Legal News

For a Price (Yet Undetermined), Desmarais Will Promise Not to Sue You

By Ashby Jones

Indeed, it’s hard to avert our eyes this morning from the unbelievable scenes coming out of the Pacific following the 8.9-magnitude earthquake that struck Japan Friday. (Click here for the WSJ story.)

But we’ve got a job to do, and that job is to talk law.

On that front, let’s move from one ocean to another. The intellectual property brokerage firm called Ocean Tomo will later this month host an auction, the likes of which we’ve never before come across.

Round Rock Research, the patent-licensing company owned by former Kirkland & Ellis superstar patent lawyer John Desmarais, will auction off four “covenants not to sue” at a New York auction on March 31. Click here for the American Lawyer’s Litigation Daily story.

“Each covenant provides a purchaser with the freedom to operate in a specific field,” the Ocean Tomo press release says. “At a time when IP considerations are becoming more important and more complex, a covenant may well be on its way to becoming one of the key instruments in an IP portfolio.”

Desmarais has also sold licenses for Round Rock’s 4,200-patent portfolio to a variety of big technology companies, including Apple, Nokia, Samsung, and Sony. So how will purchasing a “covenant” differ from purchasing a “license?”

Well, the two might not be all that different at all, Desmarais concede to the American Lawyer. He told the publication that the two might end up costing about the same.

“I think the benefit is that Round Rock  has many, many potential licensees, and [Ocean Tomo] offers a platform to reach out to a broad array of companies without the need for individual meetings and trips and and negotiation process,” Desmarais said. “So it’s just an attempt to expand the bandwidth of the companies that Round Rock reaches out to.”

Full post as published by Law Blog - WSJ.com on March 11, 2011 (boomark / email).