Architects of roi in iP

Attorney Advertising

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

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

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

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.

Ronald J. SchutzChair, National IP Litigation Group;Regional Managing Partner, New YorkRJSchutz@rkmc.com

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 GroupJMConlin@rkmc.com

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 MRLueck@rkmc.com

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 CommitteeMRButler@rkmc.com

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 GroupCAMorton@rkmc.com

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.

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

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

rjschutz@rkmc.com

601 Lexington Avenue

Suite 3400

New York, NY 10022-4611

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