Toshiba is turning to patent sales – and, it would seem, NPEs – to create value amid financial troubles

Japanese corporates have historically eschewed patent monetisation; a deep-seated ‘not invented here’ syndrome and a fear of feeding ‘trolls’, combining to negate most motivations for selling IP assets.

But attitudes change – particularly when the economic going is tougher than ever.

Among other woes, Toshiba is currently riding the fallout from its multi-billion-dollar accounting scandal, as well as massive losses at some of its business units. Asset sales are one strategic option that the company is pursuing to try to add to its bottom line at a time when it is haemorrhaging value in more general terms.

To this end, Toshiba is widely reported to be seeking buyers for part of its semiconductor business. The unit – which is the world’s second-largest producer of NAND flash memory after Samsung Electronics – has already been linked with names such as US chipmakers Micron and Western Digital, as well as Korea’s SK Hynix. Taiwan’s Foxconn has apparently explored a potential joint bid either with Hynix or its compatriot TSMC.

While that saga is ongoing, USPTO records seem to suggest that Microsoft has beaten those prospective buyers to it – at least with regards to a handful of Toshiba’s semiconductor-relevant patents. As exclusively reported by IAM, an assignment executed on October 20 last year saw Toshiba transfer a portfolio including 96 US assets to Microsoft Technology Licensing LLC, the US company’s IP management and monetisation arm. A glance through the rights concerned suggests that they relate to the design, manufacture and packaging of semiconductor devices.

This is not the only transfer of patents to a third party that Toshiba has performed in recent months. In November last year, it assigned a portfolio including 15 granted US patents to an entity named North Plate Semiconductor LLC. All of the transferred assets appear to be relevant to semiconductor manufacturing and packaging.

North Plate Semiconductor is a Delaware corporation based in suburban Michigan, and doesn’t appear to have any operating business associated with it. According to court documents seen by IAM, it filed suit against Californian chipmaker IXYS in the Eastern District of Michigan on April 17, alleging infringement of six of the patents it acquired from Toshiba.

It cannot be determined at this stage if Toshiba has simply sold these patents on to North Plate, or if it maintains any ongoing economic interest in them and is therefore due a cut of any revenues raised as a result of the assertion against IXYS. But what we can say for sure is that we are seeing a new approach to IP monetisation from Toshiba – one that has been borne out of financial turmoil as much as anything else.

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