Intellectual Property Assets:
The Need for a Strategy
Presented by
Ron Epstein and Marc Kaufman
IPotential Confidential © IPotential, LLC, 2007
Types of IP Protection
 Patent
 New
and useful machines and processes
 Copyright
 Creative
works
 Trademark
 Words,
logos used in connection with sale of
goods
 Trade
Secret
 Secret
information that provides business
advantage
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Addressing IP
 Copyright,
trademark, trade secret
 Analogous
to old media
 New technology issues
 Patents
 Relatively
new to media industry
 Potential biggest threat
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Intellectual Property – An Untapped Asset
 IP
is the Most Underutilized Asset in
Business
Unrecognized on most balance sheets
 Typically, an “afterthought” in business

 IP
is One of the Largest Opportunities
to Increase Strategic Business Value
Generate new business opportunities
 Create barrier to entry for competitors
 Influence and guide technology/market
directions
 Provide a defense to allegations by competitors

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Patents – An Unrealized Threat

IP Represents a Significant Business Risk




Patent filings increasing re media technologies
Number of patent suits doubled from 1992 to
Litigation cost at $3 - 5M/per patent
Patents Asserted in Media Industry










Lucent (MPEG2)
Acacia (digital file transmission)
Gemstar (TV schedule listings)
Intervideo (DVD)
Burst.com (digital media transmission)
Creative (media player UI)
Overture v. Google (ad placement)
USA Video Interactive (on-demand programming)
Global Patent Holdings (web pages with compressed images)
AT&T (MPEG video compression)
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Top 20 Holders of Patents Related to Software Co’s*
 IBM
 Canon
 Sony
 Hitachi
 Microsoft
 Xerox
 NEC
 Sun
 Fujitsu
 Fuji
10,206
7,821
3,135
2,643
2,633
2,390
2,143
1,887
1,780
1,650
 Kodak
 Intel
 Matsushita
 Toshiba
 Sharp
 HP
 Ricoh
 Samsung
 Mitsubishi
 Motorola
1,633
1,624
1,381
1,333
1,262
1,217
1,003
825
492
475
Most S/W Patents Held By “Hardware Companies”
* List calculated based on those holding patents in the same patent classes as SW Co, and does not count
all software patents
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Patent Strategy – How to be a
Player
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Patents Are Strategic Assets
Defend the homeland
Collect tolls for use of
your property
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Patent Value Drivers

Value Comes From Use, Not Technical
Sophistication
Patents, like land, get their value from location
Patents only valuable if they read on (significant)
revenue



Primary Drivers
Demonstrated Infringement

• Actual use, applicability to standards
• Likelihood of continued or future infringement, breadth of
claims
Affected Revenue (Current)
Encumbrances



Secondary Driver
Potentially Affected Revenue (Future)

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Confidential © Privileged
IPotential,&LLC,
Confidential
2007
9
Hierarchy of IP Value
Biz Strategy
Driver
Build Markets and Relationships
Design Freedom
Manage Competition
Protecting Inventions
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Potential Return
Deliver Revenue
Generating Value
Ingredient Technology Co.’s
(e.g. Rambus, Qualcomm)
Biz
Strategy
• Assertion Based Licensing
• “Carrot Licensing”
Deliver Revenue
• Patent Sales
Markets Development
• Use Innovation To
Develop And Enhance
New Products And
Markets
Design Freedom
Manage Competition
• Primary Driver of Most
Businesses
Protecting Inventions/Recognition
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Patent Strategy
 Establish
an IP culture
 Expand
interest beyond copyright
 Demonstrate value
 Develop
Patents with end in Mind
 What
is the purpose for you
 Budget
 Quality control
• Unlike copyright, patents require attention
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Contact Information
Ron Epstein
CEO
1440 Fashion Island Blvd.
Suite 600
San Mateo, CA 94404
650.572.9500
[email protected]
W: www.IPotential.com
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