Prime Video account, essentially “bundling” two subscriptions into one. Fintechs, Leimer said, could stand to take a page out of that playbook.

“There are a lot of ways to sort of skin that cat — for a fintech company to generate income and for a customer to get value on top of that,” Leimer said.

Posted on

Huawei files patent infringement lawsuits against Verizon Communications

Huawei has filed two patent infringement lawsuits against Verizon Communications in U.S. District Court.

The Chinese telecommunications equipment giant wants Verizon to compensate it for the use of technology it says are covered by 12 Huawei patents, including ones related to networking, security and video communications. Before the lawsuits were filed, Huawei claims it negotiated with Verizon in a series of meetings from February 2019 to January 21, but was unable to reach a license agreement.

(Disclosure: TechCrunch is owned by Verizon Media, a division of Verizon Communications).

Huawei technology is used by telecommunication companies around the world. In a press release about the lawsuits, it says it puts about 10% to 15% of its revenue into research and development each year, and has spent about $70 billion on R&D over the last decade, including about $15 billion in 2018 alone.

This resulted in Huawei receiving more than 80,000 patents around the world, including 10,000 in the U.S.

In its filings, Huawei claims Verizon has “profited greatly” from infringing on its patents, noting that Verizon Communication’s total revenue for its wireline division in 2018 was $29.8 billion.

Huawei maintains a close relationship with many other tech companies, including some competitors, through licenses. It says that it has received more than $1.4 billion in patent license fees since 2015 and in addition to providing access to its own technology, has also paid over $6 billion for licensing patents from other companies, with more than 100 license agreements signed with vendors in the U.S., Europe, Japan and South Korea.

In its press release, Huawei’s chief legal officer Song Liuping said “Verizon’s products and services have benefitted from patented technology that Huawei developed over many years of research and development.”

“For years now we have successfully negotiated patent license agreements with many companies. Unfortunately, when no agreement can be reached, we have no choice but to see a legal remedy,” Song added. “This is a common practice in the industry. Huawei is simply asking that Verizon respect Huawei’s investment in research and development by either paying for the use of our patents, or refraining from using them in its products and services.”

TechCrunch has contacted Verizon Communications for comment.

The patent infringement lawsuit is taking place against the backdrop of Huawei’s legal entanglements with the U.S. government, which claims it is a national security threat, a charge Huawei denies.

The Pentagon pushes back on Huawei ban in bid for ‘balance’

Huawei has been on a U.S. trade blacklist since the last May and is suing the government over what it says is an unconstitutional ban on the use of its products by federal agencies and contractors. Huawei’s technology is used by many telecom companies around the world, however, and its close ties with U.S. supply chains were underscored last month when the Defense and Treasury Departments reportedly put pressure on the Commerce Department over the ban.

Posted on

US patents hit record 333,530 granted in 2019; IBM, Samsung (not the FAANGs) lead the pack

We may have moved on from a nearly-daily cycle of news involving tech giants sparring in courts over intellectual property infringement, but patents continue to be a major cornerstone of how companies and people measure their progress and create moats around the work that they have done in hopes of building that into profitable enterprises in the future. IFI Claims, a company that tracks patent activity in the US, released its annual tally of IP work today underscoring that theme: it noted that 2019 saw a new high-watermark of 333,530 patents granted by the US Patent and Trademark Office.

The figures are notable for a few reasons. One is that this is the most patents ever granted in a single year; and the second that this represents a 15% jump on a year before. The high overall number speaks to the enduring interest in safeguarding IP, while the 15% jump has to do with the fact that patent numbers actually dipped last year (down 3.5%) while the number that were filed and still in application form (not granted) was bigger than ever. If we can draw something from that, it might be that filers and the USPTO were both taking a little more time to file and process, not a reduction in the use of patents altogether.

But patents do not tell the whole story in another very important regard.

Namely, the world’s most valuable, and most high profile tech companies are not always the ones that rank the highest in patents filed.

Consider the so-called FAANG group, Facebook, Apple, Amazon, Netflix and Google: Facebook is at number-36 (one of the fastest movers but still not top 10) with 989 patents; Apple is at number-seven with 2,490 patents; Amazon is at number-nine with 2,427 patents; Netflix doesn’t make the top 50 at all; and the Android, search and advertising behemoth Google is merely at slot 15 with 2,102 patents (and no special mention for growth).

Indeed, the fact that one of the oldest tech companies, IBM, is also the biggest patent filer almost seems ironic in that regard.

As with previous years — the last 27, to be exact — IBM has continued to hold on to the top spot for patents granted, with 9,262 in total for the year. Samsung Electronics, at 6,469, is a distant second.

These numbers, again, don’t tell the whole story: IFI Claims notes that Samsung ranks number-one when you consider all active patent “families”, which might get filed across a number of divisions (for example a Samsung Electronics subsidiary filing separately) and count the overall number of patents to date (versus those filed this year). In this regard, Samsung stands at 76,638, with IBM the distant number-two at 37,304 patent families.

Part of this can be explained when you consider their businesses: Samsung makes a huge range of consumer and enterprise products. IBM, on the other hand, essentially moved out of the consumer electronics market years ago and these days mostly focuses on enterprise and B2B and far less hardware. That means a much smaller priority placed on that kind of R&D, and subsequent range of families.

Two other areas that are worth tracking are biggest movers and technology trends.

In the first of these, it’s very interesting to see a car company rising to the top. Kia jumped 58 places and is now at number-41 (921 patents) — notable when you think about how cars are the next “hardware” and that we are entering a pretty exciting phase of connected vehicles, self-driving and alternative energy to propel them.

Others rounding out fastest-growing were Hewlett Packard Enterprise, up 28 places to number-48 (794 patents); Facebook, up 22 places to number-36 (989 patents); Micron Technology, up nine places to number-25 (1,268), Huawei, up six places to number-10 (2,418), BOE Technology, up four places to number-13 (2,177), and Microsoft, up three places to number-4 (3,081 patents).

In terms of technology trends, IFI looks over a period of five years, where there is now a strong current of medical and biotechnology innovation running through the list right now, with hybrid plant creation topping the list of trending technology, followed by CRISPR gene-editing technology, and then medicinal preparations (led by cancer therapies). “Tech” in the computer processor sense only starts at number-four with dashboards and other car-related tech; with quantum computing, 3-D printing and flying vehicle tech all also featuring.

Indeed, if you have wondered if we are in a fallow period of innovation in mobile, internet and straight computer technology… look no further than this list to prove out that thought.

Unsurprisingly, US companies account for 49% of U.S. patents granted in 2019 up from 46 percent a year before. Japan accounts for 16% to be the second-largest, with South Korea at 7% (Samsung carrying a big part of that, I’m guessing), and China passing Germany to be at number-four with 5%.

  1. International Business Machines Corp 9262
  2. Samsung Electronics Co Ltd 6469
  3. Canon Inc 3548
  4. Microsoft Technology Licensing LLC 3081
  5. Intel Corp 3020
  6. LG Electronics Inc 2805
  7. Apple Inc 2490
  8. Ford Global Technologies LLC 2468
  9. Amazon Technologies Inc 2427
  10. Huawei Technologies Co Ltd 2418
  11. Qualcomm Inc 2348
  12. Taiwan Semiconductor Manufacturing Co TSMC Ltd 2331
  13. BOE Technology Group Co Ltd 2177
  14. Sony Corp 2142
  15. Google LLC 2102
  16. Toyota Motor Corp 2034
  17. Samsung Display Co Ltd 1946
  18. General Electric Co 1818
  19. Telefonaktiebolaget LM Ericsson AB 1607
  20. Hyundai Motor Co 1504
  21. Panasonic Intellectual Property Management Co Ltd 1387
  22. Boeing Co 1383
  23. Seiko Epson Corp 1345
  24. GM Global Technology Operations LLC 1285
  25. Micron Technology Inc 1268
  26. United Technologies Corp 1252
  27. Mitsubishi Electric Corp 1244
  28. Toshiba Corp 1170
  29. AT&T Intellectual Property I LP 1158
  30. Robert Bosch GmbH 1107
  31. Honda Motor Co Ltd 1080
  32. Denso Corp 1052
  33. Cisco Technology Inc 1050
  34. Halliburton Energy Services Inc 1020
  35. Fujitsu Ltd 1008
  36. Facebook Inc 989
  37. Ricoh Co Ltd 980
  38. Koninklijke Philips NV 973
  39. EMC IP Holding Co LLC 926
  40. NEC Corp 923
  41. Kia Motors Corp 921
  42. Texas Instruments Inc 894
  43. LG Display Co Ltd 865
  44. Oracle International Corp 847
  45. Murata Manufacturing Co Ltd 842
  46. Sharp Corp 819
  47. SK Hynix Inc 798
  48. Hewlett Packard Enterprise Development LP 794
  49. Fujifilm Corp 791
  50. LG Chem Ltd 791
Posted on

New USPTO Guidance May Clear Path for More Technology Patents

James J. DeCarlo Contributor
James J. DeCarlo is a shareholder in Greenberg Traurig’s Intellectual Property Practice Group. A registered patent attorney, he is actively involved in virtually all aspects of intellectual property counseling. He has spent nearly 30 years litigating, licensing and procuring patents in the software, hardware, internet and networking spaces, among many others. Mr. DeCarlo can be reached at decarloj@gtlaw.com.
Chinh H. Pham Contributor
Chinh H. Pham leads Greenberg Traurig’s Emerging Technology Practice, and is co-chair of the Boston Office Intellectual Property Practice Group. He is a registered patent attorney with particular experience in the strategic creation, implementation, and protection of intellectual property rights for high technology clients. Mr. Pham can be reached at phamc@gtlaw.com.

On January 4, 2019, the United States Patent and Trademark Office (USPTO) released new Patent Examiner Guidance (“the Guidance”) for subject matter eligibility. The updated guidance could benefit any technology patent applicant who has a computer-related invention – from smartphones to artificial intelligence – and who has previously had difficulty acquiring patents under the USPTO’s procedures for determining patent subject matter eligibility.

This Guidance represents the current methodology for analysis of patent claims under 35 U.S.C. § 101 in view of Mayo v. Prometheus, Alice v. CLS Bank Intl., and subsequent cases, and is intended to provide a more concrete framework for analyzing whether patent claims, as a whole, are merely “directed to” an abstract idea.  The Guidance will supersede certain analysis methods articulated in previous guidance, particularly the Examiner’s “Quick Reference” that previously sought to categorize abstract ideas.

The Alice/Mayo Test

The Guidance acknowledges that applying the Alice/Mayo test to analyze claims under § 101 has “caused uncertainty in this area of the law” and has resulted in examination practices that prevent stakeholders from “reliably and predictably determining what subject matter is patent-eligible.” As such, the Guidance attempts to remedy this uncertainty by revising the USPTO’s analysis under the first step (Step 2A) of the Alice/Mayo test:

Posted on

Startup Law A to Z: Regulatory Compliance

Startups are but one species in a complex regulatory and public policy ecosystem. This ecosystem is larger and more powerfully dynamic than many founders appreciate, with distinct yet overlapping laws at the federal, state and local/city levels, all set against a vast array of public and private interests. Where startup founders see opportunity for disruption in regulated markets, lawyers counsel prudence: regulations exist to promote certain strongly-held public policy objectives which (unlike your startup’s business model) carry the force of law.

Snapshot of the regulatory and public policy ecosystem. Image via Law Office of Daniel McKenzie

Although the canonical “ask forgiveness and not permission” approach taken by Airbnb and Uber circa 2009 might lead founders to conclude it is strategically acceptable to “move fast and break things” (including the law), don’t lose sight of the resulting lawsuits and enforcement actions. If you look closely at Airbnb and Uber today, each have devoted immense resources to building regulatory and policy teams, lobbying, public relations, defending lawsuits, while increasingly looking to work within the law rather than outside it – not to mention, in the case of Uber, a change in leadership as well.

Indeed, more recently, examples of founders and startups running into serious regulatory issues are commonplace: whether in healthcare, where CEO/Co-founder Conrad Parker was forced to resign from Zenefits and later fined approximately $500K; in the securities registration arena, where cryptocurrency startups Airfox and Paragon have each been fined $250K and further could be required to return to investors the millions raised through their respective ICOs; in the social media and privacy realm, where TikTok was recently fined $5.7 million for violating COPPA, or in the antitrust context, where tech giant Google is facing billions in fines from the EU.

Suffice it to say, regulation is not a low-stakes table game. In 2017 alone, according to Duff and Phelps, US financial regulators levied $24.4 billion in penalties against companies and another $621.3 million against individuals. Particularly in today’s highly competitive business landscape, even if your startup can financially absorb the fines for non-compliance, the additional stress and distraction for your team may still inflict serious injury, if not an outright death-blow.

The best way to avoid regulatory setbacks is to first understand relevant regulations and work to develop compliant policies and business practices from the beginning. This article represents a step in that direction, the fifth and final installment in Extra Crunch’s exclusive “Startup Law A to Z” series, following previous articles on corporate matters, intellectual property (IP), customer contracts and employment law.

Given the breadth of activities subject to regulation, however, and the many corresponding regulations across federal, state, and municipal levels, no analysis of any particular regulatory framework would be sufficiently complete here. Instead, the purpose of this article is to provide founders a 30,000-foot view across several dozen applicable laws in key regulatory areas, providing a “lay of the land” such that with some additional navigation and guidance, an optimal course may be charted.

The regulatory areas highlighted here include: (a) Taxes; (b) Securities; (c) Employment; (d) Privacy; (e) Antitrust; (f) Advertising, Commerce and Telecommunications; (g) Intellectual Property; (h) Financial Services and Insurance; and finally (i) Transportation, Health and Safety.

Posted on

TiVo prepares to split its business into two as it pursues sale

DVR maker TiVo is preparing to split its company into two businesses: one, focused on its products like its Bolt family of DVRs, and the other on its licensing and intellectual property businesses. The move will help to address some of the complexities with those businesses, TiVo Interim CEO Raghu Rau, explained, which may make it more attractive to buyers.

By splitting the company into two, TiVo may be able to “facilitate strategic transactions,” with interested parties, Rau said, on the company’s Q4 earnings call this week with investors.

The CEO also noted that TiVo was in active discussions with parties who were interested in each its product and its IP businesses, but the overall strategic review process – which began a year ago – was taking longer than TiVo had anticipated.

“So we do agree that this process has taken longer than we had hoped particularly because of the complexity and uniqueness of our two businesses,” Rau told investors. “We’re hoping that we’ll give you another update the next quarter based on the ongoing discussions that we are having. But beyond that, I’m not willing to put a time limit on when this will happen because the interest of the Board and the management is to ensure that we get the best outcome for the shareholders and that’s what this whole review process has been focused on,” he said.

The issue seems to be that potential acquirers may want either the licensing business or the products business, but not both.

According to a report from LightReading, that’s definitely the case with potential buyers, sources told them. In addition, TiVo was described as being reluctant to move forward on anything significant until it knew more about the outcomes of its legal battles with Comcast over licensing and patents.

Rau noted that TiVo hadn’t actually announced that TiVo is separating, only that it’s now working on the various logistics issues that have to be addressed in order to separate the business, like the preparation of historical financials, audits and understanding of tax implications.

The company also said it ruled out a “transformative acquisition” a couple of quarters into its ongoing strategic review process, which began in February 2018.

TiVo itself was acquired by Rovi Corp. for $1.1 billion in 2016, and the combined entity kept the name TiVo. The deal enhanced TiVo’s patent portfolio, and today 9 of the top 10 pay TV service providers in the U.S. license its portfolio of IP, except for Comcast, whose license lapsed (which is why it’s in the courts.)

Given the relative recency of that merger, TiVo’s decision to now split the business again strongly hints that it’s had trouble finding a deal for the company as it stands today.

TiVo remains a household name, thanks to its line of TiVo branded DVRs which cater to pay TV subscribers and cord cutters alike. But the company has made some missteps along the way, as it tried to keep up with the increasingly competitive market. For instance, in an effort to differentiate itself, its newer Bolt DVR adopted an odd, angled shape that some found aesthetically displeasing. That matters, of course, because these DVRs have to be on display in your living room. (Unlike, says, Amazon’s new Fire TV Recast which can be hidden away in a back room of the house.)

In addition, TiVo’s model which relies on monthly subscriptions (or a larger “lifetime” fee) are harder for consumers to stomach at a time when there’s so much choice among media devices.

Combined with the larger shift away from pay TV and consumer adoption of players like Roku and Amazon Fire TV – even among pay TV subscribers – TiVo’s business is not what it once was.

The company in its earnings reported this Tuesday brought in a loss of $2.33 per share to end fiscal year 2018. In the year-ago quarter, TiVo had posted a profit of 28 cents. Its revenue for the period was $168.46 million, 21 percent down from Q4 2017, and under analysts’ estimates of $173.85 million.

Posted on

BlackBerry sues Twitter for patent infringement

BlackBerry, the former smartphone maker, is suing Twitter for alleged patent infringement. If this sounds familiar, it may be because BlackBerry filed a patent infringement suit against Facebook last year.

In its complaint, BlackBerry alleges Twitter has infringed and continues to infringe on six of its patents, which cover things like push notifications, silencing notifications for a message thread and mobile advertising techniques.

BlackBerry, which refers to itself as a pioneer in mobile messaging, alleges Twitter “created mobile messaging applications that co-opt BlackBerry’s innovations, using a number of the innovative user interface and functionality enhancing features that made BlackBerry’s products such a critical and commercial success in the first place.”

As noted above, BlackBerry sued Facebook last year alleging patent infringement. At the time, BlackBerry cited seven patents that relate to security, user interface features, battery-efficient status updates, mobile messaging in games and, similarly to its issue with Twitter, silencing notifications. A few months later, in September, Facebook filed a suit of its own against BlackBerry alleging the company infringed on five of its patents. Both of those suits are still in litigation.

BlackBerry was once a smartphone giant but stopped manufacturing its own hardware in 2016. Then, in 2017, BlackBerry revealed the KEYone smartphone, manufactured by TCL, under the company’s new strategy to focus on software.

Both Twitter and BlackBerry declined to comment.

Posted on

Apple is selling the iPhone 7 and iPhone 8 in Germany again

Two older iPhone models are back on sale in Apple stores in Germany — but only with Qualcomm chips inside.

The iPhone maker was forced to pull the iPhone 7 and iPhone 8 models from shelves in its online shop and physical stores in the country last month, after chipmaker Qualcomm posted security bonds to enforce a December court injunction it secured via patent litigation.

Apple told Reuters it had “no choice” but to stop using some Intel chips for handsets to be sold in Germany. “Qualcomm is attempting to use injunctions against our products to try to get Apple to succumb to their extortionist demands,” it said in a statement provided to the news agency.

Apple and Qualcomm have been embroiled in an increasingly bitter global legal battle around patents and licensing terms for several years.

The litigation follows Cupertino’s move away from using only Qualcomm’s chips in iPhones after, in 2016, Apple began sourcing modem chips from rival Intel — dropping Qualcomm chips entirely for last year’s iPhone models. Though still using some Qualcomm chips for older iPhone models, as it will now for iPhone 7 and iPhone 8 units headed to Germany.

For these handsets Apple is swapping out Intel modems that contain chips from Qorvo which are subject to the local patent litigation injunction. (The litigation relates to a patented smartphone power management technology.) 

Hence Apple’s Germany webstore is once again listing the two older iPhone models for sale…

Newer iPhones containing Intel chips remain on sale in Germany because they do not containing the same components subject to the patent injunction.

“Intel’s modem products are not involved in this lawsuit and are not subject to this or any other injunction,” Intel’s general counsel, Steven Rodgers, said in a statement to Reuters.

While Apple’s decision to restock its shelves with Qualcomm-only iPhone 7s and 8s represents a momentary victory for Qualcomm, a separate German court tossed another of its patent suits against Apple last month — dismissing it as groundless. (Qualcomm said it would appeal.)

The chipmaker has also been pursing patent litigation against Apple in China, and in December Apple appealed a preliminary injunction banning the import and sales of old iPhone models in the country.

At the same time, Qualcomm and Apple are both waiting the result of an antitrust trial brought against Qualcomm’s licensing terms in the U.S.

Two years ago the FTC filed charges against Qualcomm, accusing the chipmaker of operating a monopoly and forcing exclusivity from Apple while charging “excessive” licensing fees for standards-essential patents.

The case was heard last month and is pending a verdict or settlement.