Patent Based Business Models - Copyright Immendo Ltd 2011

Patent Based Business Models

2010 02 07 Marcus Malek

©Immendo Ltd. 2011

© Immendo Ltd. 2011

Agenda

• Background – What you can do with patents and why it’s a business

model.

• The importance of Litigation – Why it’s the double edged sword that drives the market

• Patent Based Business Models – From A – Z of making money from patents

• Other IP Based Business Models – Believe it or not; not everything is patents

• Key take outs and next steps

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BACKGROUND

What you can do with patents and why it’s a business model.


So, let’s start on the easy side of things, 6 months into ICM, what can you do with patents?

• License • Sell • Litigate • Give away • Collateralize • Securitize • Raise funds • Sell rights to license • Sell rights to litigate • Insure • Insure against lawsuit

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And because it’s IP/IPR, the options are not mutually exclusive

• Either do the “simple” way – Litigate and license – Sell and keep license

• Or you could be a bit more exotic: – Litigate it, sell rights to license within certain fields,

offer free to NGOs/Uni/NFP

• Or you could go for leverage: – Securitize income streams within your field, keep

license and right to sub license, sell right to litigate within a certain field, try to sell patent for defense within other field

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So now we’ve seen the options – but what makes them into different business models?

• Revenue models/streams – How will we make money – What’s the frequency of payments

• Strategy – Can we make it fit with our existing business OR – Can we exploit a gap in the existing ecosystem

• Incentives / USPs – Why will it work – Do we have a larger agenda / greater good?

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Even if incentives and strategy seem difficult – the key challenge is revenues

• Usually when setting revenue models you use known metrics:

– Cost / supply chain costs

– ROI / IRR for invested capital

– Financial metrics from exits / PLCs

– Sales prices for products/services

• But more importantly, there’s also an existing market used for benchmarks ...

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So what are the benchmarks for patents?

• Royalty payments – Confidential

• Patents sales – Confidential

• Technology licensing – Confidential

• Collateralization rates/terms – Very confidential

• Securitization rates/terms – Some data, but very very small market

• Return criteria for investors – Very confidential

• R&D Costs – Large sums are public, but costing per patent is very confidential

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So how can you do any revenue modeling for patent based BMs?

• Looking at the market, there only seems to be one commonly agreed standard / benchmark

– Litigation and damages

• Although not perfect it does satisfy key criteria:

– Cost structures

– Returns (and timing of returns)

– Exit strategy

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THE IMPORTANCE OF LITIGATION

Why it’s the double edged sword that drives the market and business models.


Litigation / damages is popular since it sets the “Big number” you can then derive from

• Although not a perfect example, damages and income from litigation settlements has become the de-facto standard of modeling many patents revenues

• Looking at litigation would give you the “Big Number” to which you could then apply a number of discounts to suit your scenario.

• The main idea is (probably) that it does represent the opportunity cost of patents.

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Litigation The opportunity costs of patents?

• As an economist I find it helpful to think about litigation as the opportunity cost.

• As always in economics, it’s just a model: – Not every patent can be litigated

– Not true for new markets / tech

• But on a portfolio level for mature technology it’s a decent model.

• The most important limitation though – mainly (only?) works for US legal system.

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Before moving into business models, it’s probably helpful to explain litigation

• Litigation mechanics

• Punitive Damages

• The Cost Of Litigation

• Patent Trolls

• Nuisance Suits

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POP Quiz “How do you determine validity

and claim scope of a patent?

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• Do we have too many or too bad patents?

• Do we need specialist courts / judges?

• Can we really patent “anything under the sun?

• Is this really efficient – do we stifle innovation?

• Would it be better without patents?

• Is it really feasible to have to wait 3-5 years for a patent infringement trial?

• “Should we really file our suit in Delaware, I’ve heard Texas is better”?

The US Patent System (Chicken or the Egg)

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Regardless: There is an uncertainty.

An uncertainty you can bet on.

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And it seems as if more and more parties are willing to take the bet

Trends in patent filings and litigation 1991 - 2009

Source: PWC 2010

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Litigation Mechanics; a crash course - Leading up to the litigation

• Investigate the patents

• Use outside law firm

• Establish likelihood of infringement – Produce claim charts

• Contact potentially infringing party with your demands – Cease and desist

– Pay royalties

• If the other party does not respond – go to court

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Litigation Mechanics; a crash course - Steps in a litigation

1. File a complaint – Other party will answer and say:

• They don’t infringe • Your patent is invalid • You don’t own the patent

– And so the ball gets rolling..

2. File more detailed complaint and ask for a jury – Potentially change courts – Add extra lawyers

3. Other party potentially countersues – Not true for NPEs

4. You settle outside of court – If not, they you push the case through and bet on the outcome

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But people do settle, outside of court (In the 3 arenas – business wins)

Patent Infringement Cases2000 – April 2008 Five Districts (CAND, DED, ILND, NJD, TXED)

Source: Ropes & Gray, IPLC, Cornerstone 2009

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And if you don’t, you take a huge risk – but also go for the big bucks

Top 10 largest initial adjudicated damages awards: 1995–2009

Source: PWC 2010

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Punitive Damages – The root of all evil or road to Eldorado?

• Contrary to Swedish (and most European) systems, the US system awards punitive damages.

• For patent litigation it’s either lost profits, price erosion or a royalty based on sold goods.

• Up until recently these percentages have been large, leading to an escalation in damages.

Median patent damages awarded, 1995–2009

Source: PWC 2010

Type of Damages

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Tying on to our previous discussion Damages = “Big Number” used in

revenue modeling

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Looking at the upside, it’s a no brainer, but of course there’s a downside - cost

• Patent litigation is extremely costly, lawyer costs are by far the largest.

• As costs are often in the millions of dollars, a periodic payment scheme could be advantageous.

• This is the reason for so called contingency lawyers. – Take some money up front – Take a large piece (often 25%) from settlements

Source: RPX, Allied Security Trust, AIPLA

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Patent Trolls – Elephant in the room?

• Patent troll is the common (derogatory) term for companies not manufacturing products / doing R&D (NPE) and who make money mainly by litigating patents.

• With such a description companies like Rambus would end up in the same category.

• Although a popular target for “stifling innovation” by lawyers, NPEs also require lawyers for all their litigations.

• In reality – it’s a clever financial construction (all “moral / greater good”, thoughts aside)

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Nuisance Suits – Driving the value by exploiting the system?

• What people really seem to be upset about are litigations without a really profound infringement case.

• The US system has a built in mechanism where you can force people to court = force costs upon them.

• This incentivizes (according to some) parties to file a suit and hope for a settlement that would be smaller than answering the complaint. – In practice, trying to find an arbitrage situation.

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Regardless – NPE suits are increasing

The Number of Active Distinct NPEs as Plaintiffs

Source: Allied Security Trust, Patent Freedom

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But suits are mainly tied to Hi-Tech and to the large CE/Telecom companies.

Source: Allied Security Trust, Patent Freedom, : Ropes & Gray, IPLC, Cornerstone 2009

Damages, per tech sector.

Lawsuits, per tech sector.

Companies with most NPE suits.

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Litigation – Intermediate Summary

• Litigation is taking a bet, or actually many bets

• Litigation is very costly

• Most cases settle

• Litigation is mainly tied to high-tech

• If going for a verdict and winning, the sums are often multi million dollar

• Because of the large sums and people working on contingency – litigation has become a calculated bet.

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And as litigation has become a calculated bet with costs / income;

we have our first rudimentary patent (opportunity cost) revenue

model.

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PATENT BASED BUSINESS MODELS

A – Z of making money from patents


The A-Z of patent based business models.

• Overview of most (all?) known business models.

• Quick and dirty for comparison, rather than in depth knowledge.

• Looking at: – Incentives

– Typical Revenues

– Buyers, sellers, licensees

• Every business model will be exemplified with a company

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Offensive Patent Strategy

Defensive Patent Strategy

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Comparison of Patent Based Business Models

Source: Internal analysis

1. Design and license 2. Research, license tech + IP 3. Research & license patents 4. Research and litigate 5. Acquire and license 6. Acquire and litigate 7. Pool

a) Aggressive b) Non-Aggressive

8. IP Trust 9. Litigation Trust 10.Aggregation 11.IP Secondaries 12.IB Funds 13.Defensive Pools

a)Non-Profit b)VC Backed c)Open Source

14.Securitization 15.Collateralization 16.Brokerage 17.Consultancy 18.Auctions 19.Patent based ETFs 20.Invalidation

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1) Semiconductor design and license the designs and IP

• Description: Companies research, develop and patent semiconductor / IC / SoC designs and license the designs and the related IP and IPRs

• Typical licensors: Semiconductor manufacturers • Incentive: Stick to core business, no need to produce

the actual chips – enough to license. • Typical Structure: Listed / Private Company • Typical Income: Royalty percentages + up front for IP.

• Example: ARM. • UK based ARM are developing cores for application

processors (e.g. Cortex A8 or dual core Cortex A9) which then, as an example, becomes part of the processors in your iPhone 4, Samsung Galaxy Tab etc.

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2) Research and license technology and patents

• Description: Dedicated research centers that do R&D then generate IP which is then monetized together with technology through licenses or given for free within field of use or geography.

• Typical licensors: BigCo in same country • Incentive: Help country with innovation • Typical Structure: Part government, part BigCo • Typical Income: R&D funding and royalites

• Example: ETRI (Electronic and Telecom Research

Institute) • Korean, collaborating with Samsung, Hynix, LG

and are co-inventors plus give blanket license to Korean companies.

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3) Research and license patents

• Description: Doing R&D within specific field and then licensing patents, potentially litigating to companies within industry and also coming up with new solutions.

• Typical licensors: Companies within specific tech sector

• Incentive: Lower costs and stick to key skills • Typical Structure: Public / Private Co • Typical Income: Royalties and settlements

• Example: Rambus, • Developing new busses for RAM memories

and then aggressively licenses / litigates memory manufacturers.

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4) Research and litigate

• Description: Entities doing research within a field, patenting and then primarily litigating. Not focused on technological advances.

• Typical licensors: BigCo within certain tech field

• Incentive: Low Costs, aggressive returns • Typical Structure: Listed / VC backed • Typical Income: Settlements , Royalties

• Example: Interdigital • Performs R&D and litigates and licenses all

major handset manufacturers.

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5) Acquire portfolios and license

• Description: Acquiring mature portfolios and using licensing knowledge to generate returns. Also quite prone to litigation. Often acquiring known/”heritage” portfolios. Often operating on a portfolio basis.

• Typical licensors: Big Co, across technologies • Incentive: Knows the licensing/litigation

business, aggressive returns • Typical Structure: Small VC backed / public • Typical Income: Settlements , royalties

• Example: Wi-Lan • Canadian company, started with licensing

parental control technology, then quit R&D and started acquiring portfolios to license / litigate.

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6) Acquire patents or rights and litigate

• Description: Company solely relying upon third party patents. Acquiring them or just rights to them and then litigating aggressively. Often acquiring patents from lone inventors , small Co. Aiming to maximize value per patent rather than per portfolio.

• Typical licensors: Big Co across technologies • Incentive: Get “cheap” patents from small inventors,

share proceeds with them and lawyers. • Typical Structure: VC / Public • Typical Income: Settlements and licenses

• Example: Acacia • Has acquired more than 150 portfolios across many

technologies, setting up entities which then aim to maximize value for each patent.

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7) Pool the patents for standards a) Aggressive

• Description: Aiming to gather patents relevant to a certain standard and then licensing everyone using it. Often aggressively or prone to litigate.

• Typical licensors: Big and small Co within specific tech field

• Incentive: Securing a dominant position within a widespread specific technology, then making everyone pay their part.

• Typical Structure: Small / medium private company • Typical Income: Public royalty schemes, based on fixed

amount per product.

• Example: SISVEL • Seen by many as the epitome of this, trying to license

everyone to MP3 patents, which may or may not be invalid. But technology is widely used.

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7) Pool the patents for standards b) Non Aggressive

• Description: Aiming to gather patents relevant to a certain standard and then licensing everyone using it to promote interoperability and sales of products using it. Patents must be declared by the entity as a part of the program but are often still owned by original assignee.

• Typical licensors: Big and small Co within specific tech field • Incentive: Ensuring proliferation of technology through lowering

of licensing transaction costs. • Typical Structure: Consortium of BigCo • Typical Income: Public low-price, per unit, royalties from

everyone using the technology.

• Example: MPEG-LA • Great story within video. Promoting the MPEG-2 standard by

licensing every device at a fixed price, 2.50$, and creating massive incomes for the patent holders and something close to 1000 licensees.

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8) IP Trust work

• Description: Taking over IP matters for “sleeping” / holding companies.

• Typical buyer of service: Big Co • Incentive: Lower costs, give single USP for

people already needing other trust work • Typical Structure: Small Co in “tax haven” • Typical Income: Subscription based

• Example: IP Trust • New Luxemburg entity offering IP trust work

for any client listed in Luxemburg with less IP knowledge.

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9) Litigation Trust

• Description: Assigning patents from BigCo to a trust to generate income in “other name” on patents.

• Typical licensors: Big Co • Incentive: Maximize value of patents not core to

business. “Attack” entities which could be • Typical Structure: Trust or remote entity to

create “smoke and mirrors’ • Typical Income: Settlements

• Examples: Multimedia Patent Trust, Mobile

Media Ideas • MMP is an Alcatel-Lucent outfit litigating their

patents against BigCo • MMI is a trust litigating Sony and Nokia patents

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10) Patent Aggregation

• Description: Amass patents within technologies for FTO or strategically strong position. Emerging model with mainly one player. Income generated through licenses within fields or re-selling patents.

• Typical licensors / buyers: Big Co / New entrants • Incentive: Gather all patents from different assignees

to have blanket FTO and very strong licensing position • Typical Structure: Corporate backed • Typical Income: Licenses

• Example: Intellectual Ventures • IV is the main actor in this field having more than

30000 patents and supposedly generating more than 1$B through licensing and recently also starting with litigation.

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11) IP Secondaries

• Description: Use financial muscle to buy mature IP assets, add value, and resell, license, venture etc.

• Typical sellers / buyers: BigCo / Strategic, new entrant, entities in litigation

• Incentive: Providing liquidity in market, allowing for “cheap” purchase price, then adding value to acquired assets to generate high ROI

• Typical Structure: PE / VC backed. • Typical Income: Sales

• Example: Coller IP Capital • PE Fund, acquiring mainly large portfolios,

reselling/licensing smaller parts at attractive ROI/IRR

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12) Investment Bank Funds

• Description: Investment bank funds investing in patents instead of financial assets. Using typical GP/LP structure and bank being passive but raising funds from institutions / private wealth.

• Typical investors / GPs: Private wealth / known IP management firms

• Incentive: Give investors alternative/exotic options for diversification

• Typical Structure: Fund is LP, once raised it hands capital to GP to manage investment

• Typical Income: Sales, licensing, venturing

• Example: Austrian Alpha Patent Funds • Have raised 150+ M EUR over 4 funds. But have been

troubled with their GPs, changing many times. To date not generating any returns.

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13) Defensive patent pools a) Non-profit

• Description: Offering subscriptions to companies to fight NPEs. Members put money in escrow and the pool gathers patents which the members can take a license to at their discretion.

• Typical members: 1+ $B Companies • Incentive: Fight NPEs, “insurance”. Pool finds

“toxic patents” and members take a license. • Typical Structure: Trust or similar • Typical Income: Member fees

• Example: Allied Security Trust • So far the only one. To date around 20 members

and acquired approximately 350 patents (in 24 portfolios).

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13) Defensive patent pools b) VC Backed

• Description: Offering “lawsuit protection” to members, who pay membership based on size. The pool chooses which patents to buy and members get a license. Patents then re-sold. Assets acquired mainly from NPEs or litigiuos entities.

• Typical member: Big and small Co in litigation prone industries

• Incentive: Pay up front fee to lower litigation strain • Typical Structure: VC / PE backed. • Typical Income: Member fees, re-sold portfolios

• Example: RPX • The main (only?) actor in this field and ar right trying

to IPO. They have around 70 members paying 50k – 5$M per year. To date they claim to have invested 250 $M. RPX is backed by very well known VC’s.

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13) Defensive patent pools c) Open source

• Description: Pool to gather all patents for specific technology area and make them freely available.

• Typical licensors: Smaller or software based companies

• Incentive: Promote certain software, open innovation “everything should be free”

• Typical Structure: Company backed / consortium • Typical Income: Fees from consortium, often

non-profit

• Example: Open Invention Network • Promoting Linux. Wants to buy all Linux patents

and make them freely available. Promoted by Novell, Red Hat, Sony, NEC, Philips, IBM

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14) Patent Securitization

• Description: Securitization of patents or patent royalty streams. Then turned into financial instrument you can invest in.

• Typical parties: SPV and underwriters • Incentive: Generate leverage for party

securitizing, gain money from interest for borrowers

• Typical Structure: Bank backed SPV • Typical Income: Interest plus transaction costs

• Example: Royalty Pharma • Most well know example, where royalty streams

from pharma patent licensing were securitized in an SPV which the attracted many investors.

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15) Patent Collateralization

• Description: Collateralizing patents or patent revenue streams to get. The problem is to bridge the understanding gap and the proper interests

• Typical debtors / creditors: Small Co, startups • Incentive: Get loan using patents, but not pay

too high interests • Typical Structure: Boutique Banks • Typical Income: Interest and potential patents in

case of default.

• Example: Paul Capital, Alset IP, Paradox Capital • All doing collateralization. But more details don’t

exist.

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16) Brokerage

• Description: Acting as a proxy for a market place and joining buyers and sellers of patents.

• Typical buyers / sellers: Big Co, new market entrants, parties in litigation

• Incentive: Helping people find the patents they need.

• Typical Structure: Small, or even one-man-bands, well connected in the market.

• Typical Income: Transaction percentage

• Example: Thinkfire, iPotential • Perhaps the most well known. Both claim to

generate 1+ $B in transactions

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17) Consultancy

• Description: Specific IP/Patent consultants • Typical clients: Technology heavy BigCo or

SMEs • Incentive: Provide expertise and specific

knowledge • Typical Structure: Private Co • Typical Income: Running fees and potential

success fees.

• Example: IP Value • IPV are good example of this. VC backed and

helping stalwarts like BT, Xerox and PARC.

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18) Auctions

• Description: Conducting patent auctions and in such a way matching buyers and sellers.

• Typical sellers / buyers: Small Co, lone inventor / Intellectual Ventures, NPEs

• Incentive: Trigger buying environment for high price through competitive bidding. Trying to lower information asymmetry through DD material.

• Typical Structure: Small Co • Typical Income: Percentage of transactions

• Example: ICAP Ocean Tomo • Ran a number of auctions, but were never successful

long term. Mainly IV as a buyer and very large gaps between expected and actual prices.

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19) IP Based ETFs

• Description: Create an ETF based on IP performance or IP heavy/savvy companies.

• Typical investors: Assuming people looking for exotic diversification alternatives

• Incentive: Use IP strength as proxy for companies and bundle them as diversification ETF

• Typical Structure: Traded SPV • Typical Income: ROI and costs for management

• Example: Ocean Tomo • Are running 3 indexes on NYSE: Euronext, where

the basket of companies with the strongest patents.

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20) Patent Invalidation

• Description: Offering service of invalidating patents on behalf of clients.

• Typical buyers: Companies in litigation • Incentive: Using crowdsourcing to invalidate

patents as a defense/tactic in litigation • Typical Structure: Small Co, large network • Typical Income: Paid per assignment

• Example: Article One Partners • AOP is running such a program and has CIP

advocate Marshal Phelps on their board.

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Comparison of Patent Based Business Models

Source: Internal analysis

1. Design and license 2. Research, license tech + IP 3. Research & license patents 4. Research and litigate 5. Acquire and license 6. Acquire and litigate 7. Pool

a) Aggressive b) Non-Aggressive

8. IP Trust 9. Litigation Trust 10.Aggregation 11.IP Secondaries 12.IB Funds 13.Defensive Pools

a)Non-Profit b)VC Backed c)Open Source

14.Securitization 15.Collateralization 16.Brokerage 17.Consultancy 18.Auctions 19.Patent based ETFs 20.Invalidation

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Interim Summary - Patent Based Business Models -

• There are many models, across the spectrum of funding and strategy.

• Many business models practiced by mainly a single entity.

• Roughly evenly split between offensive / defensive models and corporate / institutional funding.

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OTHER IP BASED BUSINESS MODELS

Believe it or not; not everything is patents


Copyright Sales

• Description: Selling portfolio of copyright, often rights to music catalogues.

• Typical buyers / sellers: Financial Institutions / Struggling artists, estates, record labels

• Incentive: Liquidity and exit for record labels • Typical Structure: Varies • Typical Income: Transaction percentage for brokers and

then running royalties on all music

• Example: The rights to Michael Jacksons music has been sold a couple of times, for example Dutch pension fund ABP owns two catalogues.

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Copyright Securitization

• Description: Securitizing income from artistic works to, with help of investment SPV, to get more funds.

• Typical investors / debtors: Exotic investors / struggling artists • Incentive: Alternative way of financing for artists / record labels. • Typical Structure: SPV which owns royalty streams, investors invest

in that SPV according to share. • Typical Income: Transaction costs + interest • Example: David Bowie famously securitized his back-catalogue into

a bond (so called “Bowie Bonds”) to free up cash for his next album.

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Trademark Sales

• Description: Selling trademarks

• Typical buyers / sellers: New entrants, Big Co / struggling companies, estates

• Incentive: Liquidity

• Typical Structure: Brokered deals

• Typical Income: Transaction percentage

• Example: A quite famous trademark, iPad, was sold from Fujitsu to Apple in 2010. Another example is the trademark “GI” which is now being auctioned.

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KEY TAKE OUTS AND NEXT TIME


Key Takeouts

• Litigation is important as it is often the way to maximize financial income of a patent.

• Litigation is increasing and driving a number of business models.

• There are roughly 2 dozen business models, with widely different strategies, funding , revenue models etc.

• Most patent business models are very new, people are still exploring new options.

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Next time we meet..

• We’ll discuss the patent marketplace

• Besides more discussions on strategy, we’ll also focus on: – Pricing and valuation

– The ecosystem

• And try to answer some questions: – Is there really a patent marketplace?

– Can we use proxies from other assets to model a market?

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Thank you for your attention!

Any questions? [email protected]

Patent Based Business Models - Copyright Immendo Ltd 2011

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Transcript of Patent Based Business Models - Copyright Immendo Ltd 2011