for Taiwan Firms, The Time Is Now for Patent Monetisation

Several Taiwan-based tech companies have announced, or otherwise revealed, new patent monetisation efforts in recent months, suggesting that some of the island’s most significant rights holders are exploring ways to boost returns on their long-term IP investments.

Recent initiatives have taken the form of litigation, new licensing efforts and sales of patent assets.

Asustek Computer, for example, is at the centre of a new licensing programme backed by litigation funder GLS Capital and announced in November. The company has tapped Celerity IP, a new entity led by Tim Berghuis (formerly of InterDigital) and Chad Hilyard (most recently of Hilco) to license out 3G, 4G and 5G patents owned by Asus and affiliate Innovative Sonic as the companies’ exclusive agent.

Asus has previously done deals with NPEs, transferring assets to licensing outfits including Longhorn IP in the past. But this new programme will see the electronics company, whose IP function is led by general counsel Vincent Hong, retain ownership of the patent rights being monetised.

Acer is another electronics hardware company that seems to be ramping up its IP value creation efforts. In December the company, which has often been a target of NPE litigation, launched a patent infringement suit of its own targeting Volkswagen with a number of patents declared essential to 4G/LTE standards. The complaint explains that Volkswagen AG itself has taken only a 2G/3G licence from Avanci (of which Acer is a member), even though it has “increasingly incorporated 4G connectivity” into its vehicle lineup.

The rare assertion by Acer followed an equally unique patent disposal the company made earlier in the year. USPTO records show that the company supplied a networking patent to a Waco-based NPE that subsequently initiated a litigation campaign against targets including Huawei and D-Link.

Chip designer MediaTek, on the other hand, has been a consistent and active presence in IP monetisation circles for some time. Events from the past year include a huge patent transaction with WiLAN as well as a high-profile patent assertion against rival chip company NXP Semiconductor. More recent developments suggest the company is still looking for additional ways to generate patent-based revenue. Assignments recorded in December showed it had transferred a chip patent portfolio to a Chicago-based LLC. And its HFI Innovation affiliate, thought to be among the most significant contributors to the VVC standard, was among the inaugural licensors signed up the new Access Advance VVC pool.

Largan Industry, a lens maker which previously relied almost exclusively on trade secrets, sued Lenovo’s Motorola Mobility in November for infringement of US patents amidst rising competition in the smartphone camera supply chain.

With prominent exceptions including TSMC, patent filings by Taiwan firms have been declining gradually for a number of years. Many of the island’s technology companies (again, with prominent exceptions) have faced significant commercial pressures during that span, including rising competition from mainland Chinese firms.

But there is no shortage of mature IP assets in the tech sector there, and many of the top companies have had the same leadership atop their IP teams for some time now. They will know the ins and outs of their portfolios very well, and several of them seem to be concluding that the time is ripe for monetisation efforts focused on US rights.

Source: iam-media.com

Editor: IPRdaily-Rene