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Louis Carbonneau

Founder & CEO

Tangible IP

Mr. Carbonneau is a recognized expert in intellectual property with close to 30 years of professional US, Canadian and international experience in all facets of intellectual property law and business. He is a former patent litigator with a national IP boutique firm and the former General Manager of IP Licensing at Microsoft Corporation where he spent 15 years. The prestigious British magazine Intellectual Assets Management (IAM) recently named him for the fourth consecutive year as one of the World’s Leading Intellectual Property Strategists.

Mr. Carbonneau is currently CEO of Tangible IP, LLC, a patent brokerage and strategic intellectual property advisory firm, focusing on IP monetization and strategic IP advisory services. Since he founded the firm in 2011, Mr. Carbonneau has brokered the sale of over 2000 patents, returning tens of millions of dollars to patent owners and inventors and has helped several technology clients define their IP strategy and reduce both business risks and costs when it comes to IP.

Mr. Carbonneau is also the founder and principal of The Point Law Group, PLLC, a boutique law firm where he advises technology and clean tech companies with an emphasis on business and intellectual property related counseling & transactions. He is an adjunct professor for the University of Washington’s Graduate Program in Intellectual Property Law & Policy since 2009, where he teaches courses on IP Licensing. He has also served for several years on the Executive Committee of the Washington Bar Association Intellectual Property Section.

Finally, Mr. Carbonneau is a Venture Partner and strategic advisor to Cycle Capital Management, an early stage clean tech venture capital firm with close to $250M under management, and a Special Consultant for IP Strategies & Licensing to one of the largest startup incubators in Canada. He also sits on the Board of Directors for Waterford Energy Solutions Inc. and for HGI industries, Inc., two companies with disruptive technologies in the clean tech sector.

Mr. Carbonneau is a frequent guest speaker locally and internationally on the subject of intellectual property strategy, patent monetization, innovation and licensing and how they relate to business. Mr. Carbonneau is also an inventor himself and holds US international patents around multimedia technology.

Recent Articles by Louis Carbonneau

Will Vacancy Caused by Passing of Justice Scalia Put US Supreme Court in a Pinch on IP Matters?

Justice Scalia never hid the fact that patent law was his “blind spot”. He also admitted to often taking his cues on IP issues from his colleague Justice Ginsberg. On a Court that has not been kind to patent owners these past years, Justice Scalia, who never feared a bit of controversy, was generally considered as a “staunch defender of patent rights” (as long as they were valid) and viewed them, rightly so, as property. On the other hand, he is also the first Supreme Court Justice to refer explicitly to “patent trolls” (in the Commil case), and not in a good way… He also famously called out the Federal Circuit jurisprudence on obviousness as “gobbledygook.” Google it; it is not exactly a compliment!

The Patent Scrooges: The rise and potential fall of the efficient infringers

So it now looks like this: if you are a patent owner and feel that your rights have been encroached upon, you now have to assume there will be a challenge to their validity by a potential licensee through an Inter Partes Review (IPR). If you are one of the lucky few (~25%) who survive such a challenge with at least one valid patent claim, you then have to expect an appeal. Assuming you win that appeal, then the real court battle starts in earnest and you’ll have to face what has now become a $3-5M ordeal in legal fees to get through a full trial on the merits and the routinely filed appeal should you beat all odds and win. Treble damages for willful infringement have been rarer than a dodo bird sighting and even winning does not mean you will collect your money any time soon, as the Apple-Samsung saga has recently shown.

The Second Mouse Gets the Cheese – The Innovator’s IP Dilemma

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!

Are Patents Getting Their Mojo Back?

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.

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