September 9, 2021 Patent Newsletter #26
Acacia Makes an Offer for SPOK, Xperi's Invensas Loses Nvidia Patent Challenges, Parus Holdings Score IPR Wins, The future of the Newsletter
Glad to be back after a month plus off. I want to thank Edwin Dorsey of The Bear Cave for highlighting my Twitter account and Substack Newsletter back in July. There are no patent charts this week as our system is being upgraded and hopefully ready to start a beta test for users in the near term future.
This week's patent newsletter is sponsored by Litigation Finance Dealmakers Forum.
Litigation Finance Dealmakers Forum is the premier LF event each year connecting thought leaders in the litigation finance space. This years event is being held on September 29 and 30, 2021 in New York City with a Virtual option. Registration to the event is open and filling up fast. The event is fantastic for investors or legal professionals who are involved with financing litigation or anyone considering non-traditional investments. Sign up as soon as possible as the event will sell out fast. On a very personal note, CEO Wendy Chou is one of the nicest and the most welcoming person I have ever met. She had me speak on a panel at the inaugural IP Dealmakers conference in 2014, which I was way out of my league on.
Acacia Research Group ($ACTG) made news on August 30, 2021 with their proposed acquisition of Spok Holdings ($SPOK) for $10.75 per share. After a first review of the recent $SPOK filings the immediate action after any deal is accepted and closes is to go through the G&A section of the operating expenses cutting the fat and finding synergies in the current Acacia business. SPOK subsequently announced a strategic review and a shareholder rights plan. ACTG continues to trade under estimated book value of around $7.50 and does not receive any kind of premium on their patent business or biotech holdings acquired from Woodford. It looks like the IPO for Oxford Nanopore is getting close, which $ACTG holds a six percent position in.
Last Wednesday September 1, 2021 Xperi $XPER lost two Inter Partes Review challenges at the USPTO’s PTAB filed by Nvidia $NVDA. The District court case in Delaware should remained stayed as $XPER will likely appeal the adverse decisions to the Federal Circuit. This process should take 10 to 16 months to resolve. In the near term $XPER should consider going through their extensive patent portfolio and find four to eight patents, which Nvidia might infringe and get the ball rolling filing new patent suits.
This afternoon on September 9, 2021 Parus Holdings LLC won two Inter Partes Review Final Decisions on patent numbers 9,451,084 and 7,076,431 that Apple filed. There are two additional IPRs filed by Google/Samsung/LG with Final Decisions due at the end of October 2021, which involve a different set of prior art. I thought the following excerpt from the hearing transcript was rather interesting.
Michael Renaud (who is fantastic and if you are looking to explore filing a patent case he is one of the best) is the Chair of Mintz’s Intellectual Property division and also the CEO of Parus. I thought Mike being the Chair of IP at Mintz and the CEO of Parus as one of the more interesting events I have seen disclosed lately. Parus has litigation filed in the Western District of Texas versus Apple, Samsung, and LG, which was stayed pending the IPR Proceedings. The case versus Amazon looks to have settled back in July 2021. A Markman Order in those cases was issued by HJ Albright on September 8, 2020, which adopted the majority of Parus’s proposed constructions. Newer cases versus Microsoft and Google were filed on June 4, 2021 and are in the early stages of briefing. I have added these dockets to my watchlist and will provide updates as they come in.
An update on the Patent Newsletter: a lot of the patent data specific content will be moved to a new website for the software project that I have been working on. I will continue to publish on Substack and likely publish a few times a week covering patent developments, trade ideas, investment ideas / thoughts, and ongoing paid stock promotions. I will be turning on the paid option, which will put the majority of future content behind a paywall.
Thank you for reading.