In new strategy, ObjectVideo agrees to license its video analytic patents to American Dynamics

Raul Fernandez, ObjectVideo's CEO

ObjectVideo, a software company that has developed numerous video analytic tools which have been protected by more than 40 patents granted worldwide, has launched a sweeping patent enforcement program which employs both the carrot and the stick.

It employed the stick last April when it launched a lawsuit in U.S. District Court in the Eastern District of Virginia against Bosch, Samsung and Sony for allegedly infringing on some of its video analytic patents.

It followed up that step by filing a similar complaint with the U.S. International Trade Commission (ITC) last June. In that case, ObjectVideo asked the ITC to initiate its own investigation into the alleged patent infringements by Bosch, Samsung and Sony, and to prohibit the importation of products by those three companies into the U.S. that use what ObjectVideo considers to be its patent-protected technology.

After the ITC announced on July 27, 2011 that it would, indeed, launch an investigation of the alleged violations of section 337 of the Tariff Act of 1930, the U.S. District Court temporarily set aside its case, pending the outcome of the ITC’s action, Raul Fernandez, CEO of ObjectVideo told GSN during a phone interview on Feb. 1.

Bosch, Samsung and Sony have submitted their defense arguments and initiated counterclaims against ObjectVideo.

The phone interview with Fernandez was spurred by the fact that ObjectVideo had just signaled, in effect, that it is also prepared to employ a “carrot” in its patent enforcement efforts. On Feb. 1, the company announced it has reached a global patent licensing agreement with the American Dynamics business unit of Tyco Security Products, under which American Dynamics will pay ObjectVideo an unspecified set of licensing fees to incorporate ObjectVideo’s patented technologies into its various cameras and video surveillance products.

“Our American Dynamics business is developing a broad range of video analytics-enabled products,” said Warren Brown, vice president of product management for Tyco Security Products. “As part of our pre-launch process, it was important to ensure that the growth we expect from these products would not be negatively affected by legal issues.”

Fernandez said this latest announcement was “another step in building our licensing program,” which he considers vital to the protection of his company’s key assets. “Broadly speaking, little companies are the lifeblood of employment and innovation across the world,” Fernandez told GSN.

ObjectVideo is attempting to enforce its patents through the active involvement of a handful of internal employees, explained Fernandez, as well as outside attorneys with the law firm of Robins, Kaplan, Miller & Ciresi, LLC, which is based in Minneapolis, MN.

Fernandez declined to describe the nature of the licensing fees that American Dynamics has agreed to pay, calling such information “confidential,” but he noted that “we are mindful that we need transactions that work for everybody.”

Fernandez acknowledged that this deal with American Dynamics represents something of a “carrot,” while its pending lawsuits represent more of a “stick.” He indicated that he would like more companies to reach out to ObjectVideo to talk about similar licensing agreements, but reaffirmed that “we are fully prepared to defend our patents.”