The emerging public IP company space took an an unexpectedly positive turn last week.
Rockstar Consortium, with a portfolio of more than 4,000 communications patents, has struck a deal with a tiny public patent monetization company, Spherix (SPEX), that is certain to increase the already growing interest in public IP-centric companies, or PIPCOs.
Spherix, with a market cap of only $5M, said in an announcement that it has entered into a deal with Rockstar, one of the world’s leading patent holders, to acquire a suite of patents. The announcement did not specify the patents being acquired, or the number, nor did it disclose the terms of the transaction. The press release did state that Rockstar has agreed to become a shareholder in Spherix, and that Spherix intends to bring its first enforcement action on the Rockstar portfolio within 30-60 days.
Rockstar has said that it has been actively licensing its portfolio, but, to date, has not filed any suits. It could be using Spherix as a privateer, or third-party, to do its nasty bidding. However, a successful patent monetization executive close to IP CloseUp told me that would be unlikely, “because without shell companies obscuring ownership, as some patent holders have been known to do, the source of the IP rights in this case is fairly clear.” Rockstar may be merely testing the waters to see how public ownership will affect its portfolio value and licensing potential, and if access to the capital markets can make a difference.
IP CloseUp readers will recall that Rockstar bought most of the patent portfolio from bankrupt Canadian telecom company Nortel for $4.5 billion in 2011. The transaction constitutes what is probably the most expensive patent acquisition ever. The genesis of it was thought to be a collective move against technology rival and Android champion Google. Rockstar is owned by Apple, Microsoft, Ericsson, Blackberry, Sony and EMC.
It’s important to remember that Apple, with a $2.6 billion investment, owns some 58% of Rockstar and, presumably, had some input in the Spherix deal. There may be something on Apple’s agenda that makes the Spherix deal particularly attractive. Time will tell us if this is in fact the case. A few weeks ago in IP CloseUp I wrote about an IEEE Spectrum story that showed how Apple was involved in acquiring a Mitisubishi-originated patent that was eventually turned over to an NPE, presumably more for competitive leverage than cash.
The IAM blog wrote that “On the face of it, then, what we have here is a classic privateering arrangement; but it is possible there is more to it than that. As a Spherix shareholder it is not only assertions of its own patents that Rockstar will benefit from, but also of other portfolios Spherix owns and may acquire in the future.”
IAM also reported that Anthony Hayes is expected to become CEO next month. Previously a partner at law firm Nelson Mullins Riley & Scarborough, Hayes “was one of the people behind JaNSOME IP Management, a New York-based IP advisory and monetization outfit launching a $30 fund that would invest ‘in global opportunities in the patent market’. Whether his move to Spherix is fund-related, or whether Hayes has cut his links with JaNSOME is not clear.”
Spherix announced a restructuring in December 2012 when it effectively became an IP monetization company. In Seeking Alpha, Adam Gill reports that “[Spherix] had no patents to speak of before this Rockstar deal, but its wholly owned subsidiary Nuta is about to merge with North-South Holdings, which brings $2 million in cash and a portfolio of 222 patents acquired from Harris Corporation (HRS), another company known to have a robust patent portfolio.” Details on that deal can be found here.
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It will be interesting to see if other large patent holders, including operating companies, will seek to test the patent licensing market the via the public equity one.
There is nothing to stop a public company that owns IP rights from taking an equity position in another one, putting it in a better position to monetize its IP rights. In fact, this may be a more efficient and financially rewarding for shareholders.
If I am not mistaken, a 5% or greater stake in a public company is subject to a 13D filing with the S.E.C., disclosing the owner. It could be Rockstar directly or a representative, or Rockstar could own its stake through several entities. We’ll have to wait and see how this plays out.
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