Altaba, the company formed following the sale of Yahoo’s core business, has transferred a small patent portfolio to an affilitate of IPNav offshoot Dominion Harbor. The deal appears to be the first sale from the stockpile of IP which was separated from Yahoo’s operating arm before that business was sold to Verizon in June for $4.5 billion. That portfolio of several thousand grants, known as Excalibur IP, was formed last year as the tech business looked to maximise the value form its non-core IP. Verizon declined to acquire the patent as part of its acquisition but recieved a non-exclusive , royalty fee license. Initial reports speculated that the assets might fetch as much as several billions, although in an 8K SEC filing in March. Yahoo gave them a fair value of 740million dollar. Houlihan Lokey, which acquired the IP advisory business Black Stone IP last year, has been handling the Excalibur sale.
About the Deal
As Patent values have remained depressed and buyers have particularly leery of picking up assets in many parts of the tech sector, a deal for all former Yahoo assets has failed to materialism. The monument deal suggests that the focus may now have shifted to selling the discerete package of patent rather than whole job lot. Eureka Database Solution, which, according to RPX, is an affiliated Dominion patent acquisition vehicle Monument Patent Holdings, acquired 23 patent and two applications from Excalibur IP in Mid-September. The majority of grants appear related to search with several dating back to late 1990s , the most recent one was granted in 2013.
The deal is further evidence that we are seeing the next iteration of the NPE market, with large portfolios of assets being broken up as they are sold. Intellectual ventures which has one of the largest portfolios in the US, has ramped up its patent sales in last year selling the asset to the like of Dominion Harbor and Equitable IP. As this blog reported by the IAM magazine many of those assets have quickly ended up being asserted in the court against the alleged infringer, suggesting that they become potentially far more threatening to possible licensee once they have transferred. In line with a vast majority of patent deals in the current market, the right concerned have typically changed hands in privateering style deal with some cash upfront and then seller receiving a portion of any monetization revenues.
Conclusion
Yahoo’ s March 8K made clear that while a sale of the whole Excalibur portfolio was the preferred option, alternative option remained on the table. ” The filing stated that the Fund may seek to separately sell certain of the Excalibur IP assets or to license Excalibur IP assets if the Board of Directors of Fund believes that doing so is in the best interest of Fund ‘s Stockholders.
According to the IV, its sales program has led to increased interest in taking a licensee to the giant’s NPE’s overall portfolio. If the monument deal is a sign of things to come for the Excalibur portfolio, the question is will the buyer, or a group of buyers, led middlemen like RPX or AST, emerge to acquire the assets and take them off the assertion market? With IPR’s, and district court Alice motion posing a real invalidation threat to many patents in the tech sector, potential infringer’s of former Yahoo assets and take them off on the court.
