XILINX, Inc. v. Intellectual Ventures LLC (N.D. Cal. 2011)
XILINX is a billion dollar company that manufactures programmable memory chips. In February 2011, XILINX filed a declaratory judgment lawsuit against Intellectual Ventures and its subsidiary corporations – asking the Northern District of California court to rule that it could not be liable for infringing a set of fifteen (15) intellectual ventures patents. The case will be interesting to watch, although it will most likely end with a confidential license well prior to a judgment on the merits.
Intellectual Ventures is important because they are now one of the Top-Five owners of US Patents. Although the company has played extensive games in an attempt to stifle the utility of the patent ownership recording system, it has been reported to hold at least 30,000 patents. Intellectual Ventures is quickly becoming more aggressive at packaging and licensing its broad patent portfolio.
One interesting aspect of the case is each party’s choice of litigation counsel. XILINX has hired Jones Day, which is one of the largest law firms in the world. Intellectual Ventures has hired John Desmarais and his small upstart firm of patent litigators. (Desmarais was formerly a top litigator at Kirkland & Ellis). IV’s local counsel is Bradford Black who also has his own two-person law firm. Over the past two years, the largest law firms shed about 10% of their lawyers (not even counting the complete collapse of Howrey LLP). During that time, Desmarais & Black left big-law and founded their own small firms focused on providing very high quality services and costs naturally controlled by a limited overhead and limited number of lawyers available. This trend appears likely to continue over the next several years as the market for top-quality lawyers resets itself.
Another interesting aspect of the case is Intellectual Ventures recent filing that lists its major investors as required by Fed. R. Civ. Pro. R. 71. (File Attachment: Financial Interest in IV.pdf (104 KB)) These include:
Technology Companies – For the most part, these tech companies appear to have invested in intellectual ventures as part of a licensing agreement.
- American Express
- Cisco Systems
- Detelle Relay KG
- eBay, Inc.
- OC Applications Research (merged with IV)
- Sony Corp.
- TR Technologies
- Xilinx (yes, the plaintiff is also an investor)
Universities – It appears that the university ownership is not directly related to any transfer of patent rights from the Universities to IV.
- Brown University
- Cornell University
- Grinnell College
- Mayo Clinic
- Northwestern University
- Stanford University
- University of Minnesota
- University of Pennsylvania
- University of Southern California
- University of Texas
- Peter Detkin (IV Co-Founder and Vice-Chairman)
- Eric Dobkin (Goldman Sachs; IV Board of Advisors)
- Richard Fields
- Gregory Gorder (IV Co-Founder and Vice-Chairman)
- Paul Gould
- Adam Holiber (IV Licensing Executive)
- Edward Jung (IV Co-Founder and CTO)
- Nathan Myhrvold (IV Co-Founder and CEO)
- Nancy Peretsman (leading Investment Banker)
- Allen SBH (Updated: Apparently Not Paul Allen)
- Bush Foundation
- Charles River Ventures
- Commonfund Capital Venture Partners
- Dore Capital
- Flag Capital
- Flora Family Foundation
- Hewlett Foundation
- Howard Hughes Medical Institute
- Legacy Ventures
- McKinsey and Co.
- Next Generation Partners
- Noregin Assets
- Reading Hospital
- Rockefeller Foundation
- Roldan Block NY
- Seqouia Holdings
- Skillman Foundation
- Sohn Partners
- Taichi Holdings
- TIFF Private Equity
- White Plaza Group