Patent Monetization: Legal and Business Strategies Evaluating Key Patents, Analyzing Options, and Implementing a Monetization Plan

Presenting a live 90‐minute webinar with interactive Q&A

TUESDAY, MAY 24, 2011

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

TdToday’ s facul ty features:

Randy J. Pritzker, Shareholder, Wolf Greenfield, Boston Michael A. Albert, Shareholder, Wolf Greenfield, Boston Joseph J. Cote, Jr., Managing Director, Cote Associates,Boston Phil Stern, Chief Executive Officer, yet2.com, Needham, Mass.

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Viewing Quality To maximize your screen, press the F11 key on your keyboard. To exit full screen, press the F11 key again. Strateggyically Buildin g and Monetizing a Patent Portfolio

May 24, 2011

Wolf, Greenfield & Sacks, P.C. | 600 Atlantic Avenue | Boston, Massachusetts 02210 | 617.646.8000 | 617.646.8646 fax | wolfgreenfield.com Today’s Moderator Randy J . Pritzker Wolf Greenfield Co-Chair, Electrical & Computer Technologies Group Executive Committee Member B.S., Electrical Engineering, University of Massachusetts 617-646-8247 J.D.,,g Boston College Law School [email protected]

© 2011 Wolf, Greenfield & Sacks, P.C. All rights reserved. 6 Today’s Panelists Joseph J . Cote Cote Associates Managing Director B.S., Naval Science / Systems Engineering, U.S. Naval Academy 617-335-5310 M.S., Finance,,g Strategic Plannin g and Or ganizational [email protected] Behavior, MIT

© 2011 Wolf, Greenfield & Sacks, P.C. All rights reserved. 7 Today’s Panelists Phil Stern yet2.com Chief Executive Officer A.B., Mathematics, Princeton University MBA, Harvard Business School 781-972-0603 [email protected]

© 2011 Wolf, Greenfield & Sacks, P.C. All rights reserved. 8 Today’s Panelists Michael A . Albert Wolf Greenfield Shareholder and Chair, IP Litigation Group A.B., magna cum laude, Harvard University M.A., University of California at Berkeley 617-646-8240 J.D., cum laude, Harvard Law School [email protected]

. Examppples of patent monetization

. Part 1 — Strategically building a patent portfolio

. How to do it well

. How to do it on a budget

© 2011 Wolf, Greenfield & Sacks, P.C. All rights reserved. 10 Agenda (cont) . Pt2Part 2 — MtiittMonetizing patents . Selection of patents . Valuation . Targets . Resources . Options . License . Sale . Litigati on . Closure © 2011 Wolf, Greenfield & Sacks, P.C. All rights reserved. 11 Introduction

. A patent may be . . .

. Sold

. Licensed

. Enforced to:

. Collect damages

. Get an injunction

. Johnson & Johnson v. Boston Scientific (February 2010) $1.7B settlement (3 cases) . C.R. Bard v. W.L. Gore (2009) $752M (inclusive of attorney fees, past damages, willfulness, costs, and ongoing royalty)

Settlements and Verdicts (t)(cont) . De Puy Spine, Inc. v. Medtronic $226.3M verdict, resulting in settlement of $179M . i4i v. Microsoft $200M + plus $90M added by judge . Injunction on Microsoft Word . Affirmed by CAFC; Supreme Court decision pending

Licensing Deals

. Qualcomm - $1. 3B plus continuing royalties

. IBM- $10B

. Katz- $2B

University Licensing

. Massachusetts Institute of Technology – $307.8M

. ClColum biUibia Universit y – $134. 3M

. University of California – $121.4M

. Harvard University – $77M

. Centocor v. Abbott (June 2009) $1.67B (largest patent verdict e ver , recentl y reversed on appeal)

. Alcatel-Lucent v. Microsoft (February 2007) $1. 52B jdjudgment t( (vacat tdbed by trial court)

. Mirror Worlds, LLC v. Apple, Inc. (Oct 2010) $625M jdjudgment t( (vacat tded by trial court)

. Uniloc v. Microsoft (April 2009) $338M judgment (reversed several months later)

. First, look at your goals

. Barrier to entry to competitors

. Grow market share

. Make money off patents

. Other

. Different needs in different industries

. Retail vs. high tech

. Large vs. small companies

. Corporations vs. universities

. Identify what is most important to protect

. Core technology, products that sell, etc.

. Expect those to change over time

. Look at competitive market

. Consider shifts or changes in future

. Where is market/competition

. Consider both U.S. and foreign protection

© 2011 Wolf, Greenfield & Sacks, P.C. All rights reserved. 22 Part 1 — Strategically Building a Patent Portfolio (cont) . Of course, consid er b ud get ary constraints . Average pa ten t filing and prosecution costs . $15-20K to file . $10-15K to prosecute to issuance . Timing . On average 3-4 years pending until issuance

. Resist changing due to business cycles

. Looking back, should have valuable, diverse portfolio

Panel Discussion . Concerns . Selection of patents . Valuation . Targets . Resources available

Panel Discussion . Licensing . Target strategy . Control issues . Valuation . Closing the deal . Need for suit?

Panel Discussion . Selling . Whether . How . To whom . How much

© 2011 Wolf, Greenfield & Sacks, P.C. All rights reserved. 30 Part 2 — Monetizing Your Patent Portfolio (cont) PlDiiPanel Discussion . Litigation . When and why sue . TtltiTarget selection . Choice of forum . Funding sources . Managing it . Winning!!!

75 Attorneys and technology specialists 91% Degree in science/engineering 64% Ph.D., M.D., Advanced degree 56% Prior industry experience

80+ Years serving clients

2749 Patents filed in 2010

© 2011 Wolf, Greenfield & Sacks, P.C. All rights reserved. 36 Wolf Greenfield Services . IP P rot ecti on . Patents, Trademarks, Copyrights, Trade Secrets . Licensing and all forms of IP transactions . Opinions . Patentability, infringement, validity, inventorship/ ownership . Litigation avoidance and planning . Arbitration and mediation . Clearance/design-arounds . Litigation (all IP) . All tribunals (Federal and State Courts, USPTO, etc.)

electrical and consumer computer products

chemical and materials medical Deep Expertise biotechnology mechanical

cleantech pharmaceutical