This article appeared in the December 2017 issue of Technology Transfer Tactics. Click here for a free sample issue or click here to subscribe.

A deal between the University of Tennessee Research Foundation (UTRF) and a patent aggregator illustrates one possible outcome when a university asserts patents. Rather than settling an infringement matter through litigation, a defensive patent aggregator may step in and negotiate a deal to purchase the patents and take the case out of the courtroom.

It also is possible to proactively approach an aggregator with a portfolio you want to offer to a broad range of potential licensees.

RPX Corporation, a defensive patent aggregator, recently announced that it has completed a patent rights agreement with UTRF, a non-profit organization promoting the commercialization of University of Tennessee’s intellectual property. The deal was struck after the Foundation had initiated a patent litigation campaign earlier in 2017, along with co-plaintiff Saint Matthew Research. They asserted five patents related to database storage and parallel processing developed by professors and graduate students at The University of Tennessee.

Under the terms of the agreement, UTRF and Saint Matthew Research received a payment from RPX and granted to RPX certain rights in a subset of UTRF’s patent portfolio. RPX and UTRF declined to disclose the size of the payment or other terms of the deal.

RPX, in business for 10 years, had as of June 30, 2017 invested over $2 billion to acquire more than 18,000 U.S. and international patent assets and rights on behalf of over 320 clients in eight key sectors: automotive, consumer electronics and PCs, E-commerce and software, financial services, media content and distribution, mobile communications and devices, networking, and semiconductors.

The RPX model has been based on a subscription service in which clients pay a set amount of money each year, with RPX’s portfolio protecting them from infringement litigation. Potentially problematic patents are essentially taken off the market by RPX, which adds relevant patents to its portfolio based on the needs of its clients, says Senior Vice President Neal Rubin.

“We use our clients’ dollars to buy patents that were highly relative to them and which might be problematic to them and then broadly license all that technology to our membership,” he explains. “It’s very much a defensive service, with the goal of bringing licensing discussions out of the courtroom and into the boardroom.

RPX steps in when clients are sued

RPX also acts to defend its clients against patent assertions, and that is exactly how the UTRF deal came to be.

“The second part of our business is that when there is litigation against more than one of our clients, we are able to step in and negotiate with the plaintiffs for a broad portfolio-wide license and try to reduce the transaction costs to give a broad license to our clients, the defendants in the case,” Rubin says. “We have done deals in the past, and now with UTRF, where universities have brought suit against technology companies and we jump in because a big portion of [those companies] are our clients. We try to acquire the patents and broadly license them.”

A defensive aggregator offers universities the benefit of dealing with one company rather than litigating or negotiating with each one using or wishing to use the patented technology, Rubin explains. Universities have approached RPX with portfolios to offer in particular industries, allowing licensing negotiations without litigation, he says.

“We can speak on behalf of a number of companies, so if you think everyone in the semiconductor space should be interested in your portfolio, you can come to us and we can offer that portfolio to a number of clients rather than you having to approach them separately,” he says. “If your goal is broad dissemination, a defensive aggregator like RPX offers a way to reach that goal.”

Contact Jen Costa, RPX Marketing Director, at 415-852-3180 or jcosta@rpxcorp.com.