DOJ Clears University Technology Licensing Program, One Member of Which Separately Launches Litigation over “Cobots”

  • February 14, 2021
  • Category: Patent Market, Patent Watch

On January 13, 2021, the US Department of Justice (DOJ) issued a favorable business review letter at the request of the nascent University Technology Licensing Program (UTLP), indicating that its review has concluded that the proposed UTLP is “unlikely to harm competition” and that the DOJ has “no present intention to challenge the program”. Two days later, the 15 members announced the launch of UTLP's licensing program, outlining the technological areas in which it plans to initially pool patent assets: autonomous vehicles, Internet of Things (IoT), and “Big Data”.  A couple of weeks later, one of the 15 founding UTLP members launched what appears to be the university’s first US litigation campaign in roughly two decades.

The initial UTLP members are Brown, Caltech, Columbia, Cornell, Harvard, the University of Illinois, Michigan, Northwestern, Penn, Princeton, SUNY Binghamton, UC Berkeley, UCLA, the University of Southern California, and Yale, organized through a Delaware entity (University Technology Licensing Program LLC) formed on January 15, 2021. UTLP characterizes the purpose of joint licensing action as offering “innovators more convenient and efficient access to a subset of the universities’ inventions, enabling new and valuable products to be brought to market” and as “bring[ing] attention to the many valuable inventions owned by the universities and allows for widespread dissemination of their patented technology, encouraging innovation, and improvements”.

In its request for DOJ business review, UTLP indicated that it will initially focus on “three portfolio areas in which there is believed to be demand for innovations that Members have developed: (i) autonomous vehicles (e.g., optical components, sensor hardware and software, cybersecurity); (ii) connectivity or ‘Internet of Things’ (e.g., millimeter-wave communication, power management, signal processing, location tracking); and (iii) ‘Big Data’ (i.e., technology for large-scale data storage, transmission, and analysis)”. Expansion may occur in the future, “depending on industry response to these programs”, according to UTLP, which suggests that it may grow to “license patent portfolios in other areas, including electronics fabrication, applied electronics, batteries, photovoltaics, and robotics”.

Northwestern University has raced out of the litigation blocks in that last category, filing suit against ABB (1:21-cv-00150), Fanuc (1:21-cv-00596), Midea Group (KUKA, Reis Robotics USA (d/b/a KUKA Industries)) (1:21-cv-00599), Mitsubishi Electric (1:21-cv-00607), Teradyne (Universal Robots) (1:21-cv-00149), and Yaskawa Electric (1:21-cv-00603) over three patents generally related to an “intelligent assist system” with a “modular architecture” (6,928,336) and certain components of such a system, including a “multi-function hub” (6,907,317) and a “configuration system” (7,120,508). The ABB and Universal Robots suits were filed in the District of Delaware; the others, in the Northern District of Illinois.

The defendants are accused of infringement over the provision of “industrial robots intended to be used in collaboration with humans” and/or related controllers and multi-function hubs. In its complaints, Northwestern emphasizes the credentials, activities, and awards of engineering professors and named inventors of the patents-in-suit Michael A. Peshkin and J. Edward Colgate, characterized as “inventors on a broad class of intelligent assist devices known as collaborative robots or ‘cobots’”—i.e., “programmable robotic manipulators and assist devices that can safely interact with human operators in a shared workspace”.

In 2001, the named inventors (Colgate, Peshkin, and several others) assigned the patents-in-suit to Cobotics, described by its former CEO Paul F. Decker (now a “team member” with private equity firm CM Acquisitions) as “a venture backed start-up in the field of human-interactive robotics used in the final assembly of autos”. Cobotics was formed as “Toboc, Inc.” in Illinois in March 1997 before undergoing several name changes before its sale to Stanley Black & Decker (Stanley Works at the time) in 2002. Stanley Black & Decker assigned the patents to Northwestern University in a 2017 transfer covering nine assets.

Currently available USPTO records do not identify the assignment of any rights to UTLP. In its request for business review, UTLP explains several aspects of its planned licensing model in support of the contention that the program will not raise competition concerns, including that “Members will grant UTLP an exclusive license—rather than retaining the ability to license patents independently—so the program can serve its pro-competitive goals (i.e., generating efficiencies from centralized licensing expertise and administration, and curtailing free-riding) while remaining economically viable”.

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