The ongoing Kodak bankruptcy has engendered interest in understanding the role of IP-related licenses in bankruptcy. The recent decision in In re Spansion also merits consideration. There, following settlement of Spansion’s 2008 ITC patent infringement action against Samsung and Apple, Spansion and Apple entered into a letter agreement in February 2009 whereby Spansion agreed to dismiss its ITC action against Apple and promised to refrain from filing future actions relating to its asserted patents. In turn, Apple agreed to not disbar Spansion as a supplier and to consider Spansion for future products. In March 2009, Spansion filed for Chapter 11 bankruptcy in the Bankruptcy Court for the District of Delaware.
FTC Proposes Rules to Codify Reporting of Exclusive Patent Right Transfers in the Pharmaceutical Industry
Is the sale or assignment of a patent reportable? The Hart-Scott Rodino Antitrust Improvements Act of 1976 (“HSR”) and related rules require that all acquisitions of voting securities or assets exceeding a threshold amount be reported to the Federal Trade Commission (“FTC”), as well as the Antitrust Division of the Department of Justice. The current threshold is $68.2 million.
As anticipated, Eastman Kodak Co. filed a petition for Chapter 11 bankruptcy relief this morning in the United States Bankruptcy Court for the Southern District of New York. This development followed a recent flurry of patent infringement suits involving Kodak, and on the heels of Kodak’s unrequited efforts to license or sell off its substantial intellectual property (“IP”) portfolio.
While invention promoters and IP registration firms claim to assist present and future IP holders, some have been found to offer little or nothing of value in exchange for the thousands of dollars paid to them. Here are ways to investigate these firms and learn about your rights to avoid being treated unfairly. Invention Promoters: There are several resources available to help investigate and weed out unscrupulous invention promoters. The Federal Trade Commission offers a Consumer Alert listing the “sweet-sounding promises” of promoters that may do little or nothing in return for the fees they collect. Complaints regarding invention promoters can be filed with the FTC.
Corporate Reorganization Absent Assignment or License of Patent Rights Results In Preclusion Of Patentee’s Lost Profits Damages
In a decision that highlights the import of assigning or licensing intellectual property assets during corporate reorganization, a district court recently ruled that a plaintiff patentee was not entitled to lost profit damages based on the patent at issue in an infringement action. In Duhn Oil Tool, Inc. v. Cooper Cameron Corporation (CAED January 24, 2011) Duhn Oil Tool, Inc. filed suit against Cooper Cameron Corporation alleging patent infringement. Following discovery, the defendant filed a motion for partial summary judgment arguing that the plaintiff patentee was not entitled to lost profits damages.