IP Checkups recently hosted and presented a four-hour IP workshop at the Strategies in Light conference in Santa Clara, CA. The workshop started with three slide presentations and ended with an interactive panel discussion. Panel members included IP Checkups’ team and four additional experts.
The first presenter was Paul Kallmes, the ex-head of licensing and patent portfolio manager at Color Kinetics. Mr. Kallmes spoke about IP Business Strategies in the LED industry and encouraged the audience to find ways to prioritize license agreements. He said, “If licensing revenue can be created, the nearly-100% profit margin can quickly become addictive”. Mr. Kallmes emphasized the importance of creating a strong technology platform, continuous monitoring of the IP Landscape, and treating IP as a strategic business asset, not just a legal function.
Next, Kathryn Paisner spoke. Kathryn is the Director of Research at IP Checkups. Using examples from IP Checkups’ patent analytics tool, LED PatentEdgeTM, Dr. Paisner presented an overview of patenting trends in the LED industry with a specific focus on the Philips portfolio. The presentation also featured a snapshot of industry-wide patenting trends, including patent filing rates and top assignees in different technology areas, such as color mixing and LED Phosphors. Dr. Paisner’s presentation ended with a brief overview of some of the smaller players in the LED space, including SiOnyx, Evident Technologies, Brasscorp, Yipi Pte., among others. She concluded by articulating how competitive patent data provides an excellent source of competitive intelligence for business development, legal, marketing, and R&D departments.
IP Checkups Co-Founder and President, Matthew Rappaport updated the audience on the state of the patent monetization market. He described and defined the unique and overlapping characteristics of various patent monetization business models including patent assertion entities (PAE’s), patent trolls, patent privateers, defensive patent aggregators and others. Mr. Rappaport highlighted a few case studies including Unwired Planet’s recent acquisition of patents from Ericsson, and Mosaid’s complex deal with Microsoft and Nokia, to exemplify the sophistication of the patent monetization market. Mr. Rappaport concluded his remarks by emphasizing the importance of staying on top of the broader patent landscape by researching and analyzing competitive patent information.
After a short break, four panelists were invited to speak about their experiences in the LED industry.
The panelists featured Peter Kim, IP Strategy Consultant, Peter Kim Consulting; Albert Harnois Sr., Associate General Counsel, Bridgelux, Inc.; Chad Stalker, Regional Marketing Manager of the Americas, Philips Lumileds Lighting Co.; and Rob Kramer, Patent Litigation Partner, Dentons LLP.
Mr. Harnois answered questions related to the upcoming implementation of the America Invents Act (AIA) on March 16th, 2013. He focused specifically on the US Patent Office’s switch from a ‘first to invent’ system to a ‘first inventor to file’ system. Next, Peter Kim presented “Top 10 Things I Learned from Being a Patent Troll”, drawing on his experiences at Acacia and Rambus. Then, Rob Kramer discussed various strategies to ward off patent litigation, and how to deal with the new laws regarding the scope of prior art, introduced through the AIA. Finally, Chad Stalker provided insight from his days at Color Kinetics (CK). Along with Paul Kallmes, Mr. Stalker discussed the challenges of trying to negotiate licenses and market the CK portfolio to “customers” for double digit royalties.
All in all, this was a very successful event. IP Checkups was pleased by the diversity of its panel members’ backgrounds and the overall level of engagement from the audience. For a copy of IP Checkups’ slides, click here. If you are interested in getting in touch with the other panelists please contact us.