JPAA International Activities Center Yoshiyuki “Yoshi” Inaba TMI Associates

IP Transaction / Monetization in Asia

-AIPLA MWI, Orlando 2015-

Old Model: Patents Protect Products  　

World’s Largest Patent Portfolio for defensive purposes       ・ to protect their products ・ to enable freedom to operate ・ to be ready for cross-licensing

Role of Patent Portfolio in Japan

New Model: Patents Themselves Are Products New US-style way of using patent portfolio ・ to foster collaboration and underpin open innovation platforms ・ to access financial markets ・ to enter into Patent Transaction activities ・ to monetize

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Types of Patent Transactions (Basics)

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Players in Patent Transactions

1. Operating Companies NEC, Panasonic, Renesas Electronics Hon Hai, Lenovo

2. NPEs/PAEs Intellectual Ventures Japan, Acacia Research Group, Conversant IP Japan, Syndefense, Transpacific IP

3. Aggregators RPX Asia

4. Funds IP Bridge

5. Trolls

High-profile figures from in-house IP/Legal Departments of big Japanese operating companies.

IP Bridge

Mr. Shigeharu Yoshii: Former Senior Vice President of SANYO Electric Co., Ltd.

Conversant IP Japan

Mr. Hiroyuki Takahori: Former Pioneer employee

Intellectual Ventures Japan

Mr. Masanobu Kato: Former Chairman and Representative Director, FUJITSU RESEARCH INSTITUTE

People in Patent Intermediaries /NPES

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Acacia Research Group

Mr. Hiro Seki: Former Chief IP Officer a General Manager of Renesas Electronics Corporation

RPX Asia

Mr. Kyoichi Ideno: Former SEIKO EPSON 　　  CORPORATION, IP Deputy General Administrative Manager

Syndefense

Mr. Hisao Yamazaki: Former Hitachi IP div. , then RPS Asia

People in Patent Intermediaries/NPES (Cont’d)

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Patent Transactions by Japanese Corporations

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NEC sold flat-panel patents to Hon Hai for $122 million (Sep 2012)

Hon Hai US affiliate MiiCs & Partners sued Toshiba, Funai Electric

and Mitsubishi Electric based on patents that probably include

those Hon Hai obtained from NEC.

Panasonic sold 900 semiconductor patents to a Canadian NPE, Wi-LAN (Dec 2013) and some other patents to Inventergy and SISVEL.

Panasonic sold 857 electronics patents to IP Bridge (2014)

NEC sold 3,800 mobile patents to Lenovo (April 2014)

Renesas Electronics and Acacia Research strengthen Patent Partnership Alliance (July 2014) -----privateering

ROHM Semiconductor has entered into a privateering agreement with Wi-LAN on a patent portfolio relating to semiconductor technology.

Other Approaches by Japanese Corporations

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Canon became one of the founding members of License On Transfer Network (LOTNET).

LOTNET members give each other royalty–free licenses to any

patents that they sell on to other entities, thus limiting the impact

if they end up in the hands of NPEs.

Toyota a few weeks ago revealed that it would grant access to

thousands of its Fuel Cell Vehicle related patents on a royalty

-free basis.

It shows countrymen that patent value creation does not have to

be about lawsuits or aggressive monetization of patents.

Other Activities In Asia

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Japan

• IP Bridge

China

• Tianjin Binhai International IP Exchange, IP Bank-China, Zhi Gu

Korea

• Intellectual Discovery, IP Cube Partners

Taiwan

• Taiwan Medtech Fund, IP Bank-Taiwan

1. Many IP Funds Established in Asian Countries

In March 2013, Intellectual Property Office of Singapore (IPOS)announced “Intellectual Property Hub Master Plan” to be accomplished in 10 years.

1. Hub for IP Transactions and Management 2. Hub for Quality IP Filings3. Hub for IP Dispute Resolution

There are similar movements in Hong Kong.

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Other Activities In Asia (Cont’d)

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2. IP Hub Master Plan in Singapore

3. IP- Based Financing Malaysia Singapore China

Conclusion

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Change of Approach in IP value creation is on its way in Asian countries, especially in Japan; From Defensive To Offensive.

However, there are many corporations who are still reluctant to enter into

aggressive monetization of their patents or deal with NPEs for

privateering.

Toyota’s announcement of royalty–free license on FCV patents shows

that patent strategy is not a binary choice of assertion or nothing.

Instead, once you own a strong portfolio, what you have is a range of

options and a great deal of flexibility to create additional value from

patent assets.

Most Important: Build Strong (large & good quality) patent portfolio!

Thank you for your attention!

Yoshiyuki “Yoshi” Inaba TMI Associates