Enterprise Patent Portfolio Commercialization: Trends and - - PowerPoint PPT Presentation

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Enterprise Patent Portfolio Commercialization: Trends and - - PowerPoint PPT Presentation

Mar 17, 2024 459 likes •661 views

Return on Invention EU-JP Technology Transfer Helpdesk Enterprise Patent Portfolio Commercialization: Trends and Opportunities 8 December 2016 George Park The contents of this presentation represent the views of the author and do not reflect

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Return on Invention

The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

EU-JP Technology Transfer Helpdesk

Enterprise Patent Portfolio Commercialization: Trends and Opportunities

8 December 2016 George Park

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1 The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

Historical Approach to Commercializing Patents

Article I, Section 8, Clause 8 of the United States Constitution empowers the United States Congress: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Using Patents by to Defend Products 1799: James Watt wins patent litigation against Jonathan Hornblower for infringement of steam engine patents 1806: Eli Whitney wins litigation on cotton gin patent 1811: Robert Fulton engaged in lawsuits involving steam boat patents and related commercial rights 1854: Elias Howe wins dispute over patents related to sewing machines from Isaac Merritt Singer 1909: Orville and Wilbur Wright files lawsuit against Glenn Curtiss for infringement of aircraft patent 1915: Nikola Tesla sues Marconi for infringement of radio patents ….

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2 The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

From Product Focused Commercialization to Direct Financial Returns from Patents

Microsoft: Smartphone Patent Licensing Kodak: Digital Image Patent Sales

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3 The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

Broad Range of Approaches to Leveraging Enterprise Patent Portfolios

Defense Commercialization Enforcement Development

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4 The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

Long Term Trends in Patent Prosecution and Litigation in the U.S.

Source: 2016 PWC Patent Litigation Study

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5 The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

Developments In the U.S. - Legislative

America Invents Act (2011)

  • Switches from “first-to-invent” system to “first-inventor-to-file”
  • Expands inter parties review
  • Creates administrative proceeding for covered business method (CBM) patents

Source: PTAB statistics (9/30/2016)

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6 The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

Developments In the U.S. - Judicial

  • Example litigation matters this decade

– Uniloc v. Microsoft (2011) – Elimination of 25% rule of thumb – Laser Dynamics v Quanta (2012) – Damages based

  • n smallest salable unit

– Motorola v Apple (2012) – Sufficiency of damages expert opinions – Motorola v Microsoft (2013) – Valuation of Standards Essential Patents – Alice v CLS Bank (2014) – Eligibility of software patents

  • Other earlier decisions: eBay (2006, injunctions),

SanDisk (2007, declaratory judgments), KSR (2007, obviousness), Seagate (2007, willful infringement), Quanta (2008, exhaustion), Lucent (2009, entire market value rule)

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7 The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

Impacts on Focused Patent Enforcement Firms

Source: finance.google.com

  • 200
  • 150
  • 100
  • 50

50 100 ACTG WILN MARA PCO

Net Income of Selected Enforcement Firms [$M]

2012 2013 2014 2015

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8 The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

Impacts on Focused Patent Enforcement Firms

Source: finance.google.com

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9 The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

Recent News in US – Possible Shift Back to Stronger Patents, though with Uncertainties

0% 5% 10% 15% 20% 25% 30% Cumulative to Jun 2016 Jun 2016 to Sep 2016

PTAB Completed Trials Upholding All Claims

Source: PTAB statistics (9/30/2016 and 6/30/2016)

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10 The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

Recent News in Europe – Continued Attraction as Venue, though with Uncertainties

Source: http://www.iam-media.com/images/cache/magazine/issue/VALMON17/bf9e88ed-8c47-49be-8be2-3eae90d4c84a/fig1.jpg

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11 The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

Recent News in Asia – Continued Growth in Patenting and Commercialization

From the 7 Nov 2016 issue of “The Patent Investor”

50,000 100,000 150,000 200,000 250,000 300,000 350,000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 2013 2014

Patent Grants

China Japan Korea US Source: The Patent Investor; http://ipstats.wipo.int/ipstatv2/editIpsSearchForm.htm?tab=patent

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12 The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

Japan Remains Actively Engaged in Patent Commercialization Activities

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13 The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

Options for Patent Owners

  • Product differentiation
  • Defensive use
  • Currency for deals
  • Technology Transfer
  • Enforcement

– Licensing – Litigation

  • Sale

Use patents to support

  • perations

Use patents to generate revenues

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14 The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

Factors Used to Consider Potential for an Enforcement Program

  • Demonstrable infringement (multiple cases)
  • Relevant market
  • Encumbrances
  • Portfolio size and coverage
  • Innovation history
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15 The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

Potential Risks When Considering Enforcement

  • Counter-assertion
  • Business relationships
  • Resource and expense commitment
  • Risks to asserted patents
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16 The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

Enforcement Campaign Process

Deal or Litigation Negotiation Notice Letter Business analysis Technical analysis Hypothesis generation Mining

  • Royalty fee
  • Other consideration
  • Royalty structure
  • Back damages
  • Covered products
  • Named patents
  • Exclusivity
  • License term
  • etc.
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17 The contents of this presentation represent the views of the author and do not reflect the opinions or positions of IPVALUE or its clients

End of Presentation

George Park Director, Development IPVALUE Management, Inc. 3945 Freedom Circle, Suite 900 Santa Clara, CA 95054 Office: +1 408 869 4021 Mobile: +1 650 387 9632 email: george.park@ipvalue.com