Patent Monetization: Legal and Business...

Presenting a live 90‐minute webinar with interactive Q&A

Patent Monetization: Legal and Business StrategiesEvaluating Key Patents, Analyzing Options, and Implementing a Monetization Plan

T d ’ f l f

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

TUESDAY, MAY 24, 2011

Today’s faculty features:

Randy J. Pritzker, Shareholder, Wolf Greenfield, Boston

Michael A. Albert, Shareholder, Wolf Greenfield, Boston

Joseph J. Cote, Jr., Managing Director, Cote Associates, Boston

Phil Stern, Chief Executive Officer, yet2.com, Needham, Mass.

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Today’s ModeratorRandy J PritzkerRandy J. PritzkerWolf GreenfieldCo-Chair, Electrical & Computer Technologies GroupExecutive Committee MemberB.S., Electrical Engineering, University of MassachusettsJ.D., Boston College Law School617-646-8247 , g

[email protected]

© 2011 Wolf, Greenfield & Sacks, P.C. All rights reserved. 6

Today’s PanelistsJoseph J CoteJoseph J. CoteCote AssociatesManaging DirectorB.S., Naval Science / Systems Engineering, U.S. Naval AcademyM.S., Finance, Strategic Planning and Organizational 617-335-5310 , , g g gBehavior, [email protected]


Today’s PanelistsPhil SternPhil Sternyet2.comChief Executive Officer A.B., Mathematics, Princeton University MBA, Harvard Business School

781-972-0603phil@yet2 [email protected]


Today’s PanelistsMichael A AlbertMichael A. AlbertWolf GreenfieldShareholder and Chair, IP Litigation GroupA.B., magna cum laude, Harvard UniversityM.A., University of California at BerkeleyJ.D., cum laude, Harvard Law School617-646-8240 , ,

[email protected]


AgendaI t d ti Introduction

Examples of patent monetizationp p

Part 1 — Strategically building a patent portfolioportfolio

How to do it well

How to do it on a budget


Agenda (cont)

P t 2 M ti i t t Part 2 — Monetizing patents Selection of patents Valuation Targets Resources Options License Sale

Liti ti


Litigation

Closure

Introduction

A patent may be . . .

Sold Sold

Licensed

Enforced to:

Collect damages

Get an injunction


The Value of Patents — The Thrill of VictoryS ttl t d V di tSettlements and Verdicts

Johnson & Johnson v. BostonJohnson & Johnson v. Boston Scientific (February 2010)

$1.7B settlement (3 cases) C.R. Bard v. W.L. Gore (2009)

$752M (inclusive of attorney fees, past damages, willfulness, costs, and ongoing royalty)


The Value of Patents — The Thrill of Victory (cont)

Settlements and Verdicts ( t)Settlements and Verdicts (cont)

De Puy Spine, Inc. v. Medtronic$$226.3M verdict, resulting in settlement of $179M

i4i v Microsoft i4i v. Microsoft$200M + plus $90Madded by judgeadded by judge Injunction on Microsoft Word Affirmed by CAFC; Supreme Court decision

di


pending

The Value of Patents — The Thrill of Victory

Licensing Deals

Qualcomm - $1 3B plus continuingQualcomm $1.3B plus continuing royalties

IBM $10B IBM- $10B

Katz- $2B$


The Value of Patents — The Thrill of Victory

University Licensing

Massachusetts Institute ofMassachusetts Institute of Technology – $307.8M

C l bi U i it $134 3M Columbia University – $134.3M

University of California – $121.4My $

Harvard University – $77M


The Value of Patents — The Agony of Defeat

Centocor v. Abbott (June 2009) $1.67B (largest patent

erdict e er recentlverdict ever, recently reversed on appeal)

Alcatel-Lucent v. Microsoft (February 2007)

$1 52B j d t ( t d b$1.52B judgment (vacated by trial court)


The Value of Patents — The Agony of Defeat

Mirror Worlds, LLC v. Apple, Inc. (Oct 2010)

$625M j d t ( t d$625M judgment (vacated by trial court)

Uniloc v. Microsoft (April 2009) $338M judgment (reversed several months later)


Part 1 — Strategically Building a Patent Portfolio

First, look at your goals

Barrier to entry to ycompetitors

Grow market share

Make money off patents

Other


Part 1 — Strategically Building a Patent Portfolio (cont)

Different needs in different industries

Retail vs. high tech

Large vs. small companiesLarge vs. small companies

Corporations vs. universities



Identify what is most important to protect

Core technology, products that sell, etc.

Expect those to change over time

Look at competitive market Look at competitive market

Consider shifts or changes in future



D id t l h t b t Decide not only on what but also where to file

Where is market/competition

Consider both U.S. and foreign gprotection



Of id b d t Of course, consider budgetary constraints

A t t fili d Average patent filing and prosecution costs $15-20K to file$15 20K to file $10-15K to prosecute to issuance

Timing g On average 3-4 years pending until issuance



M k l d ti k t it Make a plan and stick to it

Resist changing due to business cycles

Looking back, should have valuable, diverse portfolio


Panel Discussion onPanel Discussion onStrategically Building


a Patent Portfolio

So what’s in yourSo what’s in your ll t?wallet?


Part 2 — Monetizing Your Patent PortfolioO ti Options Licensing

Selling

Litigation/enforcement Litigation/enforcement


Part 2 — Monetizing Your Patent Portfolio (cont)

Panel Discussion

ConcernsConcerns Selection of patents

Valuation

Targets

Resources available



Panel Discussion

LicensingLicensing Target strategy

Control issues

Valuation

Closing the deal Need for suit?


Need for suit?


Panel Discussion

SellingSelling Whether

How

To whom

How much



P l Di iPanel Discussion

Litigationg When and why sue

T t l ti Target selection

Choice of forum

Funding sources

Managing it


Managing it

Winning!!!

Audience Questions onMonetizing Your Patent PortfolioMonetizing Your Patent Portfolio


Th k Thank youfor listening!for listening!


Let’s bring the Stanley CupLet’s bring the Stanley Cupback to Boston!back to Boston!


Overview of Wolf Greenfield


Brief Overview of Wolf GreenfieldL t IP O l L Fi B d i N E l d

200+ IP professionals and staff

Largest IP-Only Law Firm Based in New England

75 Attorneys and technology specialists91% Degree in science/engineering64% Ph.D., M.D., Advanced degree56% Prior industry experience

80+ Years serving clients

2749 Patents filed in 2010


2749 Patents filed in 2010

Wolf Greenfield ServicesIP P t ti IP Protection Patents, Trademarks, Copyrights, Trade Secrets

Licensing and all forms of IP transactions Licensing and all forms of IP transactions Opinions Patentability, infringement, validity, inventorship/Patentability, infringement, validity, inventorship/

ownership Litigation avoidance and planning Arbitration and mediation Clearance/design-arounds

Litigation (all IP)


Litigation (all IP) All tribunals (Federal and State Courts, USPTO, etc.)

Patent Practice Areas

electrical and consumer

D

electrical and computer

consumer products

chemicaland materials medical

Deep Expertise

mechanicalbiotechnology

cleantech pharmaceutical


Patent Monetization: Legal and Business...

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