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Spy vs Spy: How a Nice IP Lawyer Like Me Wound Up Dealing With Guys Like These

As an IP attorney, Tom Ewing’s days are typically pretty hectic. But this last week, things went nuts.  Of late, this is related to the continuing investigation around who is this company called IP Checkups and is it who it says it is? But for Tom, it was just the latest chapter in a Spy vs Spy saga that boggles the mind. Here’s his story. COMMENTARY.

I’ve been caught up in some kind of a convoluted Spy vs Spy escapade in the past few weeks and months. To begin with, I’ll open with my own disclosure: I sell a report to companies who want to know what patents Intellectual Ventures owns. That’s one of the world’s largest patent holders, but it’s gone to great lengths to hide its IP holdings through more than 1,200 shell companies.  So obviously I wanted to know more about IP Checkups was planning to release for free.

Earlier this year, The Stanford Technology Law Review published an article about patent mass aggregators that I wrote with professor Robin Feldman of the University of California Hastings College of the Law.  The article featured Intellectual Ventures and leans heavily on a report I’ve been selling for five years about IV’s patent holdings.

Now, ever since Stanford published the article in January, I’ve been getting a ton of email from people demanding — and I mean demanding — that I just give them my report free of charge and all rights to it. They want to own it.

Sometimes they ask politely. Sometimes they don’t. But just last week, the volume amped up and I received four emails with demands like these.

Why the urgency? Why the demands? I have a hunch. I notice that these strangers know an awful lot about my report, even though I license it with the tightest confidentiality clauses imaginable. But these people describe my report in great detail. They’re not customers. I don’t know them. What gives?

One recent emailer told me that she could put the report in “a much more valuable format.”  How did she even know what format my report is in?

My website just says it’s formatted as a 2,500 page report and only provides the table of contents. So I have to assume someone gave her the report. But who?

That question applies to all of these people. I don’t know but it’s easy to guess.  Take Intellectual Ventures, just as an example.  Lots of people have reportedly signed IV’s infamous non-disclosure agreement, rumored to be crazy tight.

I haven’t seen IV’s non-disclosure agreement, but one common term in non-disclosure agreements is a release from the confidentiality obligations if the confidential information becomes public. And here’s where it starts to make sense.

Consider. If my IV report becomes open to the public, more than 1,000 firms and individuals — including Intellectual Ventures and at least a half dozen governments — would likely be released from their confidentiality obligations.

And then there are IV’s happy, or maybe not so happy, investors.  I’ve never been sure if IV’s investor base — which includes tech companies, universities, private equity investors and others who’ve sunk big bucks into this operation — are even allowed to see what the company actually owns.

The fact that IV has sued or is suing some of its investors for patent infringement suggests that the investors don’t get a peek.

Oh, and then there are people who used to work at IV who no longer do.  Some of them have gone on to bigger and better things, like RPX CEO John Amster. Others might not be as fortunate. All of them would likely be bound by confidentiality agreements.

So, I wonder how many of these 1,200 or so parties — show of hands, please — want my report released to the public. And how many don’t?  Maybe I should set up a website and allow all of you to vote.

After all, I know exactly who you are, so it would be easy to keep the voting honest.

Five years ago I released the first version of my report on IV’s patent holdings.  I didn’t write the report out of any ill feelings towards IV.  I wrote the report because I was tired of hearing people say that IV’s portfolio and 1,200 or more oddly-named shell companies was so well hidden that no one could find out anything about it.

A common line repeated in a chant-like cadence went something like:  “Don’t bother looking; it can’t be found!”  But many of the people repeating this line weren’t particularly knowledgeable about patents to begin with.  One day I heard the line one too many times and decided to prove that the world wasn’t flat after all. That’s how I started my quest.

After some digging, IV’s portfolio unraveled like an old wool sweater. I’ve been a registered patent attorney for 22 years, so I know a few things about patents.  Things I discovered in one place synergistically coalesced with things I had discovered in other places, which led me to find even more patent transactions.  The process eventually became sort of fun like solving a giant puzzle.

Over the last five years, I’ve probably put in at least 1,000 hours tracking down IV’s patent holdings.  This includes the hours I spent providing background information about IV to dozens of reporters like National Public Radio for its “When Patents Attack” program. Other folks gave them the famous anti-IV quotes.

I just described IV to the NPR team.

Here’s the bottom line. Society’s interests are not well served by a system where owners hide patents — in plain sight or otherwise.

But that’s what the current law allows. In fact it embraces it.  IV is likely one of the world’s top 5 patent holders — it’s got 40,000 plus patents spread across multiple portfolios — but there are precious few patents that actually bear its name.

The present system serves the interests of large companies but it harms them, too. And it provides absolutely no benefits for small companies.  I would guess that just about everyone, large and small, is looking for leadership that is largely absent.

But I am not a patent zealot.  I long since decided that writ large, most patent disputes are not about good guys versus bad guys. It’s just about guys — in the gender-free meaning of the word.

So, to be clear, if someone wants to buy all rights to the IV report that I have written, have at it. I have no problems selling it outright for cash.  The new owner can do with it whatever they wish.  If someone wants to partner with me for selling the report, I have no problems agreeing to a non-exclusive distribution contract.  In fact, I would like to see the report more widely distributed, so I will likely soon be changing the terms by which the report is licensed.

But for now, however, let me make this offer – any company that has been sued by Intellectual Ventures can obtain a single copy of the report at no charge provided they sign the license agreement.  Fair enough?

And if someone wants to tell me why so many people have been demanding my report lately, I’m all ears. Email me at Tom@aNewdomain.net.

Feldman Giants Among Us

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