In a major deal announced last week Intellectual Ventures (IV) will transfer over 1,000 patent families that had originally been assigned to Kodak to Dominion Harbor. The sale represents probably the largest divestiture of patents in IV’s history – and is reportedly the fourth deal struck between the two entities, following last November’s assignment of wireless networking assets.
The assets being purchased by Dominion Harbor’s Monument Peak Ventures (MPV) subsidiary are relevant across a wide range of technologies, including camera architecture, sensors, data storage and management, image manipulation and visual display, among others. In terms of jurisdictional coverage, the portfolio contains family members across multiple Asian and European jurisdictions, as well as the United States.
Quoted in a press release, Dominion Harbor CEO David Pridham said that the patent monetisation and consulting firm has “developed a comprehensive global plan to commercialise these innovations into ground-breaking new products and services” – suggesting that straight-up monetisation through licensing, assertion and onward sale is not its only line of strategic thinking. “Besides our large global network of licensees and strategic partners, we have unique channels through which we can put the Kodak innovations to work — including our Monument IP Bank subsidiary, the world’s first IP bank for start-ups.” Dominion Harbor established Monument IP Bank in May 2015 with the objective of buying patents that can be seeded in high-tech start-ups in need of IP assets.
The patents that are making their way to Dominion Harbor are among those that IV acquired from then-bankrupt Kodak in a $525 million deal back in December 2012.
That transaction saw IV team up with patent risk management firm RPX to take over the photography and imaging veteran’s portfolio. Twelve operating companies – Apple, Google, BlackBerry, Microsoft, Facebook, Amazon, Samsung, Adobe, Fujifilm, Huawei, HTC and Shutterfly – also provided some of the cash in return for a licence to the patents.
The eventual sale amount came in significantly lower than the multi-billion dollar estimates that some commentators had offered in the run-up to the deal. Nevertheless, it was close enough to the bottom-line figure that Kodak had to raise in order to secure financing that could allow it to emerge from bankruptcy – and so in that regard, the patents could be said to have done their job.
Predictably, both Dominion Harbor and IV remain tight-lipped over the money that changed hands for this latest assignment of the Kodak assets. But what this saga does show is that high-quality patents can continue to create value for their holders time and again throughout their lifecycle.