美国专利商标局（USPTO）新局长——安德烈·扬库(Andrei Iancu)

01

印第安部落从知识产权主权豁免中获益

Indian tribes look to profit from IPR sovereign immunity

美国制药业巨头Allergan支付给美国土著部落数百万美元，通过将专利转让给部落，后者再将专利许可给Allergan的方式，使专利不再受美国专利审判和上诉委员会（The Patent Trial and Appeal Board，PTAB）的审查。此前弗罗里达大学率先利用了主权豁免以避免专利被无效。此次Allergan案件无疑成为主权豁免的一个重大转折，今后主权豁免能否成为专利持有人的辩护理由仍有待观察。

When the news broke in September that pharma giant Allergan was paying a Native American tribe millions of dollars to transfer patents and then license them back in the hope of protecting them from inter partes review, patents were once

again headline news in more than just the trade media. TheUniversity of Florida pioneered the use of sovereign immunity to ring fence patents from post issuance PTAB scrutiny, but the deals involving Allergan, a tech research entity called SRC Labs and the Saint Regis Mohawk tribe represented a major twist in the story. Whether it continues to be a defence used by patent owners remains to be seen, with some judges already highly critical of the practice, but the moves by Allergan and SRC underline the degree to which IPR has emerged as a highly divisive issue.

02

FTC/苹果公司起诉美国高通公司

FTC/Apple sue Qualcomm

2017年初，联邦贸易委员会（Federal Trade Commission，FTC）和苹果公司都对芯片制作商高通公司的专利许可做法发起攻击，2017年苹果公司与高通公司纠纷逐渐升级，在多个司法管辖区产生诉讼。

Most Qualcomm executives would presumably like to forget about the last 12 months. The start of year saw both the Federal Trade Commission andApple launch full frontal assaults on the chipmaker’s patent licensing practices. The

dispute with Apple has escalated through the course of 2017 as the two have faced off in numerous jurisdictions. Should the iPhone giant prevail then it would have a significant impact on one of the pioneersin wireless technology.

03

TC Heartland案改写专利诉讼地的法律规定

TC Heartland rewrites the law on venue

TC Heartland和Kraft Foods Group Brands的案件的判决增加了对原告提起诉讼的法院限制，效果立竿见影，德州东区法院新案件数量下降，特拉华州法院受理案件则呈上升趋势。此次最高法院的判决被认为是anti-patent的表现。

The pros and cons of bringing patent suits in the Eastern District of Texas didn’t feature in the oral arguments in TC Heartland v Kraft FoodsGroup Brands in the Supreme Court in March, but there was no doubt that it would be America’s busiest patent court that would feel the biggestimpact of any chnage to the status quo. The unanimous decision, which increased restrictions on where plaintiffs could bring a case,had an almost immediate impact: courtrooms in East Texas

saw the volume of new cases drop while others such as those in Delaware saw an uptick. Once again, itwas a decision from the Supreme Court which some IP owners viewed as distinctly anti-patent.

04

标准必要权利许可方向的改变

Major speech from DOJ antitrust chief signals change of

direction on SEP licensing

利用反托拉斯法来监督大型标准必要专利（SEP）组合的持有人的授权行为已成为一个重大挑战。2017年11月美国司法部反托拉斯部门主管Makan Delrahim 的讲话表明，美国政府正在准备改变对待标准必要权利的立场，将对资本市场产生巨大影响。

For owners of large standard essential patent (SEP) portfolios,the use of antitrust laws to police their licensing practices has become a majorchallenge. But a November speech by Makan Delrahim, the new head of the Department of Justice’s antitrust division, signalled that the USgovernment was preparing for a change of tack. “I worry that we as enforcers have strayed too far in the direction of accommodating the concernsof technology implementers who participate in

standard setting bodies, and perhaps risk undermining incentives for IP creators, who are entitled toan appropriate reward for developing break-through technologies,” Delrahim told an audience at a California law school. Any change in stance by USregulators could have a huge impact on the monetisation landscape.

05

Andrei Iancu被提名为美国专利商标局局长

Andrei Iancu is nominated for USPTO director

Andrei Iancu被提名为美国专利商标局局长。他的成功提名可能是因为他没有其他竞争者的复杂产业关系，如Google前专利总裁Michelle Lee。

As speculation mounted around other, more high-profile candidates, the typical response was “Andrei who?” when it emerged that the Irell &Manella managing partner was in the running for the top job at the USPTO. But that might well prove to have been the secret to his successfulnomination (and surely his smooth confirmation) as he comes with few of the industry ties that dogged other contenders and hindered support forprevious incumbent ex-Google patent chief

Michelle Lee in the eyes of some. If confirmed by the Senate (surely a matter of when, not if after asuccessful appearance in front of the Judiciary Committee), Iancu has a daunting to-do list ahead of him. His background, though, means that many are confident he will be up to the task.

06

高智公司停止购买专利并加速专利销售

Intellectual Ventures stops buying and steps up patent

sell-off

尽管高智公司（Intellectual Ventures）近年在专利市场地位有所削弱，但仍保持标志性地位。高智公司4月份宣布停止为第三支基金购买专利资产意义重大，除结束购买计划外，高智公司也大幅度提高了专利销售额。

Although it has been more muted in recent years, Intellectual Ventures’ iconic status in the patent market means that its April announcement thatit had stopped buying assets for its third patent fund was still hugely significant. As it invested its

first two funds, IV dominated the secondarymarket building a portfolio of rights stretching into the tens of thousands. As well as ending its buying programme, the giant **E has also rampedup its rate of sales including, in February, the disposal of a portfolio of around 4,000 former Kodak patents to Dominion Harbor.

07

BlackBerry外包智能手机专利许可业务

BlackBerry outsources its smartphone patent licensing

自其两位高级主管相继离职后，BlackBerry货币化活动受到影响。11月，BlackBerry将其智能手机专利许可业务大部分外包给Teletry，其他主要专利持有者也许会效仿这种做法。

This story began in September when we broke the news that BlackBerry’s licensing head Mark Kokes had left the business. Having been brought in tosignificantly ramp up the Canadian tech giant’s monetisation activities, his departure placed the company's ongoing commitment to monetisation insome doubt, especially when it was followed by another senior departure in October. Instead of bringing in a like-for-like replacement for Kokes,in November BlackBerry made the unusual move of effectively outsourcing a big chunk of its

smartphone patent licensing to Teletry, a new entityheaded by former Ericsson CIPO Kasim Alfalahi. If Alfalahi and his team quickly start to sign licensing deals we may see other major patent ownersfollow suit.

08

John Amster从RPX离职

John Amster leaves RPX

近年来，PRX一直努力摆脱作为专利持有公司所具有的诉讼风险。2月份独家发布会上，PRX首席执行官John Amster因其将公司私有化的提议与董事会意见不合而离职。PRX知识产权价值创造市场的地位离不开John Amster的努力。

It’s fair to say that RPX has had a bumpy ride in recent years as it has struggled to grow beyond its foundations of mitigating litigation riskfor patent owning companies. In 2016 activist investor Mangrove Partners wrote a letter to the board of directors that was sharply critical ofmanagement and demanded changes to be made. It was still a shock however when, in another IAM exclusive in February, it emerged that CEO JohnAmster had left the company following a

disagreement with the board over his attempts to take RPX private. Amster was the only co-founder left atthe business and had played perhaps the key role in making RPX such a force in the IP value creation market.

09

Provenance购买大量Nokia投资组合

Provenance buys massive Nokia portfolio Nokia

长期以来一直是专利的积极卖家，其中很多资产最终都由**E掌控，但今年Nokia将12000项专利转让给了新型货币化组织Provenance Asset Group，该组织计划为运营公司提供用于防御目的的高质量专利，剩余的低质量专利将被出售。这为专利持有者提供了一种不出售给**E的资产处置方式。

Nokia has been an active seller of patents for some time as it has looked to rationalise its portfolio. Many of the assets subsequently divestedhave ended up in the hands of **Es,but this year the Finnish telecoms giant took a different

approach, transferring around 12,000 rights - many ofwhich the company had acquired through its Alcatel-Lucent acquisition - to Provenance Asset Group, a new monetisation vehicle headed by former ASThead and RPX executive Dan

McCurdy and ex-Kodak IP executive Tim Lynch. Their plan is to offer operating companies rights to very high qualitypatents for defensive purposes, while the remaining, lower quality assets will ultimately be sold off. Whether it succeeds or not it does at leastgive patent owners a way of disposing of assets without selling to **Es.

10

大企业知识产权重要人事变动

Big corporate moves

2017年企业知识产权价值创造重要人事变动如下：最为著名的是从Google跳槽到Facebook的Allen Lo，如果在其新岗位中采取曾经在Google使用的价值创造举措，结果将是十分值得期待的；黑莓公司负责知识产权、许可和标准的副总裁Mark Kokes离职，也为该公司带来了改变；Brian Hinman，Philips的首席知识产权官从公司离职。

It was a year in which some of the biggest names in corporate IP value creation were on the move. Perhaps the biggest was Allen Lo who, as weexclusively revealed in August, jumped ship from the top patent job at Google to take the IP reins at Facebook. At the search giant Lo oversaw aspate of value creation initiatives and so will be interesting to follow if takes the same kind of innovative approaches in his new role. BlackBerry also saw a change at the top as Mark Kokes, the company’s senior vice president of IP, licensing and standards, suddenly left thebusiness over the summer (in another exclusive for the IAM blog). Finally, 2017 also saw Brian Hinman step down as the CIPO at Philips, one of the premier corporate IP jobs. Although Philips is a European company, the Hinman move makes the list here because he is an American and has decided tohead back home. Where he ends up may well be one of the big stories of 2018.

来源：IAM，中科院知识产权信息

编辑：中国知识产权律师网（www.ciplawyer.cn）