Tech Transfer eNews Blog
Technology Transfer Tactics sample issue

How one company stood up to patent troll “bullies” and won


By David Schwartz
Published: August 30th, 2016

In his recent article for Tech Crunch, Chris Hulls, CEO of the family networking and communication service Life360, tells about being attacked by a patent troll. “I thought I was finished standing up to bullies when I left junior high,” Hulls begins. “As a tech founder, I’ve met a new kind of bully.”

And like most bullies, he adds, most people see trolls as a major problem, yet they rarely fight back because paying them off is almost always cheaper than going to trial. Hulls eventually did fight back, however, after patent trolls attacked him last May, the same week Life360 raised $50 million in financing.

“It felt like I was getting mugged on payday,” he recalls. “Although we had settled with trolls before, I decided that this was the last straw. I realized that bullying begets more bullying, and not standing up to patent trolls just paints a target with dollar signs on your back.”

When Hulls looked up Advanced Ground Information Systems Inc. (AGIS), the company that was suing his business, he found it did indeed resemble a typical patent troll: they had no employees on LinkedIn, and their patents were broad enough to threaten many smaller tech companies at the same time. In this case, an infringer could be any company that showed a location marker on a map or could connect a group of people via location-sharing.

Hulls’ response to the suit was a passionate one, if a little bit profane.

“Dear Piece of Sh*t,” his letter begins. “We are currently in the process of retaining counsel and investigating this matter. As a result, we will not be able to meet your Friday deadline.” Hulls ends the letter on a resonant note: “I will pray tonight that karma is real, and that you are its worthy recipient. Chris.”

When AGIS asked Hulls to settle — standard procedure amongst trolls — he told them his offer was $0, then tasked them with licensing their entire patent portfolio to all other start-ups. If they didn’t do this, Hulls threatened to invalidate their intellectual property entirely.

Although AGIS thought he was just bluffing, a jury recently returned a verdict of non-infringement on all of the claims against Life360. “And with that,” says Hulls, “the troll is dead.”

His advice to other start-ups facing off against trolls is hard and clear: publicly call them out for what they really are (trolls hate this); share all information on your technology to (1) call attention to your case, and (2) point out the meritless claims being brought against you; and fight for what you believe is right — this is important for when things get hard and you might otherwise give up.

“While this win was not without cost, we have strong evidence that our hardline approach is working,” writes Hulls. Since the AGIS incident, Life360 has received two other demand letters, but after these firms saw the extreme defense the company mounted against AGIS, they went away.

“So, to my fellow founders,” Hulls concludes, “I beg of you, please don’t settle… We can make this problem go away in an instant by collectively standing up to bullies that plague us.”

Source: TechCrunch

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Creating, Managing and Funding Student Legal Clinics for University Start-Ups: A Win-Win for Law School Students, University Entrepreneurs, and Your TTO


By David Schwartz
Published: August 30th, 2016

The ZEAL Entrepreneurship Clinic at the University of Michigan has come up with a way to give start-up companies a head start when it comes to legal expenses in a way that benefits the company as well as the law students involved and the TTO. The clinic was founded in response to an influx of student entrepreneurs developing companies out of UM’s business, engineering, and medical schools. They needed quality legal advice for their start-ups that didn’t cost an arm and a leg, and the law students needed practical experience. The result has been a very successful program that gives start-ups the help they need, students the experience they crave, and saves thousands of dollars the companies and TTO can use for building the fledgling businesses.

Technology Transfer Tactics has recruited the founding director of the University of Michigan Law School’s Entrepreneurship Clinic, Dana A. Thompson, to lead this case study webinar that will outline how the clinic works, is managed and funded, and how the projects are coordinated through the TTO and other departments: Join us on September 28 for Creating, Managing and Funding Student Legal Clinics for University Start-Ups: A Win-Win for Law School Students, University Entrepreneurs, and Your TTO.

For complete program details and to register, CLICK HERE.

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New scale-up program looks to turn Canada’s best start-ups into global businesses


By David Schwartz
Published: August 30th, 2016

A new program at Waterloo’s Wilfrid Laurier University is on a cross-country recruitment tour looking for start-ups with the potential to go global as part of a cross-country recruitment tour. continue reading »

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U Denver’s Project X-ITE offers lessons in building an integrated model of innovation


By David Schwartz
Published: August 30th, 2016

It’s no secret that Denver, Colorado is experiencing an entrepreneurial renaissance, and a novel new initiative at the University of Denver (DU) aims to centralize and drive innovation both within the institution and throughout the city’s booming start-up scene.

Formally launched in December of 2015, the initiative known as Project X-ITE serves as a hub of innovation for the university and the regional business community, and establishes DU as a pacesetter of university-driven entrepreneurship. Working essentially with a blank slate, the school has created a highly evolved commercialization and economic development organization that could be a harbinger of how TTOs look and operate in the future.

Project X-ITE’s interdisciplinary, highly integrated approach to advancing innovation and technology is the result of an alliance between the Daniels College of Business, the Sturm College of Law, and the Daniel Felix Ritchie School of Engineering and Computer Science. Deans from each of the three schools convened in 2015 in response to growing student demand for multidisciplinary and experiential learning opportunities as well as an increase in interest from local businesses seeking to harness the university’s commercialization expertise and resources.

Brent Chrite, PhD, dean of DU’s Daniels College of Business, says that although “the university recognized that while we are in the midst of this really vibrant, wonderful, dynamic entrepreneurial ecosystem in Colorado … the University of Denver wasn’t playing the kind of role that we thought we should have been playing.” In a move to develop a strategic plan for the university, Chancellor Rebecca Chopp conducted extensive interviews with members of the DU community.

According to J.B. Holston, dean of the Ritchie School, the initiatives outlined in the newly created DU plan encouraged “cross-discipline, project-oriented, experiential pathways to knowledge creation. The three deans’ work segued perfectly with the new DU strategic plan, and the result was a white paper in August of last year that launched Project X-ITE.”

Chopp’s confidence in the new program led to her decision to provide funding for much of the first two years of Project X-ITE’s operating expenses. Martin Katz, dean of the law school, says that the chancellor’s support was “…exhibit A of this very different way of doing things. When we first started talking about Project X-ITE, we were talking about it in the standard academic way of thinking about things, which is: first we’ve got to put together a plan, and then we’ve got to get funding for the plan, and maybe in two or three years we’ll be in a place where we can start to think about hiring an executive director.”

Instead, says Katz, the chancellor put together seed funding for the first two years and suggested that a search for an executive director begin. “She really lit the match that got this thing going,” he adds.

As a result, Project X-ITE was able to bring aboard an executive director, Erik Mitisek, a successful local entrepreneur (and DU alum) who joined the team in April. Mitisek, who formerly served as CEO of the Colorado Technology Association, is tasked with facilitating the connections between students, faculty, and industry that lead to successful entrepreneurial collaborations.

Project X-ITE’s organizational model is a unique example of an economic development and research commercialization program that productively engages the community, university faculty, and students alike. In addition to leadership from the deans and executive director, Project X-ITE will receive support from a group of 10-12 industry partners.

“[T]hey are here, in part, to engage us, and enable us, and be the interlocutors, if you will, between DU and X-ITE and the broader community…. A big part of this is to create a level of dynamism and discourse and energy that only comes when you establish these kinds of partnerships with external stakeholders of all stripes and our internal community,” says Chrite. Students from each of the three currently participating schools (business, law, and engineering) will also contribute to the project, with student teams assisting in moving innovations to market. The hope is to eventually expand the scope of X-ITE to include additional schools.

“In many ways this is a project about desiloing a university in its ecosystem, and the various parts of the university to each other,” says Holston. Innovations from aspiring entrepreneurs of all backgrounds are welcome. Technologies and other ideas with commercial potential are transmitted via an online submission form, and are then evaluated for market potential. Pitches that bridge multiple disciplines are of particular interest, as those projects tend to promote impactful partnerships….”

A detailed article on the X-ITE initiative appears in the August issue of Technology Transfer Tactics. To subscribe and get the full article, and also gain access to the publication’s rich archive of best practices and success strategies for TTOs, CLICK HERE.

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Start-up launches new database of SBIR/STTR funding opportunities


By David Schwartz
Published: August 30th, 2016

After the success of its initial beta pilot platform, Reno-based start-up InterKn launched its Early Adopters Program today as a subscription service to thousands of small businesses seeking federal R&D funding. continue reading »

Best Practices in Gaining SBIR/STTR Funding for University Technologies

Best Practices in Gaining SBIR/STTR Funding for University Technologies is a two-session distance learning collection that helps faculty innovators, start-up founders, TTO staff, and sponsored research managers ensure their funding applications stand apart from the herd. Click here for details >>

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Harvard inks novel sponsored research alliance with Tata companies that incorporates entrepreneurship education


By David Schwartz
Published: August 30th, 2016

Harvard University has established a six-year, $8.4 million research alliance with a group of Tata companies including Tata Sons, Tata Communications, Tata Steel, and Jaguar Land Rover. The first-of-its-kind initiative adds a new leadership development component to the university’s research partnerships. continue reading »

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Indian lab readies clinical trials for world’s first leprosy vaccine


By David Schwartz
Published: August 30th, 2016

The first exclusive vaccine for leprosy, developed by a researcher at India’s National Institute of Immunology, will be piloted in several areas of that country with high prevalence of the disease. The disease affects 125,000 people each year, and 60% of the global leprosy patients live in India. continue reading »

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Just published: Calculating Economic Damages in Intellectual Property Infringement Cases, 2nd Edition


By David Schwartz
Published: August 30th, 2016

In the all-new 2nd edition of Calculating Economic Damages in IP and Patent Infringement Cases, you’ll find a comprehensive overview of strategies, analysis, case studies, and legal insight to help you calculate and recover the maximum damages incurred due to patent infringement.

Nowhere else will you find such a complete and thorough analysis of current case law and the valuation methods that form the basis of damage awards in IP and patent infringement cases. This completely updated 790-page guide also features new material on case law relating to reasonable certainty and motions to exclude experts in lost profits damages cases. This comprehensive resource is a must-have for all IP professionals, tech transfer executives, and IP attorneys.

For complete details, CLICK HERE >>

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Entrepreneurs learn to keep it simple by pitching to children


By David Schwartz
Published: August 30th, 2016

A new Austin, TX-based organization is teaching entrepreneurs that, unless you can successfully explain your company to a child, you won’t have much luck pitching to investors. continue reading »

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MDI Lab researchers develop promising therapeutic that stimulates the heart to repair itself after an attack


By David Schwartz
Published: August 30th, 2016

Researchers at the nonprofit Mount Desert Island Biological Laboratory (MDI) have secured a patent for their discovery of a small molecule that helps repair and regenerate heart tissue damaged by heart attacks and other injuries. continue reading »

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University College London collaborates with Cell Medica to commercialize novel T cell cancer treatment


By David Schwartz
Published: August 30th, 2016

Cell Medica, a leading developer of cellular therapeutics for cancer and infections, is collaborating with University College London (UCL) to take the school’s novel T cell receptor (TCR) technology from the lab to the marketplace in the form of new cancer treatments. continue reading »

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Comings & goings


By David Schwartz
Published: August 30th, 2016

Prem Paul, who helped to oversee unprecedented growth in research at the University of Nebraska-Lincoln, announced his resignation Monday as vice chancellor for research and economic development, citing health issues. Chancellor Ronnie Green told staff that Paul would return to the faculty as distinguished professor of veterinary medicine and biomedical sciences.

Green named Steve Goddard as UNL’s interim vice chancellor for research and economic development, pending approval by the Board of Regents. It would be difficult, Green said, to “find another person in the 147-year history of the University of Nebraska who has achieved the level of impact of Prem Paul.” Under Paul’s leadership, UNL was one of the fastest-growing research universities in the nation from 2001 to 2009, and by fiscal year 2015, sponsored research reached a record $146.9 million. The university was named to the Nature Index’s top “rising stars” in research for 2016. “Prem’s vision, coupled with his relentless energy and enthusiasm to think big, has been nothing short of remarkable in how it has transformed us as a research-intensive university,” Green said.

Goddard, who joined UNL in 1998, has been associate vice chancellor for research since 2014 and previously was interim dean of the College of Arts and Sciences and chair of the Department of Computer Science and Engineering. Before joining the university, Goddard worked in the computer industry for 13 years, including nine as president of his own company.

Source:  Lincoln Journal Star

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