Patent Liquidity Opportunities and Challenges in Today s Complex IP Markets
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1 Patent Liquidity Opportunities and Challenges in Today s Complex IP Markets Defense New Strategies for Reducing Patent Risk High Tech Law Institute October 14, 2011 Ovidian Group, LLC Berkeley, California
2 The Old Days Large incumbent companies controlled dominant IP portfolios IP strategies focus on a small set of competitors, partners MAD & cross licenses to reduce risk Occasional company-to-company litigation to help shape market position 2
3 NPE Litigation Emerges Small inventors unable to license IP to big companies no real market, hard to make deals corporations had financial power, often unwilling to pay Some inventors sued to obtain compensation A few high-profile inventors paved way for monetization 3
4 Plaintiff s Bar Seizes Opportunity Rocket docket fuels trend One stop shop for patent assertions emerge Acacia (1993), Spangenberg, Niro & Scavone Growth of NPEs, company-to-company litigation seems to slow NPE litigation success creates market demand for patents 4
5 Industry Reacts; Litigation Grows; Demand Grows Operating IP companies (e.g., Tessera, InterDigital) fuel the trend early success in systematic IP licensing need new patents to grow revenue increase market demand for patents Operating tech companies begin defensive buying market demand for patents increases Patent aggregators (IV, RPX, AST) emerge formed primarily as risk management vehicles aggregate patents to mitigate risk of litigation based on loose patents market demand for patents increases 5
6 Companies React; Markets and Litigation Expand Companies face increased pressure to monetize their assets offset defensive litigation costs recession-driven monetization More corporate patent sales emerge sale now viable alternative to direct licensing more patents supply aggregators, NPEs Patent aggregators evolve (IV, RPX, AST) only so much money can be made from risk management free rider problem catch and release sales to NPEs Market and litigation opportunities expand 6
7 Company-to-Company Litigation Returns 7
8 How Does My Portfolio Stack Up? Combination of mobile wars and increasing patent market liquidity driving many tech companies to examine their own portfolios Key questions what do I have? what do I need? how much is enough? where I have gaps, what assets should I buy? where I have strength, what should I do? 8
9 Patent Purchasing Purchasing through brokers Pros assets are available use cases often well developed Cons limited selection brokers can be double-edged swords many assets on open market are low quality litigation value often drives up price Purchasing directly from sellers Pros opportunity to find gems and high quality assets target technology areas that have highest strategic value Cons may take additional effort to shake assets loose 9
10 Patent Purchasing Types of sellers active sellers established and sophisticated licensing/sale programs HP, IBM, AT&T set valuation employ brokers and also direct sales grant back and encumbrance issues, restrictions on assertions quick deal flow possible potential sellers understand need to maximize shareholder value on IP investment willing to consider offer packages fewer encumbrances and restrictions on assertions more lengthy deal flow possibility to find hidden gems unwilling sellers many Korean and Japanese companies do not want their patents to become embroiled in US litigation dynamics 10
11 Should I Sell Patents? Patent sales can be an effective way to demonstrate the value of your company s IP program and fund future innovation Considerations which patents should I sell? core v. non-core what are they worth? who needs to approve? what rights should I retain? do I care who buys my patents? do I care what they do with them? 11
12 Conclusion The IP world is changing rapidly Companies need to be more thoughtful than ever before about the composition and potential deployment of their patent portfolios Today s liquid patent market provides companies with opportunities to recalibrate and right-size their patent portfolios 12
13 Thank you! 13
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