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Technology Transfer Tactics sample issue

WARF’s big infringement win over Apple offers lessons for universities


By David Schwartz
Published: February 10th, 2016

The recent jury verdict and $234 million award in favor of the Wisconsin Alumni Research Foundation over tech juggernaut Apple Inc. is the latest victory for university licensors over well-heeled corporate giants, and it offer some lessons for TTOs — particularly those protecting IP that makes up one small part of a bigger piece of equipment.

WARF sued Apple over U.S. patent number 5,781,752, “Table-Based Data Speculation Circuit for Parallel Processing Computer,” which essentially improves the efficiency and performance of computer processors. The patent has been in litigation before — WARF asserted it against Intel in 2008, and on the eve of trial got a $110 million settlement.

The complaint was very simple, reports B. Scott Eidson, a partner at Stinson Leonard Street LLP in St. Louis: one patent, one set of accused products. They all used the A7 processor, including the iPhone 5S, the iPad Air and the iPad Mini with retina display. Apple filed an Inter Partes Review request, which the Patent Trial and Appeal Board denied.

That denial left Apple “stuck in litigation in the Western District of Wisconsin,” Eidson points out. “WARF had two cases filed there, the first on January 31, 2014. Apple updates its product once a year, and each update brings in a new processor. So in this case they sued in January in 2014 after the September launch and Apple, during the course of the litigation, released new products with a new, updated processor. When you sue for patent infringement, you identify the accused products-in-suit and you’re allowed to have discovery on them, but Apple essentially released a lot more mid-litigation.”

WARF was forced to file a second lawsuit on September 25, when the second wave of products launched, to take those into account. “If another wave of products is launched next year, WARF may be forced to file yet another lawsuit.”

The WARF case was an odd situation, he points out, because of what the magistrate judge would and wouldn’t let WARF do. In general, you want to keep an application on file, especially if you have new IP that will cover a successful product, so if people move their technology around your patent, you’ve got the continuation on file so you can put claims on top of the product. But in WARF, he explains, “the patent was just sitting out there. In that situation, you’re basically stuck doing what WARF did: Ask the court to combine the products, and if it won’t, you’ve got to file another lawsuit.”

The second lawsuit is still pending, he says, and is in the very early stages of discovery. It is, he points out, “nearly identical to the first, but for adding the updated chip and the new products.”

Damages pose another problem in such cases. WARF had asked for $400 million, based on a royalty of $2.74 for each device sold. Not surprisingly, Apple had set the same royalty calculation at just $0.7 cents a device. “The main problem is how you assess damages for something that is but a component of the overall product sold,” Eidson comments. A detailed analysis of the case appears in the January issue of Technology Transfer Tactics. To subscribe and access the full article, plus the publication’s rich archive of success strategies and case studies for TTOs, CLICK HERE

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VA is forced to pay huge price for hepatitis C drug one of its own researchers developed


By David Schwartz
Published: February 10th, 2016

The Department of Veterans Affairs is paying $40,000 per treatment for a hepatitis C drug that one of its own researchers developed. The VA received no rights to the drug in what a U.S. congressional committee say is emblematic of the VA’s failures in its tech transfer activities over the years. continue reading »

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Establishing Affinity Funds for University Startups: Tap Into Alumni for a New Investment Stream


By David Schwartz
Published: February 10th, 2016

By all measures, universities are launching more faculty and student start-ups than ever before. And while that’s a positive, it also means there’s an urgent need for new investment dollars to keep those start-ups moving forward. A growing number of institutions have turned to their own alumni, creating angel and VC-type funds that are tied to the university by more than self-interest alone, but also by strong bonds to the school itself.

These “affinity” funds reap huge benefits by providing university start-ups with critical community-based financial support. But creating and managing such a fund is a major undertaking with major challenges.

To guide you in considering the options and in creating a vibrant alumni-focused fund, Technology Transfer Tactics has scheduled this strategy-filled webinar: Establishing Affinity Funds for University Startups: Tap Into Alumni for a New Investment Stream. Join us on February 23rd when a team of experts from UC San Diego leads this highly informative session.

For complete details and to register, CLICK HERE.

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Buck Institute start-up developing potential drug to reverse effects of aging


By David Schwartz
Published: February 10th, 2016

A start-up from the Buck Institute for Research on Aging in Novato, CA, is developing a health technology to treat a wide range of age-related diseases by ridding the body of a build-up of dead cells. continue reading »

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Investment firm focuses on getting student start-ups out of the starting gate


By David Schwartz
Published: February 10th, 2016

A Boston venture firm focused on student start-ups is bringing early funding to fledgling companies. Rough Draft Ventures has been operating since December 2012, investing exclusively in college students’ start-ups. It provides up to $25K to each company in invests in and gives student entrepreneurs access to support, mentors, and a network of other start-ups. continue reading »

Choosing the Best Legal Structure for University Start-ups

Join Robert McGrath of Drexel University and Christopher Wright of McCausland Keen & Buckman for an in-depth look at the most critical, challenging, and often overlooked issues related to business structure for university start-ups. Click here for details >>

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UC Davis professor’s technology could revolutionize the field of anesthesia


By David Schwartz
Published: February 10th, 2016

A University of California-Davis (UCD) professor has developed a technology that could lead to better, safer and more cost-effective general anesthesia for surgical procedures. continue reading »

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University Technology Marketing Boot Camp available on DVD


By David Schwartz
Published: February 10th, 2016

The University Technology Marketing Bootcamp, featuring a panel of expert technology marketers, is now available on DVD, on-demand video, and print transcript. In the four one-hour sessions that make up the Boot Camp series, our top-notch panelists lead you through the marketing process from disclosure assessment and how to pack a punch with your creative writing to budgeting, maximizing return on your marketing investment, and analyzing your results. The four sessions are:

  • Session One: Understanding Your Technology, Inventor and Market
  • Session Two: Marketing Writing Best Practices
  • Session Three: Marketing by Channel
  • Session Four: Content Strategy and Analytics

The recorded Boot Camp series includes all handout materials and comes in all three formats so you can conveniently share it with all staff whenever and how you choose. For complete program and faculty details, CLICK HERE >>

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Wayne State licenses novel treatment for neurological disorders


By David Schwartz
Published: February 10th, 2016

Wayne State University (WSU) and TRImaran Pharama Inc. have entered into a licensing agreement for a new class of drugs to treat post-traumatic stress disorders (PTSD), depression, ADHD and other neurological illnesses. continue reading »

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Ohio State start-up sells harmless, low-frequency sensors to NASA


By David Schwartz
Published: February 10th, 2016

An Ohio State University (OSU) start-up has developed low-cost, low-frequency 3D-imaging sensors, and is now sending the technology to the International Space Station. continue reading »

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Comings and goings


By David Schwartz
Published: February 10th, 2016

The Florida Institute for the Commercialization of Public Research has elected Rick Wassel to serve as chairman of the board of directors. Wassel is executive director of the strategy office at the Florida Division of Adventist Health System and managing director of IQ Orlando. He has been with Florida Hospital for 19 years and has fulfilled a number of leadership roles with a focus on new ventures, strategy and corporate development.

The board of the Florida Institute is comprised of business and academic leaders from across the state who are committed to growing Florida’s innovation economy. The group supports start-ups based on publicly funded research and helps bridge the funding gap for companies spinning out of Florida universities and research centers.

In addition to the Institute’s board position, Wassel will become chairman of the board of managers at the Florida Technology Seed Capital Fund, a subsidiary of the Florida Institute.

“This is a critical time in the development of Florida’s innovation economy, and Florida Institute board members contribute greatly, not only to this organization, but to the overall wellbeing of the state,” says vice chairman of the board David Day, who heads the tech transfer operations at the University of Florida. “Rick has been a valued member of the board since his appointment in 2014, and we look forward to his leadership.”

Source: PR Newswire

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U of Minnesota expands business-friendly licensing program with royalty-free option


By David Schwartz
Published: February 3rd, 2016

Since 2011, the University of Minnesota has been offering business friendly research and licensing agreements for its faculty-developed technologies through the Minnesota Innovation Partnerships (MN-IP) program. Now the U is expanding the program with more agreement terms for interested companies to choose from.

The program has helped forge over 175 research agreements and several technology licenses between the university and industry partners. MN-IP previously offered two options for companies looking to sponsor university innovations or license technologies: Option A allows companies to pre-pay a portion of a research agreement in exchange for an exclusive license to the resulting innovation; and Option B has no up-front fees and leads to a negotiated, royalty-bearing license.

Now the program will offer Option C, which allows companies to pre-pay 10% of a sponsored research agreement or $10,000, whichever is more, in exchange for a non-exclusive, fee-free global license to all technologies that result from the research. The company also can later negotiate an exclusive, royalty-bearing license if interested.

“After listening to business needs, we set to work designing a new option that would better fit certain industries, such as the petrochemical, semiconductor and software sectors,” says Brian Herman, PhD, vice president for research at the UMinn.

In all agreements made through MN-IP, the outside company still manages and directs all patenting and retains the rights, free of charge, to use intellectual property that results from the research. University-owned background IP is not necessarily included, but the school works closely with companies to cater to any requests. 

“MN-IP agreements have garnered a reputation for allowing companies to tap the university’s world-class research infrastructure, equipment and talent, while developing new technology that can grow our understanding of the world and help solve large societal issues,” Herman adds. “We are excited to see what new industry partnerships and research discoveries will grow from Option C.”

Source: Inquiry

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De-Risk Your University IP by Mobilizing a Community-based Evaluation Team


By David Schwartz
Published: February 3rd, 2016

The University of Utah has blazed a new trail for de-risking and moving technologies forward to the marketplace — and its process and strategies can help your TTO significantly improve its own vetting and de-risking efforts.

They have created a close-knit community of business leaders, funding experts, investors and strategic partners to assist in assessing IP. They work within an innovative framework called the “Commercialization Engine,” a three-stage evaluation process. Each stage is milestone-driven and completely customized for each invention.

On February 9th, you can learn all the details and specifics that underlie this unique and proven-effective model in this practical webinar: De-Risk Your University IP by Mobilizing a Community-based Evaluation Team.

For complete program and faculty details or to register, CLICK HERE.

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