Meet The IP Market Makers

Dana HayterThe A teamIntel’s dealmakerIn many ways, Dana Hayter’s 10-yearcareer at Intel has been all about goodtiming. A litigator turned transactionallawyer, Hayter joined the chipmaker justas the secondary market for patents wasstarting to take off. The opportunityto build patent portfolios throughacquisitions from companies, NPEs andother patent owners has opened up awhole new field of expertise for Hayter –one which he has been eager to embrace.Although it missed out on the Nortelpatent portfolio (it was part of theunsuccessful consortium led by Google),Intel moved quickly in the aftermathof that auction to build its IP assets,particularly in the mobile market. It pickedup around 1,700 patents from InterDigitalfor 375 million, a further 190 patents (and170 applications) from Real Networks for 120 million and an additional 75 millionportfolio from Aware.To Hayter, who has been a drivingforce in all of Intel’s recent patentdeals, the convergence of two trends –companies waking up to the value of theirintellectual property and the possibilitiesof a secondary market and the rapiddevelopment of smartphone technology– has raised the profile of intellectualproperty and driven the evolution of amarket that barely existed 10 to 15 yearsago. “People have learned they can be morestrategic with patent assets,” he says. “Insome cases, activist shareholders havestarted telling companies, ‘Do more withyour patents,’ but to successfully executeyou need to understand that the value ofpatents is variable and context dependent.”He says he can see some retrenchmentGuy Proulx, chairman andCEO, Transpacific IPBack in the early 2000s, Guy Proulxsensed that a huge opportunity existedin Asia. Companies, universities andindividual inventors in the region weresitting on untapped patent portfolios thatcould be put to work to generate returns.Founding Transpacific IP in Singapore in2004, Proulx originally set out with theaim of buying and monetising assets. Butthe firm soon found itself providing awhole suite of advisory and transactionalservices to Asian businesses and researchorganisations which had not previously hadaccess to IP intermediaries. Before long,Transpacific had opened offices throughoutAsia-Pacific to meet this demand. Proulx’srole in kick-starting Asia’s IP market –including facilitating Asia’s first-knownwww.iam-magazine.comBartlit Beck Herman Palenchar & Scott,Keller launched Gerchen Keller togetherwith former hedge fund investor AdamGerchen in early 2013 with the aim ofbacking both defendants and plaintiffs.Although Keller is a relatively new entrantto the litigation funding market, hisprospects look particularly bright.in the market after the valuation highs ofthe Nortel auction, but patents’ newfoundimportance as an asset class is not going todiminish in the near future. And he doesn’tsee the uncertainty in the market caused byproposed patent reform in Washington DCaffecting the corporate community.“It’s unlikely to have a dramatic impacton the secondary market,” he insists.“Of course, an NPE looking at patentsas a source of revenue from licensingor secondary deals may use a differentvaluation lens than a large tech companywhere IP strategy supports a wider productstrategy, but the secondary market willcontinue to offer an important way toimplement IP strategy.”Having moved from being a litigatorto a transactional lawyer earlier in hiscareer, Hayter joined Intel in 2004 and hascontinued to hone his expertise advisingon the patent dimension of deals. “Thecommon thread in my experience is thealignment of business strategy with legalstrategy,” he says.collaborative patent portfolio purchasein 2012 – ensures his place among IAM’smarket makers.(See interview, page 62)Ashley Keller, managingdirector, Gerchen KellerCapitalAshley Keller is undoubtedly one to watch.A co-founder of litigation funder GerchenKeller Capital, Keller is establishinghimself as one of the best-backedfinanciers of disputes, with a growingprofile in the patent market. That is partlydue to Gerchen Keller’s early success atfundraising. After securing 100 millionfor its first fund in April 2013, the firmfollowed that at the start of 2014 with asecond fund of 260 million. Having spenttime as a partner at litigation boutiqueIzhar Armony, generalpartner, Charles RiverVenturesAs one of the United States’ most successfulventure capital funders, it is unsurprising thatCharles River Ventures should have becomeinterested in intellectual property. In additionto the tech companies that it has backed, suchas Twitter, Yammer and Netezza, the firm hassunk more than 300 million into IntellectualVentures and was also an early investor inRPX. Leading its IP investment push is IzharArmony. According to RPX’s John Amster,Armony was the first person he called whenhe decided to start the patent aggregator,and Armony now sits on RPX’s board. Whenasked about his views on intellectual propertyin a 2011 interview, Armony’s response wassimple and to the point. “An asset class hasbeen created,” he said.Bernard Frohwitter,founder and managingdirector, IPComFew NPEs are currently active in Europe,but IPCom has been making wavesfor many years now. The founder anddriving force behind the firm is BernardFrohwitter, recognised as one of Germany’sleading patent litigators. Together with hiscolleague Christoph Schoeller, Frohwitterruns a portfolio of over 1,000 patents,many of which were acquired from Bosch(a company that Frohwitter once actedfor). IPCom has fought cases in variousEuropean jurisdictions against the likes ofApple, HTC and Nokia. The firm’s fortuneshave been mixed, although its suit againstNokia in Germany may be moving towardsa potentially positive (from IPCom’sperspective) conclusion. One undoubtedsuccess was agreeing what was officiallydescribed as “a low-to-medium tripledigit million euro” settlement withDeutsche Telekom in mid-2013. With aunitary European patent and a unifiedcourt system on the way, Frohwitter andIPCom should be seen as pioneers ratherthan as anomalies.Intellectual Asset Management July/August 2014 63

The A teamDana Hayter, vicepresident, legal andcorporate affairs, IntelAs Intel has looked to expand its patentportfolio in recent years through a series ofacquisitions, so Hayter’s profile has risenin the patent market. After a stint as atrial lawyer in the Department of Justice’sAntitrust Division, Hayter moved intoprivate practice at law firms Howard Riceand Fenwick & West before joining Intelin 2004. He has held a number of seniorpositions at the tech giant, includingdirector of Intel’s licensing and patentacquisition functions. That track record hasseen him take key roles on a number of keydeals, including the 375 million acquisitionof a portfolio from InterDigital and a 120million deal with Real Networks. With Intelan ever-present force in the patent market,Hayter’s role at the company is sure toremain a vital one.(See interview, page 63)Hideo Toyoda, director, IPcentre, PanasonicIt has been a difficult few years for Panasonic,with profits declining and decisions takento pull out of several significant marketsectors. As a result, senior management isunder pressure to make all of the company’sassets as productive as possible – and itshuge collection of patents is no exception. Incharge of intellectual property at Panasonicsince 2012, Hideo Toyoda has implementeda change of direction which has put muchgreater emphasis on monetisation. Inparticular, he has overseen the developmentof relationships with multiple NPEs, includingthe likes of Inventergy, WiLan and Sisvel,each of which has acquired significant-sizedportfolios from Panasonic over the last year. Inconservative Japan, Toyoda’s approach has notmet with universal approval; but it is one thathe will continue to pursue as Panasonic seeksto generate returns from a patent portfolio ithas invested a great deal of money in creating.Brian HinmanThe new recruit with a distinguished track recordWith IP credentials that have beendeveloped over two decades, BrianHinman succeeded the legendary RuudPeters as head of Philips’ IP operation atthe start of this year.You have led IP and licensingfunctions at companies includingIBM, InterDigital and Verizon, aswell as having held top executivepositions at Allied Security Trustand Unified Patents. What made youdecide to answer the call from Philipsand take over from Ruud Peters as thecompany’s chief IP officer (CIPO)?Ruud and I had a long history, goingback to when I was at IBM, so I am veryfamiliar with the organisation and thestrength and history of the company’sgreat patent portfolio. When theopportunity came up, I jumped at thechance to follow in Ruud’s footsteps andrun such a world-class IP organisation.Philips represents a very strongtradition from a patenting standpoint, alicensing standpoint and in terms of itsorganisation and infrastructure.Have you implemented any significantchanges to Philips’ IP strategy sincebecoming CIPO?One of the amazing things Ruud hadcreated was a strong IP strategy thatmatched the company’s overall businessstrategy. That was something I wantedto make sure I continued – that our IP64 Intellectual Asset Management July/August 2014strategy was properly aligned with Philipsas a business. The company has been inthe midst of a business transformation,shifting from a predominantly consumerelectronics business to one focused onthe areas of lighting, healthcare andconsumer lifestyle, and the changes in theIP organisation have mirrored that. We arealso migrating across those sectors andcreating new domains such as continuouspersonal health that lead to new businessopportunities for Philips. We have alsoembraced a new brand strategy focusedon innovation and how it benefits andimproves the lives of people.With that in mind, what are Philips’long-term objectives in assemblingand managing its patent portfolio,and growing it through filings andacquisitions?We are continuing the very close alignmentwith our R&D organisation and businessunits to ensure that our patent portfolio iswell aligned with our goal of protecting ourcore businesses.How crucial is IP monetisation inachieving the company’s wider businessobjectives?Monetisation through licensing is a goodoutgrowth of a strong, high-quality IPportfolio such as Philips’, where you havethe opportunity to license to others whilekeeping a healthy balance of exclusivity inthe market. Our first goals are exclusivityin the marketplace, the ability to achievepremium profits and a healthy marginthat is representative of our strong patentportfolio. But there are opportunities,when you have such a deep and largeportfolio as ours, to license to otherswhere it doesn’t necessarily harm thatexclusivity position. For example, as wehave exited some of our former consumerelectronics businesses, we have beenvery successful in licensing a numberof patents that are very strong in theseareas. Beyond that, we can also use ourintellectual property to help set andpromote industry standards, which is avery important area for Philips.www.iam-magazine.com

The A teamBrian Hinman, senior vicepresident, chief intellectualproperty officer, Royal PhilipsUnder the stewardship of Ruud Peters,Philips established itself as one of theworld’s leading players in the IP market,pursuing a multitude of innovative andhighly profitable value creation strategiesthat saw intellectual property put at theheart of overall corporate thinking. WhenPeters retired at the end of 2013, BrianHinman succeeded him. The former vicepresident of IP and licensing at IBM,InterDigital and Verizon, and a founder ofAllied Security Trust and Unified Patents,Hinman has a formidable track record and adeep understanding of the IP market. If allgoes to plan, in future years you can expectthat his position in this ranking will risesignificantly.(See interview, page 64)Richard Fields, chairman andCEO, JuridicaPotentially astronomical litigation costs leavemany patent owners feeling that enforcementof their rights is beyond them. Juridica –headed up by former corporate litigatorRichard Fields – offers an innovative solutionto those who feel priced out of access tojustice. Making headway in the United States’nascent litigation funding market, Fieldsrecognised that patent disputes – withtheir potential for high damages awards andsettlement amounts – could provide veryhealthy returns for the right type of investor.As of the end of 2013, the firm had eightseparate investments totalling 31.4 millionacross eight patent disputes. With thatamount of capital at work, Juridica is leadingthe pack among providers of third-partyfunding for IP litigation.Toshimoto Mitomo, seniorvice president, corporateexecutive, intellectualproperty, Sony CorporationSony is one of those rare Japanesebusinesses whose senior management hasalways put an expansive and integrated IPstrategy at the heart of operations. As partof this, the company has made a point of(and a fair bit of cash from) aggressivelyasserting its patents over a number of years.The vehicle through which this has usuallybeen done is Sony Corporation of America,whose day-to-day IP operations are lookedafter by senior vice president and IP counselPeter Toto. However, it is to ToshimotoMitomo – the man who has led Sony’soverall IP operation since June 2013 – thatToto ultimately reports. Previously, Mitomowww.iam-magazine.comwas also with Sony’s US operation and hecurrently divides his time between New Yorkand Tokyo. The fact that Mitomo reportsdirect to Sony’s CEO shows how significantthe company believes his role to be.Ron Epstein, president andCEO, Epicenter IP GroupRon Epstein’s multifaceted career in patentshas taken him from private practice lawyerto director of licensing at Intel to generalcounsel of Brocade CommunicationsRon EpsteinThe Renaissance manRon Epstein has an instinctive feel forthe state of the patent market. As aconsultant advising companies on howto derive value from their IP assets, asa patent broker and as an adviser onlicensing programmes, he is plugged intomost of what is happening. “The marketwanted expertise on what to do withpatents other than filing applicationsand launching litigation,” he commentson the reasons for setting up EpicenterIP. “There was no one in the middle toadvise them.”After the heady deal-making daysended a few years ago, he now says themarket is in a much more mature phasewith fewer transactions being done.“Deals happen now because the patentsare new or a company is now prepared tosell when they weren’t before,” he reflects.As a result, Epicenter – the businessthat Epstein founded after a careerspanning the Bay Area law firm WilsonSonsini Goodrich & Rosati and workingin-house at Intel – has moved with thetimes from boom-time brokerage to itscurrent slant towards licensing adviser.“Licensing is a world full of emotionaloverhead,” he comments. “If you’re goingto plagiarise something from anothercompany, then the easiest thing to do isto call it something else and label thoseagainst you trolls.”Of the deals that he has done, Epsteinpoints to an ongoing licensing programmefor Spanish wireless tech companyFractus (so far, worth 100 million)and a major syndicated deal for NTP asparticular highlights. “I’ve been doing thisfor 25 years, which makes me one of theold people in the market, but what I thinkI stand for is creativity,” he says.That experience makes his thoughtson the current patent climate, includingSystems to patent broker and now,increasingly, licensing adviser. His careerat Intel coincided with the dawn of patentmonetisation and since striking out on hisown he has skilfully leveraged his experienceat the tech giant to grow Epicenter IP Group.As a broker, he has advised on more than 400 million worth of deals, closing on over85% of the portfolios that he has put onthe market. More recently, as deal activityin the patent market has fallen, Epstein andEpicenter have moved more into licensing.He remains one of the pioneers of themonetisation market.(See interview below)proposed legislation in Washington DC,particularly worth listening to. “There is awell-orchestrated, breathtaking campaignby companies who are net-plagiarisersto lobby legislators to make patents lessenforceable,” he asserts.If Congress takes steps to limitpatent owners’ access to financing, thenaccording to Epstein, that would slowdown the market, but also put “a hugepremium on expertise”. As someonewho was in the room at Intel when theterm ‘patent troll’ was coined (he hadsuggested ‘patent pirate’), it’s fair to saythat Epstein has the kind of experiencethat would be even more highly prized.Intellectual Asset Management July/August 2014 65

The A teamTerry Gou, chairman, HonHaiGerald Holtzman,president, PersonalizedMedia CommunicationsOne of the earliest patentmonetisation-focused businesses,Personalized Media Communications(PMC) remains a strong force today.That is in no small part thanks toGerald Holtzman. Having forged acareer as an esteemed civil litigator inTexas, Holtzman joined PMC as generalcounsel in 1996. Now, as the firm’spresident, he heads up its licensingefforts on a diverse portfolio coveringareas such as cloud computing, digitalrights management, e-commerce,software and targeted advertising.Under his leadership, PMC has struckkey licensing deals with the likes ofMotorola, Panasonic, Sony and Zynga;the depth and breadth of PMC’s patentholdings mean that, with Holtzman’sproven expertise, the firm shouldcontinue to secure big-ticket licensees.As Foxconn, Hon Hai is best known as themanufacturer of mobile communicationdevices; but chairman Terry Gou haspromised that the Taiwanese company willrecalibrate itself to give much greater focusto R&D and intellectual property. And Gou isalready delivering. Hon Hai has built a large,high-quality patent portfolio both organicallyand through acquisition; for example, payingNEC the equivalent of 122 million forpatents relating to panel production in 2012.Perhaps most significantly, though, last yearcame the announcement that Hon Hai hadsold a portfolio of display patents to Google.That was the kind of deal to make anyoneactive in the IP market take notice. Asiancompanies, especially outside Japan, are notknown for their patent sales; and Google –which these days has a pretty sophisticatedacquisition programme – would not buy on awhim. Hon Hai has become an IP player.Doug CroxallThe accidental patent monetiserThe chairman and CEO of MarathonPatent Group admits that he got into theIP space more by accident than design.In 2003, Doug Croxall took tech businessFirepond private, principally becausehe liked the company’s core software;but he quickly realised that the mostsignificant returns were to be made frommonetising its intellectual property.That led to a productive relationshipwith IPNav which helped to enforce thepatents and generate around 90 millionin licensing revenues from Firepond’sportfolio between 2004 and 2009. Hisexperience at the company led Croxallto view intellectual property as an assetclass and to apply portfolio theory to themanagement of patent assets.That means that wherever Croxall hasworked – from Firepond to LVL PatentGroup to Marathon – he has built aninvestment strategy around acquiringpatents in different sectors and at differentpoints in their lifecycles. “I’m agnosticabout the industry that a patent is in, butI’m not agnostic about the patent quality,”he says. “I like to look at where a patentasset is in its litigation lifecycle, such as66 Intellectual Asset Management July/August 2014whether it has been through an inter partesreview. Then I also like some greenfieldassets that haven’t been litigated.”Although much of the policy discussionaround proposed patent legislation in theUS Congress has a distinctly anti-NPE hue,Croxall stresses that the most damagingthing for his business is uncertainty. “Thenice thing about a free market is thatit’s very adaptive, but it can’t adapt tothe unknown,” he points out. “We knowsomething will happen in DC; we just don’tknow what, and the market hates that. Iwant it resolved one way or the other.”Applying a more sophisticatedinvestment approach has undoubtedlybeen crucial to Croxall’s success, but sohas his relationship with IPNav, whichcontinues today at Marathon. Thatmeans he can leverage IPNav’s greaterresources when he needs to, whilekeeping Marathon’s overheads low. “Erich(Spangenburg) and I thought if we couldmove heavy personnel costs into one entityand keep high-margin IP assets in another,we could really drive profits,” he remarks.That relationship deepened in Maywhen the two companies announced thatJim Skippen, president andCEO, WiLANIn October

market makers. (See interview, page 62) Ashley Keller, managing director, Gerchen Keller Capital Ashley Keller is undoubtedly one to watch. A co-founder of litigation funder Gerchen Keller Capital, Keller is establishing himself as one of the best-backed financiers of disputes, with a growing pro