Special-purpose vehicles, or SPVs, are corporate entities formed to hold and manage specific assets. Frequently, SPVs have independent directors who administer and manage the assets and associated cash flows. Because they are separate legal entities, SPVs can insulate a sponsoring company from liabilities while still allowing it to capture returns. This makes SPVs an attractive option for businesses seeking to isolate financial risk.
Some companies create and use SPVs to monetize their patent portfolios. SPVs allow them to use their patent assets to raise capital through licensing, litigation, collateralization, securitizing cash flows, or even sale, without having to be directly involved in the monetization efforts. In addition to tax advantages and bankruptcy protection, this can be advantageous for companies that are reluctant to enforce their patents against competitors and can help insulate them from discovery and countersuits. Special care must be taken in creating the SPV and defining the rights it has to the patents to be monetized: the degree of protection and insulation afforded correlates inversely with the amount of control the sponsor retains over enforcement, and it is essential that the SPV have standing to litigate the patents.
This article explores some considerations that arise in setting up an SPV and using it to monetize a patent portfolio, with a primary focus on United States law. But there is no one-size-fits-all approach. Every company and every situation is different, and both the corporate structure of the SPV and the terms of the relevant agreements will vary from case to case. As a global law firm with a patent litigation and counseling practice that is frequently counted as among the best in the world, Quinn Emanuel partners with expert organizations to construct patent-monetization strategies that maximize value and minimize risk for our clients. SPVs often play a role in those strategies.
I. Why Create a Special Purpose Vehicle?
The reasons for creating an SPV range from the practical to the strategic. Many companies desire to generate revenue from their patent portfolios, but want to avoid news stories that they are waging a patent war against their top competitors. Some want to be able to raise outside funds to finance a patent-assertion campaign without commingling funds with the company’s primary business. Some want to limit costs associated with monetization -- such as extensive discovery, which would be increased if they were a party to litigation. Others want to be able to join with other like-minded companies to form a broader portfolio for assertion, and need a separate entity to do it.
This list is by no means exhaustive, but some common reasons for forming an SPV include:
- Distancing the Sponsor from Enforcement Activity. An SPV can be a wholly owned subsidiary of the sponsoring company, but it need not be. SPVs are often structured as completely separate legal entities from the sponsoring company. Such a structure may allow the sponsoring company to maintain some level of ignorance of (and powerlessness over) the SPV’s patent-enforcement activities, including those targeting the sponsor’s competitors. There is usually little advantage in threatening a countersuit against the sponsor when the enforcement is undertaken by a completely separate company under different management and outside the sponsor’s direct control. But whether the sponsoring company can truly avoid resulting litigation depends on the extent of the rights delegated to the SPV. This is discussed in greater detail below.
- Cost Savings. Using an SPV can lower litigation costs. If a lawsuit is brought as part of the monetization effort, the sponsoring company should be at most a third party to the lawsuit, likely insulating it from much of the discovery costs that parties incur. A defendant may well seek some discovery from the sponsor, such as depositions of the named inventors who still reside at the company, but the costs the sponsor will incur as a non-party are almost always much less than those faced by a party. Many typical types of party discovery will not be sought from a third-party sponsoring company, such as its financial information or its knowledge of the defendant. It is also easier to resist requested discovery as a third party, as it is likely less relevant to the lawsuit and courts are more protective of third parties. Foreign companies may have even less of a burden, as it is generally more difficult to obtain discovery from a foreign third party that is not subject to the U.S. court’s jurisdiction. In some jurisdictions, including Germany, suing as a national SPV can avoid having to provide a security for defendants’ litigation costs, unlike foreign plaintiffs.
- Tax Advantages. Many SPVs are formed in jurisdictions such as the Cayman Islands and Ireland for tax reasons. An SPV structure allows flexibility in how funds can be acquired and spent for ongoing monetization operations without necessarily incurring United States tax liability. For example, if patent enforcement results in a settlement that includes a direct payment from an accused infringer’s foreign corporate parent to the SPV, in some circumstances no taxes would be owed to the U.S. government as long as the funds do not enter the United States. Similar advantages can be achieved if the sponsoring company also has a foreign parent, simply for purposes of setting up and funding the SPV. When setting up an SPV, tax counsel should be consulted.
- Financial Separation. When patent assets are transferred to an SPV, the patents can be removed from the sponsoring company’s balance sheet along with any related liabilities and equity. Particularly if the SPV is to raise outside funds using the patent assets as collateral, it may make that separation more desirable (especially for public companies). In the event that the patent enforcement campaign is unsuccessful, financial separation can also shield the sponsoring company from associated losses, fee shifting, or even insolvency. Moreover, the liability of the SPV’s shareholders may be limited to any investments they make in the company.
- Bankruptcy Remoteness. In the event that the sponsoring company becomes bankrupt, if the SPV is a separate legal entity it could shield the sponsor’s patent portfolio from creditors and allow the monetization efforts to continue earning revenue notwithstanding the bankruptcy. The specific requirements to ensure that the transfer of patent rights is a “true sale” for purposes of bankruptcy law is beyond the scope of this article, but should be considered at the outset when structuring an SPV. The same is true in the reverse: insolvency of the SPV should not impact the sponsor.
There are, however, some tradeoffs when using an SPV to monetize patents instead of asserting them in the original owner’s name. For example:
- Lost Profits Damages and Injunctions Likely Unavailable. Because an SPV does not typically practice the claimed inventions, lost-profits damages for patent infringement, which may be higher than a reasonable royalty, are likely unavailable. Injunction against an accused infringer may also be difficult to obtain in the U.S. even if an injunction might otherwise have been available to the sponsor, given the challenge in demonstrating irreparable harm. This exerts downward pressure on a potential damages award and settlement number.
- International Trade Commission Investigations More Challenging. Use of an SPV can also make it more difficult to seek relief in the U.S. International Trade Commission. Although no damages are available in a Section 337 investigation, the remedy of an exclusion order barring the importation of products into the United States can provide substantial leverage. Because Section 337 investigations require the patent owner to demonstrate the establishment of a “domestic industry,” SPVs that do not practice the invention they are asserting can face a challenge when showing that the patent owner practices the invention and has made substantial related economic investment in the United States. In some cases, though, U.S.-based patent licensing activities have been held to be a sufficient exploitation of intellectual property to satisfy the domestic industry requirement, as long as the investment in such activity is sufficiently “substantial.”
- The Company No Longer Controls the Patents. Because the SPV is a separate entity that may not be subject to the sponsoring company’s control, the company loses the ability to assert the patents in its own name, whether offensively or as a counterclaim in litigation. The company also no longer benefits from them as a deterrent against competitors in licensing negotiations. Other consequences from the transfer may include losing the ability to oversee and control litigation and settlement, identify targets, or reacquire the patents.
II. U.S. Legal Background and Strategic Considerations
Although some companies wishing to monetize a portfolio prefer to assign the subject patents to an SPV outright, others may wish to retain the ability to control the activities of the SPV and the disposition of the patents. A fundamental concern in structuring the SPV is this trade-off between retaining control and having standing to sue infringers in the SPV’s own name without joining the sponsoring company as a co-plaintiff.
The right to sue for infringement is generally transferred in one of two ways: an assignment, in which all right, title and interest in the subject patents are conveyed, or an exclusive license. A patent gives the “patentee” the right to exclude others from making, using, selling, offering to sell and importing a patented invention within or into the United States. The term “patentee” does not just mean the patent’s owner, but can also mean the assignee of “all substantial rights” in the patent. The term, however, does not extend to non-exclusive licensees. Whether licensee, licensor, both, or neither have the right to sue for infringement is an issue of Article III standing.
When the patent has been assigned with no restrictions, the transferee has standing to sue in its own name as with any subsequent holder of a property right. In the case of an exclusive license, whether the licensee has the right to sue infringers on its own (i.e., without joining the patent owner) depends on the nature and scope of the “bundle of rights” transferred with the license. Not all of those “bundles” include rights sufficient that the licensee can sue for infringement in its own name. Where an exclusive licensee lacks sufficient rights to sue in its own name but still maintains sufficient rights to bring suit, courts typically require joinder of the patent owner that licensed the patents in the first instance. Where the plaintiff is merely a nonexclusive licensee, however, courts have dismissed cases for lack of standing. This is true both where the plaintiff had transferred away most of its patent rights but retained a nonexclusive license, and where the plaintiff was a third party that obtained a nonexclusive license from the patentee.
Generally, for a licensee to have obtained “all substantial rights” such that it can sue in its own name without joinder of the patent owner requires conveyance of all exclusionary rights under the patent and other important rights, such as the right to control disposition of those rights and the right to enforce the patent. Courts consider the following factors, among others, in determining whether “all substantial rights” were conferred:
- the nature and scope of the right to bring suit;
- the exclusive right to make, use, and sell products or services under the patent;
- the scope of the licensee’s right to sublicense;
- the reversionary rights to the licensor following termination or expiration of the license;
- the right of the licensor to receive a portion of the proceeds from litigating or licensing the patent;
- the duration of the license rights;
- the ability of the licensor to supervise and control the licensee's activities;
- the obligation of the licensor to continue paying maintenance fees; and
- any limits on the licensee's right to assign its interests in the patent.
These are only examples; various ways of limiting, controlling, and dividing up patent rights and ownership exist and should be considered. With every right the patent owner reserves when attempting to monetize patents through an SPV, the risk increases that the transfer will not be deemed a true assignment or an exclusive license supporting the SPV’s independent standing. Two categories of rights in particular have typically had the most impact on a plaintiff’s ability to maintain independent standing to sue without joinder of the former patentee: enforcement activity and restraints on disposition of the patents and patent rights.
Accordingly, the language of any agreement between a sponsoring company and an SPV concerning the possible monetization of patents is critically important. If one purpose of forming the SPV is to distance the patent enforcement from the sponsoring company, that objective would be compromised if the sponsor was required to join in litigation as co-plaintiff to preserve standing due to its having retained too much control over the patents.
Below are some examples of cases where courts have decided whether plaintiffs had sufficient rights to support independent standing (or any standing) based on the rights retained or transferred regarding enforcement and alienation.
- Cases Finding Insufficient Rights to Support Independent Standing:
In Lone Star Silicon Innovations LLC v. Nanya Tech. Corp., 925 F.3d 1225 (Fed. Cir. 2019), the Federal Circuit held that Lone Star, the exclusive licensee of the patents-in-suit, did not possess substantial rights sufficient to allow it to sue without joinder of the patent owner. The patents-in-suit were originally assigned to semiconductor company AMD, which executed an agreement purporting to convey “all right, title and interest” in the patents to patent assertion entity Lone Star. But the transfer agreement significantly limited Lone Star’s ability to enforce and license the patents. For example, Lone Star agreed to assert the covered patents only against the entities specifically listed in the agreement, and was required to obtain AMD’s permission to add other entities as targets. AMD also had the right to sublicense the covered patents to infringement targets, to prevent Lone Star from assigning the patents to anyone else without agreeing to the same terms, to continue practicing the patents (along with its customers), and to receive revenue from Lone Star’s monetization efforts.
The court was unpersuaded by the language in the agreement purporting to transfer “all right, title and interest” in the covered patents to Lone Star given all of the other encumbrances. Because Lone Star needed AMD’s consent to sue targets other than those expressly listed in the agreement, the Court held that Lone Star’s enforcement rights were “illusory.” The court noted, in contrast, that “a transferee that receives all substantial patent rights from a transferor would never need consent from the transferor to file suit.” With respect to alienation, the court noted that “[n]ot only does [AMD’s ability to veto sales of the patents] substantially restrict Lone Star’s ability to transfer the patents, it ensures that AMD will always control how the patents are asserted. . . . Requiring Lone Star to assign the patents back to AMD, or an agent of its choice, before abandoning the patents has a similar effect.” The court also found that other aspects of the agreement, such as AMD’s retention of some of the monetization proceeds and a nonexclusive right to practice the patents, “suggest that AMD did not transfer all substantial rights in its patents to Lone Star” but were not dispositive. The court ultimately found that Lone Star lacked all substantial rights in the asserted patents, but found that the district court should have let Lone Star try to join AMD as a co-plaintiff before dismissing the case.
In Aspex Eyewear, Inc. v. Miracle Optics, Inc., 434 F.3d 1336 (Fed. Cir. 2006), the patent-in-suit’s original assignee, Contour, granted a third-party company, Chic, rights to the patent-in-suit under a “Distribution and License Agreement” that included “(1) the exclusive right to make, use, and sell in the United States products covered by the patent, (2) the first right to commence legal action against third parties for infringement of the patent and the right to retain any award of damages from actions initiated by Chic, and (3) a virtually unfettered right to sublicense all of its rights to a third party.” The court acknowledged that these rights “strongly favor a finding of an assignment, not a license.” But because the agreement ended on a specific date, the court found that Contour was the true owner of the patent: “Most significantly, for purposes of this appeal, the agreement also contained a clause providing that the agreement would expire” on a specific date, or on a later specific date “if Chic exercised its one option to extend, after which all of the rights under the [patent] that the agreement initially granted to Chic would terminate.” The court held that this delegation of rights was not an assignment because “Chic’s rights, however substantial in other respects, are unquestionably valid for only a limited period of time.” “Absent an amendment of the agreement,” the court continued, “[Contour] will regain all of the rights under the ’747 patent that it had previously transferred to Chic. It is thus the unquestioned owner of the patent, and . . . it is clear that Chic never had all substantial rights to the patent.”
- Cases Finding Rights Sufficient to Support Independent Standing
In Azure Networks, LLC v. CSR PLC, 771 F.3d 1336 (Fed. Cir. 2014), the patent-in-suit was acquired by Azure, a Texas LLC that sought to persuade local charities within the Eastern District of Texas “to join in its patent enforcement activities.” One local organization joined, and formed a Texas non-profit called Tri-County. Azure donated patents and applications to Tri-County in 2010. A few weeks later, it entered into an agreement with Tri-County that transferred back to Azure an exclusive license in the patent-in-suit as well as myriad other rights with Tri-County retaining 33% of the proceeds from litigation for the first 5 years and 5% thereafter. “Additionally, Tri-County retained a right to terminate the Agreement if Azure breached its obligations or if Tri-County’s obligations under the Agreement placed Tri-County’s tax-exempt status at risk. Tri-County also reserved reversionary rights in the ’129 patent once the Agreement expires. In particular, the Agreement automatically expire[d] on March 27, 2018, with two years remaining on the patent term, but Tri-County has the option to renew in one-year increments if it notifies Azure at least thirty days in advance.” Tri-County and Azure had sued jointly, and the accused infringer sought to have Tri-County removed from the case because “the significant rights transferred to Azure under the Agreement constituted an effective assignment for purposes of standing, leaving Tri-County with no rights to sue as co-plaintiff.” The court held that Tri-County’s right to terminate the agreement if Azure did not “exercise good-faith judgment in monetizing the patents” does not amount to “the type of control that we have found indicative of ownership in prior cases,” and that the fact that the agreement “automatically terminates,” although Tri-County could “optionally extend the Agreement in one-year increments,” did not give Azure effective title to the patent. As the Federal Circuit explained in Aspex Eyewear, “this type of renewal cycle presumes that the patent ‘would never return to the assignor.’”
In Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870 (Fed. Cir. 1991), the court held that licensee Vaupel had standing to sue even when the original assignee, the inventor, retained “1) a veto right on sublicensing by [the licensee]; 2) the right to obtain patents on the invention in other countries; 3) a reversionary right to the patent in the event of bankruptcy or termination of production by [the licensee]; and 4) a right to receive infringement damages.” Vaupel also had the right to sue, subject only to the obligation to inform the inventor. The court found that the “sublicensing veto was a minor derogation from the grant of rights,” “the right to obtain patents in other countries [did not] affect Vaupel’s rights,” and the “termination provisions were entirely consistent with an assignment, . . . [which] ‘may be either absolute, or by way of mortgage and liable to be defeated by non-performance of a condition subsequent.’” The “right to receive infringement damages,” the court ruled, “was merely a means of compensation under the agreement; this was not inconsistent with an assignment.”
III. Special Considerations for SPV Litigation in Germany
Companies considering monetizing their patents using an SPV should consider how any agreement may impact enforcement in Germany and the forthcoming Unified Patent Court. With a generally patentee-friendly and efficient patent litigation system, and injunctions widely available, Germany has become the world’s second most popular patent litigation venue and is often worth considering as part of a sophisticated patent monetization effort.
Under German procedural law, an SPV’s standing can arise from either a full assignment of a patent or the grant of an exclusive license. Unlike U.S. law, though, it is possible to grant non-exclusive licensees a right to sue in the name of the patentee—but that comes with restrictions that make it much less suitable for monetization campaigns.
If the sponsor transfers the rights entirely and without any restrictions, the assignee may assert all rights once the transfer is recorded in the German Patent and Trade Mark Office’s patent register. Unless the defendant can cast considerable doubts on the assignment, German courts treat the registration with the Patent Office as sufficient proof of ownership. Notably, the SPV will only be able to claim damages as the patent owner starting from the time it was registered with the Patent Office. Damages incurred before then are damages of the previous patent owner, which must assign such claims to the SPV if the SPV is to recover them. The assignment of such claims can be disputed by the defendant more easily than the assignment of the patent itself, which can lead to significant evidentiary disputes that may delay the resolution of a case. In many cases, SPVs limit their claims for damages and do not assert the damages of previous patent owners for that reason, focusing instead on the injunction as the main remedy.
In cases where the sponsor grants the SPV an exclusive license, the SPV has the right to sue infringers without the involvement of the sponsor as the patent owner. Exclusivity means that the patent may be used to the exclusion of all third parties, i.e., that the right has not been granted to several licensees independently of each other in a manner that covers the same area, time and subject matter. Unlike a full transfer of rights, standing based on an exclusive license does not require registration with the German Patent and Trade Mark Office’s patent register. The downside is that an exclusive license may lead to evidentiary disputes about what is granted. In addition, an exclusive licensee can only claim the damages the licensee itself incurred—not the damages incurred by the sponsor—unless the sponsor also assigns its damages claims to the exclusive licensee. While this may not have an effect on damages calculated based on reasonable royalty rates, it may have an effect on other calculation methods such as lost profits.
German SPVs may also have different obligations to pay a security for litigation costs than foreign operating companies. Under German procedural law, plaintiffs that are not domiciled in an EU member state have to provide security for the costs of the proceedings upon request of the defendant. An EU-based SPV may allow the non-EU sponsor to avoid that requirement. German courts, however, will require that an SPV be based in and managed from within the EU. The SPV should be prepared to show that it has an actual business office in the EU, complete with EU staff managing its operations from within the EU, to overcome the obligation to provide the litigation cost security.
This article highlights only some of the factors patent owners should consider in determining whether, and how, to create an SPV for purposes of monetizing patent assets. The structure of an agreement that transfers patent rights can have far-reaching impacts on the ability to enforce those patents, and care must be taken to avoid undermine one or more of the objectives underlying the decision to set up an SPV in the first place. As can be seen from the above decisions, it is important to carefully consider the risks and benefits of allocating patent rights when drafting agreements between a sponsor and an SPV for the purpose of monetizing patents.
If you have any questions about the issues addressed in this memorandum, or if you would like a copy of any of the materials mentioned in it, please do not hesitate to reach out to:
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January 24, 2023
 In Germany and the Unified Patent Court, where injunctions are more common, the plaintiff’s status as an SPV may be a factor in courts’ proportionality analysis, but as of this writing we are aware of no cases in which an injunction was denied solely on that basis.
 E.g., InterDigital Commc’ns, LLC v. Int’l Trade Comm’n, 707 F.3d 1295, 1299 n.2 & 1303-04 (Fed. Cir. 2013).
 This separation of control can also be a disadvantage for the SPV: if the SPV is required to show that licensees, including the sponsoring company, practice claims asserted in litigation under 35 U.S.C. § 287, the SPV would need the sponsor to cooperate by marking the practicing products with the patent numbers.
 The Federal Circuit has “recognized three categories of plaintiffs in patent infringement cases. . . . First, a patentee, i.e. , one with ‘all rights or all substantial rights’ in a patent, can sue in its own name. . . . Second, a licensee with ‘exclusionary rights’ can sue along with the patentee. . . . And, finally, a licensee who lacks exclusionary rights has no authority to assert a patent (even along with the patentee).” Lone Star Silicon Innovations LLC v. Nanya Tech. Corp., 925 F.3d 1225, 1228 (Fed. Cir. 2019).
 WiAV Sols. LLC v. Motorola Inc., 631 F.3d 1257, 1264 (Fed. Cir. 2010); Lone Star, 925 F.3d at 1229.
 See Lone Star Silicon Innovations LLC v. Nanya Tech. Corp., 925 F.3d 1225, 1229-34 (Fed. Cir. 2019); Morrow v. Microsoft Corp., 499 F.3d 1332, 1340 n.8 (Fed. Cir. 2007) (“While parties are free to assign some or all patent rights as they see fit . . . , this does not mean that the chosen method of division will satisfy standing requirements.”).
 Alfred E. Mann Foundation v. Cochlear, 604 F.3d 1354, 1359-60 (Fed. Cir. 2010) (“Either the licensor did not transfer ‘all substantial rights’ to the exclusive licensee, in which case the licensor remains the owner of the patent and retains the right to sue for infringement, or the licensor did transfer ‘all substantial rights’ to the exclusive licensee, in which case the licensee becomes the owner of the patent for standing purposes and gains the right to sue on its own.”); Vaupel Textilmaschinen KG v. Meccanica Euro Italia SPA, 944 F.2d 870, 875 (Fed. Cir. 1991).
 E.g., Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1343 (Fed. Cir. 2014) (vacated on other grounds); Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538, 1553 (Fed. Cir. 1995) (en banc).
 See Morrow v. Microsoft Corp., 499 F.3d 1332, 1340 n.6 (Fed. Cir. 2007); Prima Tek II, 222 F.3d at 1378.
 Azure Networks, 771 F.3d at 1343 (citing Alfred E. Mann Foundation v. Cochlear, 604 F.3d 1354, 1360-61 (Fed. Cir. 2010)).
 Id. at 1227-28.
 Id. at 1228.
 Id. at 1230.
 Id. at 1231.
 Id. (quoting Intellectual Property Development, Inc. v. TCI Cablevision of California, Inc., 248 F.3d 1333-34 (Fed. Cir. 2001)).
 Id. at 1233.
 Id. at 1234-1239.
 Id. at 1342.
 Id. Chic executed another agreement that granted to Aspex all of its rights under the patent-in-suit. Id.
 Id. Notably, the court distinguished Vaupel (termination provision triggered only in the case of bankruptcy) and Prima Tek II (agreement provided for one-year renewals, but otherwise, the agreement did not contain a fixed termination date) because in those cases, there was no definite termination date like the Chic-Contour agreement. Id. at 1343.
 Azure Networks was vacated on other grounds related to claim construction. See CSR plc v. Azure Networks, LLC, 575 U.S. 959, 135 S. Ct. 1846 (2015).
 Id. at 1340.
 Id. at 1341.
 Id. at 1345-47 (citing Aspex Eyewear, 434 F.3d at 1343); see also Prima Tek II, L.L.C. v. A-Roo Co., 222 F.3d 1372, 1378 (Fed. Cir. 2000) (“While it is true that the agreement is temporally limited to an initial two-year period followed by successive, renewable one-year periods, that fact alone does not deprive the licensee of standing to maintain a patent infringement suit in its own name.”).
 Id. at 875.
 Id. (citing Waterman v. Mackenzie, 138 U.S. 252, 256 (1891)).
 Section 30 Subs. 3 German Patent Act.
 German Federal Supreme Court, GRUR 2013, 713 – Fräsverfahren.
 With an exclusive license the SPV can bring any claim based on Section 139 of the German Patent Act.
 Court of Appeals Düsseldorf, I-2 U 30/16 (2018); please note: if the SPV is fully incorporated into the assignor’s group of companies, courts may assume exclusivity even in cases where the licensor is left with a right to use a patent.
 Section 110 Subs. 1 German Code of Civil Procedure.
 Court of Appeals Munich, 6 U 2594/17 (2018).