Tag Archives: Brody Berman Associates

The future of IP will be examined at the 10th IP Summit in Berlin

Uncertainty is putting pressure on patents, trademarks and copyrights. All are facing more scrutiny and a challenging future.  

Scrutinizing these fundamental issues on December 3rd and 4th in Berlin will be more than 600 IP holders, executives and investors attending the Intellectual Property Summit. Organized by Premier Cercle, it will be the tenth edition of the popular conference, held previously in Paris and Brussels.

This year’s Summit will attempt to deconstruct global IP trends and explore the future of IP rights – patents, trademarks, copyrights and trade secrets – as business assets. There will be 100 speakers from Europe, North America and Asia.

Plenary topics include:

  • What is the future of IP in the 21st century?
  • Is your nation ready for open innovation?
  • More IP rights or better enforcement?
  • The future of injunctive relief in Europe?

On Friday, December 4 at 2:20 (14.20), your intrepid IP CloseUp editor, BB, will moderate a panel on Patent Quality – Always Challenging; Never Simple. Panelists will include:

>Valencia Martin Wallace  Deputy Commissioner for Patent Quality  USPTO / US

>Daniel G. Papst    Managing Director  PAPST LICENSING Gmbh & Co. KG / DEU

> Christian Vejgaard   European Patent Attorney  ERICSSON / SWD 

Chair : Bruce Berman Principal  BRODY BERMAN ASSOCIATES / US  

11A Patent Quality – Always Challenging; Never Simple
Defining patent quality
– What is a good patent?
– Distinguishing validity from invention quality and value
– Establishing more reliable patents
– The impact of poor quality

The patent quality session will be followed by a session on patent transactions on which IBM, Samsung, Chipworks and Unified Patents and are scheduled to participate.

This year’s IP summit partners include IP CloseUp and Brody Berman Associates. 

For the full agenda go here.

To register go here.

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Image source: premier cercle; i-mop.biz

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Cross-Border IP Deals Scrutinized at Asia IP Business Congress

“Cross-border IP deals: bridges and barricades” will be a featured topic at this year’s IP Business Congress in Singapore, November 17-19.

Securing a patent license or sale is never been a simple matter, even under the best of circumstances. There is due diligence to conduct, skeptical executives to convince, and details that need to be negotiated.

When one or more deal participants is a continent away distances need to be traversed and diverse IPBC2imgrescultures and legal systems understood. There also is the problem of time zones and travel schedules.

In spite of these obstacles the number, type and demand for IP-related transactions have increased dramatically over the past decade, so too has the range of participants and types of assets.

The line up of panelists for this important IPBC Asia session is as follows, with your intrepid IP CloseUp reporter, serving as moderator:

“Cross-border IP deals: bridges and barricades”

Moderator:

Bruce Berman, CEO Brody Berman Associates Inc

Speakers:

Robert Aronoff, Founder and Managing Partner, Pluritas LLC
Masanobu Katoh, Executive Vice-President, Intellectual Ventures
Ruud J Peters, Chief Intellectual Property Officer, Royal Philips
Joo Sup Kim, Vice President of Intellectual Property, LG Electronics Co Ltd

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For a full IPBC Asia agenda, speakers and other details, click here.

“Patent Transactions in Transition” will be Addressed in Toronto

Evolution of IP Deals from Simple Licenses to Complex Portfolio Sales and M&A will be a Focus at LES Conference

The rapid evolution of patent transactions will be the focus of a presentation and discussion at the LES North America meeting in Toronto, Canada.

Patents have fared best among IP as financial assets, and today can be leveraged in different ways. Invention rights played a critical role in Google’s acquisition of Motorola ($12.5 billion, 17,000 patents, 6,000 applications) and in Nortel’s bankruptcy sale to the Rockstar Consortium for $4.5 billion. Buyers included Apple, Microsoft, Ericsson, RIM, Sony and EMC.

Patents have certainly played a part in the smart phone wars, with some of the largest damages awards granted in this area. (See Apple v. Samsung.)

The evolving role of patent transactions, or “Patent Transactions in Transition,” will be the focus of a workshop moderated by IP CloseUp’s Bruce Berman (of Brody Berman Associates)  at the Licensing Executives Society annual meeting on Tuesday, October 16 at 2:00. It’s session 3E. The LES meeting this year is being held at the Sheraton Centre Hotel, 123 Queen Street West.

Panelists will include Myron Kassaraba, partner, Pluritas, LLC, one of the leading patent transaction firms; Dan Henry, Senior Vice President, Business Development, WiLAN (NYSE:WILN), a publicly held IP licensing business; and Sanjiv Samant, Managing Director, Technology, for Canaccord Genuity (TSX:CF, LSE:CF), a global full-service investment bank.

This year’s LES attendees are invited to attend what should prove to be a timely session. Lively panel and audience q&a is expected.

Image source: tynax.com

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“Patent Failure” Fails to Recognize Danger of Too Much Repair

A Reply to Professors Bessen and Meurer’s Book About the Difficulty of Perfecting the Patent System

By Roya Ghafele and Benjamin Gibert

The publication of Patent Failure: How Judges, Bureaucrats and Lawyers Put Innovators at Risk (Princeton University Press, 2008) by James Bessen and Michael Meurer challenged the conventional wisdom on the relationship between patents and innovation.

The authors basically posit that the poor boundary definitions of patents result in over-litigation. Arguing that the costs of litigation create disincentives for innovators, Bessen and Meurer suggest that the IP system has fundamentally failed as a system of property rights for public firms in the USA. Industry analysts and public commentators have jumped on the findings to justify various positions in patent reform debates. Patrick Anderson and Joff Wild have already responded to some of the shortcomings in the Patent Failure study, particularly with regard to the interplay between infringement suits, stock prices and NPEs.

Assessing the Damage

Bessen and Meurer have clearly taken a leaf from their own book. The conclusion that badly defined patent scope results in costly litigation is based on narrow definitions of patent trolls, public firms, high-technology industries and litigation costs. While this narrow scope is necessary to make their analysis feasible, the accompanying qualifications to their conclusions seem to have been lost in the ensuing storm. Patents do still provide incentives to individual inventors and to the chemical and pharmaceutical industries. They are also likely to provide positive incentives for private firms operating in multiple sectors. Yet, round after round of Chinese whispers has morphed the study into a declaration that the patent system is fundamentally broken, rather than an exploration of where it is challenged, why it faces problems and how we can solve them.

That major high-technology firms supported the study, which concluded that patents on software are too abstract and ill-defined, naturally raises some questions. It is not surprising that major software patent infringers would welcome a declaration of a broken patent system. However, regardless of funding, these types of studies still fulfill important roles: 1) they encourage debate on the efficacy of the current IP system; 2) they identify avenues for possible reform. Perhaps it is here that Bessen and Meurer have the most to offer.

Specialized courts such as the Federal Circuit have expanded their influence over patent law in the past twenty years. Whether or not this means patents no longer work, it is important to recognize this development and understand its impact in the USA. Identifying detailed mechanisms to render patent claims more transparent and improve patent search is another welcome contribution. Yet the suggestion that increased patent fees can reduce the number of patent applications may come at the cost of locking out smaller innovators and gearing the patent system towards large corporate actors.

No Easy Solutions

While the economic and philosophic underpinnings of Patent Failure are easy to follow and coherent, there seems to be less reflection about the possible consequences of their recommendations. Other suggestions, such as exemptions from infringement repayments when technology is invented independently from the patent owner, seem useful on the surface but may prove extremely difficult to implement in practice.

Perhaps Bessen and Meurer’s most important contribution is simply the idea that the patent system must recognize the limits of its grasp, regardless of whether we currently know how to set those limits. By recognizing these limits we can start to understand how national institutions can support patent law to fuel innovation in an era of new challenges and opportunities.

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Dr. Roya Ghafele is the Director of Oxfirst Limited, a boutique consulting firm focusing on the economics of innovation and IP. Within the University of Oxford, she holds Fellowships at the Said Business School, the Oxford Intellectual Property Research Centre and St. Cross College. Dr. Ghafele worked as an Economist with the U.N.’s World Intellectual Property Organization (WIPO) and the Organization for Economic Cooperation and Development (OECD).  After having toured for five years as a ballet dancer she began her career in 2000 with McKinsey & Company. Dr. Ghafele is a consultant to Brody Berman Associates. roya.ghafele@oxfirst.com

Benjamin Gibert is a Research Associate with Oxfirst Ltd. Prior to joining the firm he was a research Associate in the University of Oxford where he graduated with distinction from Oxford and from Warwick University.
benjamin.gibert@oxfirst.com

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Innovative IP Models Generate Cash, Provide Alternatives

New Patent Businesses are Diverse and Well-Capitalized

A wider range of intelligent businesses are achieving higher returns on patents by extracting direct profits or providing defensive leverage.

The Patent Monetization Landscape below is a graphic illustration of these businesses developed by Brody Berman Associates in conjunction with the IP Investment Group at Coller Captial, a London-based private equity firm and one the of the leading independent patent holders.

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Size, Source and Strategy
The graph examines the relative size of these patent holders, whether they use their own patents or acquire them (or both), and how aggressive or defensive their strategy. A fuller exposition appears in The Intangible Investor, my column, running in the September IAM magazine.
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In this increasingly crowded and still evolving landscape few holders fit the same business mold, and only some can be considered outright “trolls.” The analysis shows that there are some entities that never sue, others that do so occasionally, and still others that are almost entirely about litigation.
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My hope is the Patent Monetization Landscape will serve as a springboard for further analysis of monetization strategies. (The graph is not drawn to exact scale and does not include life science companies or those whose primary income generation is through product sales.)
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As I explain in the upcoming Intangible Investor: “Operating companies are learning that they, too, can benefit from the [monetization] landscape as well as NPEs. Defraying costs associated with R&D, prosecution, PTO filings and litigation through a rights sale, purchase or partnership can provide valuable efficiencies and increase ROI, without necessarily increasing the risk of litigation or having to sue customers or vendors.”
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They also can help to secure the rights they need for sales and design freedom.
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A full-screen the Patent Monetization Landscape above can be achieved by clicking on the icon at the lower right of the slide.
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Image source: Brody Berman Associates


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Madison Avenue: An Emerging Center for IP Commerce

Mad Men Thrive in Mid-Town –

Once the iconic Main Street of the advertising industry, Madison Avenue has quietly evolved into a center for Manhattan’s emerging intellectual property businesses.

Don Draper, flamboyant Mad Men creative director, however, needn’t worry about the new neighbors cramping his style. They’re too busy pouring over patent claims on inventions to care.

Within a few square blocks of Madison Avenue, in mid-town Manhattan from 34th to 57th Streets, a group of notable, if somewhat secretive IP strategists, investors, lawyers and service providers work quietly. Many are leading the way in patent monetization or defense. Collectively they comprise a 21st century NY commercial center, similar to the fur, flower or meat packing districts of the past.

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Leading the pack are Altitude Capital Partners, 485 Madison, and Coller Capital, 410 Park Avenue, IP-focused investors.  ACP is one of the leading funds for IP oriented investing and UK-based Coller is one of the largest independent holders and licensers of patents.

IP law boutique Berry & Associates at 551 Madison is led by Francine Berry, former chief IP counsel of AT&T and, more recently chief negotiator for a $2 billion patent licensing program, one of the most successful in history.

Former New York Kirkland & Ellis patent litigator John Desmarais recently established IP law firm Desmarais LLP at 230 Park (home to IP research and communications firm Brody Berman Associates from 2003-2008). The law firm’s affiliate, Westchester-based Round Rock Research acquired 4,000 patents from semiconductor giant Micron Technology that his DLLP is licensing. At Kirkland, 601 Lexington Avenue, Desmarais was responsible for the $1.5 billion verdict in favor of Alcatel-Lucent against Microsoft, the largest plaintiff’s jury award in a patent infringement action.

Patent quality purveyor and prior art search firm Article One Partners is at 488 Madison (BBA HQ from 1990-1997), where former IBM and Microsoft chief IP business strategist and IP Hall of Fame member, Marshall Phelps, is director.  AOP has helped to mitigate patent disputes.

Also in mid-town is Fortress Investment Group (NYSE: FIG) at 1345 Sixth (Avenue of the Americas, for those out-of-towners). FIG is an investor in IPCom, licensing vehicle for key Bosch patents.  Brody Berman, 16 E. 34th Street, just west of Madison, and Amphion Innovations (LSE: AMP), UK-based VC and investor in IP-centric companies at 330 Madison, also hang in the hood. Amphion owns a major stake in business life science and business software companies like, DataTern, Inc., which has 29 patent licenses.

Technology transfer leaders Rockefeller University, NYU and Columbia are all in Manhattan, as is John Squires, former Associate Counsel in charge of IP at Goldman Sachs and currently the co-head of IP at Chadbourne & Parke, 30 Rockefeller Plaza. Also nearby at 1155 Sixth Avenue is Charles River Associates (NASDAQ: CRAI), the IP valuation and strategy firm.

If readers are aware of other IP businesses in the area, please convey them either in a comment or an email to me.

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Ironically, Madison Avenue’s namesake, James Madison, was The U.S. Constitution’s leading proponent of strong IP rights. He successfully argued against Thomas Jefferson in the Federalist Papers #43 for a patent system that would facilitate innovation and generate commerce. Exclusivity in exchange for sharing ideas, Madison reasoned, is a great deal for a growing nation, especially those looking to establish new ideas. Though he was a prolific inventor, Jefferson was less enthusiastic about granting patents.

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Why Mid-town Manhattan North? Possibly because IP businesses require less space and fewer people, and the recession has made office rents somewhat more affordable. Also, it is useful to be in proximity to the many investment funds and law firms that populate the area, and there is nothing like Madison Avenue for commuting convenience. (Besides, you never know who you may run into in line at Starbucks.) Like venture capital mecca Sand Hill Road in Silicon Valley, business opportunities can be found just about everywhere, including the parking lot or at the kids’ soccer practice.

Back in March of 2010 I wrote about Palo Alto as an IP center. Have Manhattan’s creative, advertising geniuses of the 1950s and 1960s like David Ogilvy evolved into smartphone-fingering IP purveyors?

Not exactly, but the innovative edge in this part of the City clearly has shifted from manipulating analog images to monetizing intangible assets.

Given the Big Apple’s track record for turning forward thinking into successful commerce, Madison Avenue’s IP businesses are poised for growth, even if they prefer not to advertise it.

Image sources: FreidmanArchives and DVDActive.com

BBA has advised some of the businesses mentioned in this post.


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