Posts Tagged: "Patent Business and Deals"

Abha Divine is the founder and managing director of Techquity Capital Management, which is an IP investment firm that partners with IP owners to help them deploy their assets into untapped markets to broaden their reach and increase liquidity.We discussed the changing IP investment landscape and deals used to focus nearly exclusively on the number of patents transacted. Of course, that changed in the wake of recent substantive patent law changes. The focus of deals, at least those that were being done over the past few years, was quality. But now we are starting to see the marketplace value quantity again, but not at the expense of quality.

While the startup probably had an initial 100% market share due to a temporary de facto monopoly, such share rapidly decreases as soon as others start selling to the same customers. Worse, many times, one of those fast followers is a large entrenched company that has deep R&D teams, seemingly unlimited budgets, well-known brands and established distribution channels in many key geographies that took decades to build. They can play catchup really fast. In other words, the only thing going for the startup at that point (assuming it could not possibly achieve this scaling up over such a short period of time) is the uniqueness of its technology and its ability to out innovate others. This in turn is only true if the new technology it brings to market is adequately protected against free riders; otherwise one is simply doing others’ bidding and subsidizing their R&D… In short, innovation without protection is simply a form of philanthropy!

Ashley Keller: ”I am mildly bullish, because we’re coming from such a low point that it is likely to improve from here. We just talked about the Supreme Court and the willfulness case. I also think that Europe’s unitary patent system is going to be an eye-opener, because it has the potential to be better than our system’s status quo. Competition is a healthy force, and the new system will drive innovation over there. People are going to pay attention to that, and as a consequence, it may improve things over here.”

It should go without saying that a good team is a necessary ingredient toward building a successful patent operation. Unfortunately, many companies think they can check the “IP team box” once an in-house IP lawyer has been hired, and/or outside prosecution or litigation counsel has been retained. While those are often necessary ingredients for executing on the patent front, they are by no means the only ingredients. More is required, particularly in today’s patent market, which not only requires an understanding of patent prosecution, but a keen understanding of the business, strategic and financial aspects of patents.

Although the job of developing the patent portfolio never ends, once the assets begin to reach a critical mass it becomes equally important to tactically manage the portfolio. Because if not managed properly, a patent portfolio will not only fail to generate revenue, it will also drain the company coffers. With this in mind it is essential to know thy portfolio, prune thy portfolio and monetize thy portfolio. When many think of patent monetization, patent sales and licensing (in and out of court) are what come to mind, but there have been a slew of anti-patent court decisions that patent owners need to consider before monetizing. Crisis is often said to spawn opportunity and the patent world is no different. Uncertainty in the litigation arena has spawned new, non-litigation offerings to innovators desirous of leveraging the value of their patents.

To compete in our new innovation ecosystem — no matter big or small — there are a handful of competencies that an organization should master when it comes to their patent operations. At the risk of over generalizing, these are (1) sound portfolio development, (2) sound portfolio management, (3) building the right team and (4) smart patent deal-making. Although it is nearly impossible to condense actionable wisdom into a multi-part series on the subject, what follows is my attempt to do just that.

After a 13% decrease in patent litigation in 2014, we are currently back to the same level of activity that we saw historically, with 2015 shaping up to have an average of circa 5000 new cases. Now the REALLY interesting data point is that most cases (roughly 70%) were brought this year by an operating company… Although the pendulum has by no way stopped its course and there are still many forces at work that wish to push it to swing even further, its momentum has definitely slowed.

There seems to be a popular belief that the market for patents is dead, but if you look at recent transactions through Q1 of 2015, there are at least some signs that the patent marketplace is becoming more active. There have been a number of high profile acquisitions in the pharmaceutical space over the last four months, and last week Sony acquired OnLive’s patent portfolio. Earlier today Akamai Technologies, Inc. announced that acquired Octoshape, which will give Akamai access to Octoshape technologies that optimize the quality of video streams for over-the-top content and to enable Internet Protocol television solutions.

While timing a bottom is never a good investment strategy, recognizing a bottom does present real opportunity. As the 18th century British nobleman Baron Rothschild is famously quoted as saying: “The time to buy is when there’s blood in the streets.” This contrarian philosophy is based on the realization that when things hit bottom they can’t get any worse, and can only get better. In the patent/innovation sector there are some recent signs that things may have hit the bottom and be trending up. The Supreme Court did not say software is patent ineligible, and we know from previous decisions that at least some business methods are in fact patent eligible. The Federal Circuit finally found software patent claims patent eligible and Senator Dick Durbin (D-IL) seems to have no appetite for patent reform.

David Morland, a partner with 3LP Advisors, moderated the first panel. He lead off the segment by pointing out that in the United States patents are being both applied for and issued in record numbers year after year. He also started the substance of the program today by pointing out that the people who own patents in the United States do not seem to believe that the asset class has been devalued. “Maintenance fee payment rates have raised, particularly with respect to the twelve-year payment, which suggests that those who own the assets do not think they are diminishing in value,” Morland explained.

It has been several generations since Congress has enacted changes to the patent laws that gave greater rights to innovators, the Supreme Court today is reminiscent of Courts in the past that had never seen a patent that contained valid claims, and the Federal Circuit is infatuated with de novo review and willingness to rubber stamp invalidity decisions parroting the Supreme Court’s intellectually dishonest and logically inconsistent tests. In the wake of all of this uncertainty and outright vilification of inventors and the patent system, there are some in the licensing and monetization industry who are trying to bring meaningful financial innovations to the fore. For the foreseeable future, given the reality of a completely dysfunctional federal government and judges more interested in being legislators, we can hope that thought leaders with new patent monetization models can provide a solution that will keep innovators inventing and society benefitting from the fruits of their labors.