How can you be sure you are conducting proper diligence on IP assets when evaluating large patent portfolios during a potential merger & acquisition? Kent Richardson presents with several other IP experts as to how to conduct and budget diligence regardless of asset number, patent families or tech landscapes.
2. 2
Agenda
• Diligencing big portfolios – Hoo-min Tong
• How to integrate diligence resources – Duane
Valz
• Learnings and gotchas in IP M&A – Jeremiah
Chan
• Back to the basics – how to stop wasting time
early on in diligence – Kent Richardson
5. 7300+ Motorola Mobility US Patent Matters
High-Level: Gain an Understanding for the “Value” of the Portfolio
Deeper-Level: Find the 100-200 “Best” Motorola Mobility Patents
for Expert Review (Will vary by Objective)
?
?
?
How do we go
from here…..
…… to here
7. High-Level: Gain an Understanding for the “Value” of the Portfolio
FILING HISTORY
GRANT HISTORY
KEY INVENTORS
CITATION ANALYSIS
CLAIMS ANALYIS (expert system)
FOREIGN FILINGS ANALYSIS
These analytics are supporting Inputs to the “Valuation Process”
Deeper-Level: Find the 100-200 “Best” Motorola Mobility Patents
for Expert Review
By Technology or Objective (eg. Speech Processing)
BEST CLAIMS
SEMINAL PATENT ANALYSIS
PATENT FAMILY ANALYSIS
LICENSING OPPORTUNITIES
ASSIGNMENT ANALYSIS (expert system)
These analytics support the Attorney and Expert review
11. 11
Agenda
• Diligencing big portfolios – Hoo-min Tong
• How to integrate diligence resources – Duane
Valz
• Learnings and gotchas in IP M&A – Jeremiah
Chan
• Back to the basics – how to stop wasting time
early on in diligence – Kent Richardson
13. Integrating Diligence Resources (cont’d)
• Valuation is tricky and more of an art than a science
• Driven by sound analysis, but significantly impacted by whether
interest in the portfolio is:
– competitive vs. unilateral
– driven by monetization vs. strategic objectives
– complimentary to existing holding vs. filling portfolio white spaces
– etc.
• VALUATION OBJECTIVES SHOULD FRAME THE DILGENCE
METHODOLOGY!
– To the extent there is no such thing as a fully objective and standard
valuation model, understanding a deal’s key goals and value drivers
should inform how diligence is organized and undertaken
16. 16
Agenda
• Diligencing big portfolios – Hoo-min Tong
• How to integrate diligence resources – Duane
Valz
• Learnings and gotchas in IP M&A – Jeremiah
Chan
• Back to the basics – how to stop wasting time
early on in diligence – Kent Richardson
23. 23Privileged and Confidential
Agenda
• Diligencing big portfolios – Hoo-min Tong
• How to integrate diligence resources – Duane
Valz
• Learnings and gotchas in IP M&A – Jeremiah
Chan
• Back to the basics – how to stop wasting time
early on in diligence – Kent Richardson
26. Accelerating Patent Diligence
Version 1 Offering
• Common, electronic patent diligence interchange format (Excel)
• Diligence tiers defined
• Each subsequent tier takes more time for seller to prepare, but provides
more information to buyer
• Goal: 500+ deals distributed using new format in 2012-2013
• Benefits to:
• Buyers: minimum 5-15% decrease in diligence and intake costs to buyers
in 1st year
• Sellers: more eyes on their packages and higher likelihood of buyers
reviewing packages
• Future work:
• Further automation of format, certification of the diligence packet 26
27. Accelerating Patent Diligence
Deal Consensus™ Package Checklist
Item Silver Gold Platinum Included (Y/N)
Cover sheet completed ü ü ü
Excel list of assets provided in Deal Consensus™ format ü ü ü
History of assets ü ü ü
History of inventors Opt Opt
History of owners ü ü
History of offering ü ü
Reason for sale ü ü
Discuss technical problem addressed by patents ü ü
How do the patents solve the technical problem ü ü
Future users and markets ü
Total impacted market (TIM) ü ü
Serviceable impacted market (SIM) Opt
Other market information Opt Opt Opt
Encumbrances - list licenses ü
Encumbrances - list liens ü ü
Expected price range Opt ü ü
Comparable pricing information provided Opt
Are pricing models (e.g. DCF, monetization roadmap) available Opt
Timeline and bidding process described ü ü ü 27
28. Accelerating Patent Diligence
Deal Consensus™ EOU Checklist
Item Silver Gold Platinum Included (Y/N)
Featured patents and claims identified ü ü ü
Working technical definition provided ü ü
EOU has a word-for-word match ü ü
Any assumptions are clearly articulated as assumptions ü ü
EOU read is consistent with prosecution history ü ü
Claim terms are all supported by the specification ü ü
Use of terminology is consist across all EOUs in package ü ü
Background literature search conducted (this is not a prior art
search)
ü
Re-examination and opposition identified ü ü ü
EOU demonstrates that a single party is the infringer ü
Are inventor notebooks or similar materials available ü ü
28
http://dealconsensus.com