Also on the blog this week:
And in our news and analysis:
How much is Yahoo’s portfolio worth?
reported that intellectual property is one of three "hidden
assets" that could drive up Yahoo’s value,
according to SunTrust analyst Robert Peck.
"Yahoo disclosed in its last earnings call that it's looking
to generate $1 billion to $3 billion through the sale of
nonstrategic assets and real estate," said Business Insider.
"But Peck believes that the value of its patents alone could
fetch more than $3 billion, if sold to a large enterprise or a
group of companies."
IP players were quick to pour scorn on this
Richardson Oliver Law Group published
an analysis disagreeing with the high valuation. It
estimates a street price of $772 million, with a high of $1.15
billion and a low of $393 million. "Yahoo has a valuable asset,
just not a $3B asset," wrote Kent Richardson, who also noted
that 2015 asking prices had dropped 20% year on year.
Thomson Innovation reports Yahoo as having 2,187 US issued
patents and 9,329 worldwide patent assets including 4,296
"What might they get for it?" asked Richardson. "With 9,329
assets, we would expect a high asking price around $1.8
billion. However, on a per issued US patent basis, the asking
price would be $605 million. We typically discount the seller's
asking price by 35% resulting in street prices between $1.15
billion and $393 million. That is a big spread, but in neither
scenario did we get anywhere near $3 billion. These numbers
also assume that every asset sells."
Envision IP also
published an analysis of Yahoo’s patent
It identified 2,000 US patents currently assigned to Yahoo
that are active and in-force. Yahoo’s 2015 10-K
reveals the company reported almost $300 million in gains
related to patent sales between 2013 and 2015.
The vast majority of Yahoo’s patents are
related to software, with 68% of its US patents grouped in a
software-related classification by the USPTO and 15% classified
as business methods patents.
Yahoo’s US patents have an average of 10.41
years of life remaining per patent. In comparison,
Google’s software patents have 10.37 years, and
Microsoft’s software patents have an average of
8.47 years of life remaining.
"Based on a forward citation analysis, Yahoo’s
patents appear relatively fundamental, and on par with
software/web-related patents owned by Google and Microsoft,"
said Envision IP. However, Yahoo’s patents do not
appear to have been heavily tested in federal court, or even
before the PTAB in post-grant proceedings.
"We do not believe that a $3-$4 billion valuation for
Yahoo’s US patent portfolio is realistic, and
expect the patents to be valued in a range of $965 million to
$1.34 billion, based on our intrinsic valuation," said
Envision IP. "If a potential buyer does see the potential to
heavily license and/or litigate the portfolio, this value
could increase, but that increase would be entirely dependent
on extrinsic variables such as a buyer’s
motivation and intentions for acquiring the portfolio. In
addition, the ability to secure higher royalty rates and
litigation awards would increase the current valuation
(however there is no public record to justify this as Yahoo
does not have large historical patent litigation awards)."
Second Circuit passes on pre-1972 question
The Second Circuit has avoided making a ruling on the
performance rights of pre-1972 sound recordings until the New
York Court of Appeals has first addressed the issue,
according to The Hollywood Reporter.
Flo & Eddie of 1960s band The Turtles are trying to stop
SiriusXM from broadcasting pre-1972 sound recordings without
agreed-upon compensation. Federal copyright law protects sound
recordings after 1972. Flo & Eddie argue that state laws
protect works written before then.
Second Circuit said: "A significant and unresolved issue of
New York law is determinative of this appeal: Is there a right
of public performance for creators of sound recordings under
New York law and, if so, what is the nature and scope of that
right? Accordingly, we CERTIFY this question to the New York
Court of Appeals and reserve decision."
101 and done?
Former USPTO director David Kappos has long criticised
Section 101, but went further in the past week by calling for
it to be abolished, Schwegman Lundberg &
patents 4 software blog reports.
"It’s time to abolish
Section 101, and the reason I say that is that Europe
doesn’t have 101 and Asia doesn’t
have 101 and they seem to be doing just fine in constraining
patent-eligible subject matter," Law 360 quoted Kappos as
a poll on Twitter posted by Managing IP, the vote was split
41% yes, 59% no on whether abolishing 101 was a good
Alibaba joins IACC
In news that may seem ironic to
some, Alibaba has become the first e-commerce company to
join the International AntiCounterfeiting Coalition
"Preserving the integrity of Alibaba’s
marketplaces is a top priority. Counterfeiting is a global,
industry-wide issue, and effective collaboration with brands,
retailers, trade associations, governments and other industry
partners is a key component to our overall success," said
Matthew Bassiur, vice-president and head of global IP
enforcement at Alibaba Group.
Facebook’s new copyright problem
Slate has published
a piece looking at the copyright issues involved in
Facebook’s Live video programme.
"Whether or not the social
network’s expanded investment in live video is
just a trend, it promises to pose serious problems for our
understanding of – and approach to – matters
of intellectual property. And even as Facebook works to resolve
some of these concerns, it may be creating new ones that will
reshape the ways we distribute and consume media of all
sorts,"" wrote Slate’s technology reporter Jacob
The article said it may be difficult to enforce claims
against clips of sporting events, for example, because courts
have held they are not always covered under copyright
Facebook has been working on technical solutions to prevent
"freebooting" – uploading another
creator’s video’s without permission.
It has implanted image and audio matching systems to flag
duplicates. It has also debuted a rights management system that
makes its tools more widely accessible.
The article notes that the upshot is that performers and
creators will have to give Facebook access to their work if
they want to protect it.
"Whether or not Facebook’s live video effort
takes hold, this may be its true legacy. Even if the
site’s massive user base doesn’t
tune in, many of those who make the media we consume will
have to," the article concludes.
Patent grants back on track
Patently-O blog reports that 2016 US patent grant numbers
have pick up in pace and are now set to match the 2014 record
of more than 300,000 utility patents for the year.
Figures were trending lower than the record 2014 and 2015
pace in February, but have picked up.
However, as the blog notes, while 2014 figures may be
matched: "During this time the number of patent examiners on
staff has actually fallen from a high of over 8400 in 2015 to
now around 8100."