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Law.com Home > Verizon Patent Case Marks a First for Intellectual Ventures

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Verizon Patent Case Marks a First for Intellectual Ventures

By Zusha Elinson All Articles 

The Recorder

February 26, 2010

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Large patent hoarder Intellectual Ventures says it's taking a new customer-friendly approach.

The Bellevue, Wash., company that owns around 30,000 patents for the first time assigned one of its members a patent to use as ammunition in a lawsuit. Verizon Communications, which agreed to pay IV as much as $350 million in a 2008 deal, is using one of IV's patents to strike back at TiVo in a patent fight.

Don Merino, vice president of licensing at IV, said it's an example of IV taking "a much more customer-centric approach."

"We want to figure out how to get out of the, 'I win, you lose' to a much more collaborative, 'We both win,'" said Merino.

This is new talk from IV, whose secrecy and vague business plans caused big tech companies to worry in the past about what exactly IV was going to do with all of its intellectual property.

The shift comes as IV has faced competition from San Francisco's RPX Corp., a patent aggregator that is more upfront about its business model and that has played a more active role in getting rid of patent troll lawsuits against its members. RPX has signed up some of IV's members, including Cisco Systems Inc. and Microsoft Corp.

In the past year, IV has started to give signals about what it would do with its stockpile of patents. It has struck deals with patent trolls that are now using the IP in lawsuits. Assigning a patent to Verizon is another use of its IP. IV wouldn't say whether it sold or simply loaned the patent to Verizon for its TiVo fight.

The original lawsuit was filed by TiVo against Verizon in August. IV then looked through its portfolio and found a patent that Verizon could use to hit back at TiVo, Merino said. Verizon asserted the patent on an "Apparatus and Method of Selecting Video Programs Based on Viewers' Preferences" in a counterclaim (PDF) against TiVo on Wednesday in the Eastern District of Texas.

The $350 million Verizon deal was first reported by The Wall Street Journal in 2008. Merino confirmed on Thursday that Verizon is a member of IV.

In other news, IV also announced Thursday that it had hired Joe Chernesky, a Silicon Valley licensing executive. Chernesky left patent broker IPotential after a nasty spat with co-founder Ron Epstein. That resulted in a lawsuit that's pending in San Mateo County Superior Court.

Chernesky previously worked in Intel Corp.'s licensing department with Merino as well as IV co-founder Peter Detkin. Epstein was also there.

"We're very proud of the fact that Joe is coming to IV," Merino said.

Chernesky, who is not a lawyer, will be working on IV's divestiture program as well as other parts of the business.



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Companies, agencies mentioned

    
  • Verizon Communications
  • RPX
  • Cisco Systems Inc.
  • Microsoft Corp . In the past year, IV has started to give signals about what it would do with its stockpile of patents. It has struck deals with patent trolls that are now using the IP in lawsuits. Assigning a patent to Verizon is another use of its IP. IV wouldn't say whether it sold or simply loaned the patent to Verizon for its TiVo fight. The original lawsuit was filed by TiVo against Verizon in August. IV then looked through its portfolio and found a patent that Verizon could use to hit back at TiVo, Merino said. Verizon asserted the patent on an "Apparatus and Method of Selecting Video Programs Based on Viewers' Preferences" in a counterclaim ( PDF ) against TiVo on Wednesday in the Eastern District of Texas. The $350 million Verizon deal was first reported by The Wall Street Journal in 2008. Merino confirmed on Thursday that Verizon is a member of IV. In other news, IV also announced Thursday that it had hired Joe Chernesky, a Silicon Valley licensing executive. Chernesky left patent broker IPotential after a nasty spat with co-founder Ron Epstein. That resulted in a lawsuit that's pending in San Mateo County Superior Court. Chernesky previously worked in Intel
  • Verizon Communications
  • RPX
  • Cisco Systems Inc.
  • Microsoft Corp.
  • Selecting Video Programs Based on Viewers
  • Wall Street Journal
  • Intel Corp.

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  • Patent
  • Patent

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