Architects of roi in iP - Robins Kaplan LLP/media/PDFs/IP ROI.pdf · 2020. 5. 12. · monetization...
Transcript of Architects of roi in iP - Robins Kaplan LLP/media/PDFs/IP ROI.pdf · 2020. 5. 12. · monetization...
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Architects of roi in iP
Attorney Advertising
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Intellectual property is one of the most
underleveraged assets in investment portfolios.
Knowing how to monetize these assets can expedite
and maximize your overall return on investment.
At Robins, Kaplan, Miller & Ciresi L.L.P. we
help investors evaluate intellectual property,
identify hidden value, and find ways to monetize
technology and innovation assets. Our guidance
on intellectual property monetization reflects our
experience turning ideas into cash and the know-
how we’ve earned litigating big IP cases on both
sides of the courtroom.
Why are we so good at this? Because we
have to be. As an architect in alternative fee
arrangements, we have had to excel at identifying
valuable intellectual property assets that can
rapidly generate returns on our own investment.
We spent the last twenty years partnering with IP
litigation clients and we have recovered billions
of dollars on their behalf. Along the way, we have
repeatedly had to decide whether to invest our own
capital and resources towards a client’s recovery.
Figuring out how much intellectual property
is worth, however, is no easy task. Getting the
answer right can mean increasing an investment’s
return. Making a mistake can be both costly
and embarrassing. To evaluate the strength
and value of the intellectual property held by
investors, we developed our proprietary Strategic
IP Assessment. When combined with our IP
litigation experience and a full complement of
in-house Ph.D. science advisors and financial
and economic consultants, this process makes us
uniquely situated among law firms and other IP
professionals to deliver an actionable, real-world
IP evaluation.
intellectuAl ProPerty
monetization
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Pre-investment due diligence: We have decades of experience valuing intellectual property portfolios. We can apply our proprietary techniques to provide
you a window into the range of returns possible on your potential investment. Likewise, we can identify risk by evaluating
potential intellectual property liability existing within the market.
extracting value from your existing investments: We will scour the intellectual property assets within your existing portfolios and identify potential assets that can be
immediately monetized through sale or license. Having achieved billions in returns over two decades of experience monetizing
intellectual property portfolios, we have the blueprint to support your most complex monetization efforts.
identification of strategic iP acquisitions: Often it becomes necessary to hedge risk for your existing or potential investments by securing defensive intellectual property
plays in the marketplace. We have experience helping clients identify high-value acquisition targets designed to provide a
strong defensive portfolio within specific markets of interest.
Intergraph Licensing Campaign:Our firm successfully guided Intergraph in obtaining
settlements of $500 million from industry computer and
processor manufacturers related to microprocessor and
parallel processing patents.
Fonar MRI Monetization: We assisted Fonar Corporation in its efforts to monetize
its patents related to MRI technology. After a jury verdict
against General Electric for $110 million, Siemens, Philips,
Toshiba, Hitachi, Shimadzu, Health Images, and Elscint
licensed Fonar’s patents. Total settlements and royalties
from enforcement of the Fonar patents totalled over $200
million.
TVI Licensing Campaign: We helped TVI monetize its portfolio of patents related to
disc players. We originally approached Microsoft to obtain a
license, which it did a week before trial. Following Microsoft’s
agreement to take a license, we assisted our client in a
monetization campaign throughout the consumer electronics
industry. Many manufacturers of disc players have since
obtained licenses to the patents. Total monetization of the
portfolio to date exceeds $100 million.
Honeywell LCD Technology Monetization: Our firm successfully worked with Honeywell to monetize
its patents related to Liquid Crystal Displays. Nearly all of
the relevant consumer electronics industry took licenses to
the patents with revenue to date exceeding $200 million.
How we can HelP you build return on your investment
case studies
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Often litigation becomes necessary in order to maximize return on investment of intellectual property assets. We are
willing and able to throw rocks—and have the finesse to do so in glass houses if necessary. Unlike many firms, we
have the experience of partnering with capital firms to maximize returns along with the reputation of success in the
courtroom and within industry to drive results in litigation should it become necessary.
We have litigated patents from a wide range of technology disciplines, including software, semiconductors, computer
peripherals, biotechnology, pharmaceuticals, medical products, telecommunications, and industrial machinery. Our
patent infringement trial lawyers include attorneys experienced in a variety of technical disciplines ranging from
biophysics to electrical engineering. Many of these trial lawyers are registered to practice before the U.S. Patent
and Trademark Office. But, first and foremost, we are trial lawyers who try patent infringement cases, argue Federal
Circuit appeals, structure and negotiate business resolutions of patent infringement disputes, and counsel clients on
patent matters. Partnering with us gives you a powerful tool in crafting a successful strategy to maximize your return
on investment in intellectual property.
Eolas v. Microsoft: In one of the largest patent verdicts at the time, we obtained
a $520.6 million verdict on behalf of Eolas Technologies
and the University of California related to web-browser
technologies against Microsoft.
St. Clair Litigation: We helped St. Clair monetize its investment portfolio of
digital camera patents. We successfully achieved jury
verdicts against three manufactures of digital cameras:
Sony, Canon and Fuji. Following those verdicts, we defended
our client against challenges to its ownership of the patents.
After successfully defeating those claims, we proceeded to
conduct a targeted licensing campaign designed to monetize
the portfolio. Ultimately, over $240 million in licensing
revenue related to the technology was secured on behalf of
our client.
Honeywell Auto-Focus Monetization: Our firm represented Honeywell in a patent infringement
action against Minolta involving patents on autofocus
cameras. Following a five-month trial, the jury awarded
Honeywell $96.3 million. Minolta ultimately settled for
$127.5 million. A subsequent industry-wide licensing
campaign resulted in total settlements of over $500 million.
AMD v. Samsung: Our firm represented AMD in a case alleging that Samsung’s
DRAM, SRAM & NAND memory products, system logic
products, and consumer products infringed 7 AMD patents
concerning memory architecture, processor micro-architecture,
MOS-transistor fabrication and design, and user interface
design for consumer products. The case settled shortly before
trial and is reputed to be the 4th largest patent case settlement
and/or verdict from January 2010 – June 2011.
case studies
intellectuAl ProPert y
l i t i g at i o n
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We know your focus is building a portfolio of successful
businesses. Maximizing the value of those investments
often requires early planning to ensure that assets can be
leveraged when they mature. Because we have been in the
business of turning intellectual property into capital for
decades, we know what it takes to ensure those assets can be
monetized in the future—as well as the pitfalls that can drive
down value. We can translate what we know into a blueprint
for you and your portfolio companies to follow to construct
and protect value. As a strategic partner, we can provide
insight into:
• The policies and procedures each of your portfolio
companies need in place today in order to protect
investments in innovation tomorrow;
• The steps you should take to develop defensive positions
against potential adversaries asserting intellectual
property portfolios against you;
• Strategies for maximizing long-term value in nascent
patent portfolios;
• Techniques for assessing and evaluating offensive and
defensive intellectual property acquisitions; and
• Strategies for engaging potential licensing targets.
We will make our team of experienced attorneys, patent
agents, experts in science, and experts in finance available
to you and your portfolio companies to develop customized,
effective strategies to solidify the foundation for your
investment success years into the future.
business consultAtions t r at e g i c
intellectual ProPerty
litigAtion investmentAre you looking to build your investment portfolio
without the complications of adding to your list of
portfolio companies? We are looking to partner in
financing monetization and litigation opportunities
within our existing clients’ portfolios.
Given our reputation of success in monetizing intellectual
property holdings, we often receive more contingent
opportunities than we are able to fund.
We work with our clients to help securitize their
intellectual property by assisting them in locating
funding and partners to share the risk, and potential
reward, of monetization efforts. These opportunities
provide investment firms the ability to distribute
monetization risk across multiple technology portfolios
and monetization campaigns.
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Ronald J. SchutzChair, National IP Litigation Group;Regional Managing Partner, New [email protected]
Ron has extensive experience monetizing intellectual property on behalf of his clients. He has worked with inventors, businesses, and investors to transform their intellectual property portfolios into billions of dollars.
Ron’s success also extends into the courtroom. Among his significant jury verdicts are the following: $110 million (Fonar v. GE); $66 million (Grantley v. Clear Channel); $35 million (St. Clair v. Canon); $25 million (St. Clair v. Sony); and $8 million (Personal Audio v. Apple).
Ron is a Fellow of the American College of Trial Lawyers. Ron is admitted to practice in Minnesota and New York.
Jan M. ConlinChair, Business Litigation [email protected]
Jan has a long record of participating in and leading high-stakes intellectual property monetization campaigns. Jan has been involved in multiple nine-figure patent monetization campaigns including a $520.6 million verdict against Microsoft in 2004, a $400 million settlement for Pitney Bowes Inc. in a patent dispute against Hewlett-Packard in 2001, and over $500 million in licensing revenue on behalf of Honeywell.
Jan has been named to BTI’s esteemed “Client Service All-Star Team” four times (2007, 2009, 2011, 2013)—an honor rarely given more than once. Jan is admitted to practice in Minnesota and North Dakota.
Martin R. LueckChairman of the Executive Board [email protected]
Marty has over 25 years of experience driving results for his clients. Among those results are billions in monetization on behalf of owners of intellectual property. Examples include recoveries exceeding $200 million for Fonar, a jury verdict of $520 million against Microsoft on behalf of Eolas and the University of California, a verdict of $91 million on behalf of UNOCAL, and over $200 million in licensing revenue for Honeywell related to LCD technology.
Marty is a fellow of both the American College of Trial Lawyers and the International Academy of Trial Lawyers. Marty is admitted to practice in Minnesota and New York.
Marla R. ButlerAssistant Regional Managing Partner, New York;Chair of Firm’s Diversity [email protected]
For over fifteen years, Marla has been assisting clients transform intellectual property investments into capital. For example, Marla aided Intergraph in monetizing its patent portfolio related to processor technology in excess of $860 million.
Marla is a Fellow of the Litigation Counsel of America. Marla is admitted to practice in Georgia and New York.
Cyrus A. MortonChair, Patent Office Trials [email protected]
Cy went from inventor to lawyer. For nearly fifteen years, Cy has represented clients in intellectual property disputes. He has a number of trial successes including an $89 million judgment against Clear Channel, a $12 million judgment against Apple, and a $7.4 million judgment against Itron. Cy is admitted to practice in Minnesota.
arcHitects of successThe building block to a successful monetization campaign is the right team. We have a long history of success when it comes to turning intellectual property into cash or strategic leverage.
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We believe in design without compromise.
But we recognize that the cornerstone of any
campaign centered on ROI requires meticulous
attention to the bottom line. Because we often
have skin in the game, we learned long ago
how to deliver results cost effectively. We
have designed our services to maximize cost-
efficient structure and resources. By doing so,
we can build up ROI without compromising
quality. Here are some of the pillars of our cost-
efficient approach that help make us different:
We partner to share risk: We have decades of experience crafting alternative fee
arrangements designed to share the risk of monetization
campaigns. These partnerships lower the upfront capital
necessary to monetize a portfolio while providing you
assurance that maximizing ROI on the portfolio is our top
priority.
We leverage in-house financial experts: We support our monetization teams with in-house CPAs,
MBAs and Ph.D.s in economics to provide a wide range of
quantitative assessments and analyses for monetization
campaigns. In other words, we are able to limit the use
of costly external financial experts in our review and
interpretation of financial documents, accounting records
and other electronic discovery; conducting of market
analysis related to various technologies; calculation of IP
valuations; and critiquing and supporting damages experts
when it becomes necessary.
We leverage in-house experts in science: When necessary, we support our monetization teams with in-
house expertise in various scientific disciplines. Our team of
Ph.D.s in computer science, material sciences, engineering,
and biological sciences can identify potential licensing
targets; assess validity concerns within a patent portfolio;
assess technical documentation during litigation discovery;
and assist potential infringement and validity experts. By
leveraging these teams we are able to substantially reduce
costs associated with external scientific experience.
We drive down overhead: We have built our practice around driving down overhead.
With our home office strategically placed in the Twin Cities
we are able to minimize the expense of maintaining large,
expensive, satellite offices. We pass those savings along to our
clients in the form of competitive billing rates.
We deploy cutting edge analytic tools to monitor expenses: We have developed our innovative OneBudget™ tool to
leverage historic analytics to improve predictability in likely
monetization expenses and to provide realtime optics into
the campaign’s budget and expenses.
We deliver in-house, industry-leading electronic discovery services: When litigation happens, few things blow up the bottom line
quite like electronic discovery. We have worked to control
these costs for clients by developing a comprehensive in-
house electronic discovery group. This group allows us
to provide start-to-finish electronic discovery services,
including cost-efficient review of documents. In turn, we can
drive down costs for our clients.
imProving roi by WAtching the
b o t t o m l i n e
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ATTORNEY ADVERTISING MATERIAL
This is an attorney advertisement. Prior results do not guarantee a similar outcome. Past results are reported to provide the reader with an indication of the type of litigation in which we practice and should not be construed to create an expectation of result in any other case as all cases are dependent upon their own unique fact situation and applicable law. The member of the State Bar of California responsible for this advertisement is Roman M. Silberfeld. Being named to the list or receiving the award is not intended and should not be viewed as comparative to other lawyers or to create an expectation about results that might be achieved in a future matter.
Each listed attorney is admitted to practice law only in the states listed. For additional information about our firm, practices, attorneys, and offices, please visit our website at http://www.rkmc.com.
contact
RkMC.COM/ Ip
Ronald J. SchutzPartnerChair, National IP Litigation Group;
Regional Managing Partner, New York
212.980.7400
601 Lexington Avenue
Suite 3400
New York, NY 10022-4611
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