Joff Wild

Yesterday, we revealed the identities of the first six of our IP personalities of 2014. Today, we name the final six - once again in alphabetical order. As previously explained, at IAM we define a “personality” in very broad terms. You don’t have to be a human being or even a single identifiable entity to qualify - basically it encompasses whatever we want it to encompass and it’s all about whom and what caught our eye during the year. That said, five out of today’s six are people …

Kenichi Nagasawa, Canon

Slowly but surely Japanese companies are beginning to look more creatively at the large patent portfolios they have built up over the years, as well as at wider strategic IP issues. As part of this, there is an on-going debate in the country about the extent to which rights owners should seek to monetise their assets and with whom they should work when looking to do this. Kenichi Nagasawa, the head of IP at Canon and also a member of its board of directors, is among the most influential voices in the conversation. While the likes of Panasonic, Renesas and ROHM Semiconductor have formed relationships with NPEs, Nagasawa is firmly and vocally of the opinion that such deals are counter-productive and potentially damaging – and it is a view that most patent owners in Japan still hold to.  However, not working with NPEs does not mean doing nothing. Nagasawa is clear that Japanese companies should not only be doing deals with other rights owners, but should also be showing IP leadership. To that end, along with Google Canon was a prime mover in the creation of the License on Transfer (LOT) Network. There is little doubt that over the coming years Japanese companies will seek to play a amore active role in international IP markets. An there is little doubt that, as a result, we will be hearing a great deal more from Kenichi Nagasawa. (JW)

Laura Quatela, Alcatel-Lucent

There are very few women at the top of the corporate tree when it comes to IP monetisation. Until the middle of 2013 Béatrix de Russé was in charge of the licensing operation at Technicolor, while in May 2014 we revealed that Erich Spangenberg planned to step down as CEO of IPNav in favour of the NPE’s president Deirdre Leane (though that does not seem to have happened yet). But there are not many others. That fact alone made the July announcement of Laura Quatela’s appointment as executive vice president of intellectual property at Alcatel-Lucent newsworthy; but the revelation that she was to be a direct report to the company’s CEO Michel Combes made it a big story. After all, there are very few heads of IP anywhere that enjoy that level of responsibility. With a brief “to unlock the value of [the company’s] world-class portfolio of more than 32,000 active patents”, Quatela has a mighty challenge on her hands, but one that was made that bit easier when Alcatel-Lucent finalised the early pay-off of a $1.75 billion loan that had been secured against its IP assets. Given her previous job as president of Kodak – and her close involvement in the negotiations that led to the $525 million sale of the company’s digital imaging patent portfolio and saw it come out of bankruptcy – there is little doubt that Quatela has all the attributes needed to do the job her CEO requires; but maybe he should refrain from asking her to sell any patents to consortia. (JW)   

Quanlin Paper

If you thought that the days of the mega-IP deal were now behind us you were not paying close enough attention during 2014. While, in general, it is true that big-ticket transactions tend to be of lower value than was the case a few years back, there was one big exception last year. That it was based in and on China, though, meant that many people missed it. In March, it emerged that Quanlin Paper, a company based in the province of Shandong, secured a loan of RMB7.9 billion (approximately $1.3 billion) against a portfolio of trademark and patent rights. China Development Bank led the consortium which made the money available, with a portfolio of 110 patents and 34 trademarks as the collateral. The patents alone were valued at RMB 6 billion, or close to $1 billion. Some back of the envelope calculations done by IAM indicated that the deal was among the top 10 most valuable publicly-disclosed IP transactions ever. That fewer than 150 mainly Chinese IP assets were involved was especially noteworthy. But however the valuations was done, the money seems to have been handed over. Just a few months later it was announced that Quanlin is to invest around $2 billion in building a new paper mill complex and creating around 2,000 new jobs in the US state of Virginia. That, of course, is a rather neat reversal of the normal narrative of Chinese IP abuse adversely affecting the US economy. (JW)

Chief Justice John Roberts

Since Roberts became Chief Justice of the US Supreme Court in 2005, patent cases have been a far more common feature on the court’s docket. Once a partner at the-then Hogan & Hartson, Roberts has a corporate law background that many of his colleagues lack and on taking up his post he promised a court that would focus much more closely on cases involving business issues. When it comes to patents he has delivered on that. Among others, the decisions in the Ebay, KSR, Bilski, Mayo and Myriad cases have all become key chapters in the reshaping of large parts of US IP jurisprudence over the last decade. But even in Roberts’ time as America’s top judge there’s not been anything quite like the court’s last term. The nine justices heard a total of six patent cases as they weighed in on a range of issues such as fee-shifting, indefiniteness and patentability. Alice v CLS Bank was undoubtedly its most high-profile case. While the decision will not kill off software patents in the US, there are fears that it may have a profoundly damaging effect. However you look at it, though, the case does seem to encapsulate the increasingly sceptical approach the Roberts court has taken to broad patent protection, while also heralding a significant decline in patent suits. Depending on your point of view, the chief justice and his colleagues have either become key players in the weakening of patent rights in the US or in the rebalancing of a system that had become too pro-patentee. Either way, as a still relatively young 60 year-old, Roberts’ impact will continue to be felt for some time yet. (RL)

Matthew Vella, Acacia Research

When he took over as CEO of Acacia in August 2013, Matthew Vella certainly had big shoes to fill. His predecessor Paul Ryan had transformed the company into a two billion dollar business, doing as much as anyone to drive the development of the NPE sector (Ryan sadly passed away shortly after handing over the reins), only to see its value fall back in to the hundreds of millions of dollar range as investors got cold feet on the back of what were perceived as a series of disappointing financial results. Through the course of 2014, Vella led Acacia through a profound repositioning as it shifted focus to large, marquee portfolios, diversified into new sectors such as medical devices, energy and automotive, and continued its international push into Europe and Japan. At the same time Vella has been a reasoned voice in the debate around patent reform in the US, pointing out that many of the proposed changes will benefit the larger, better resourced NPEs. Acacia’s share price may still be below the highs it hit in the Ryan era, but it has an upwards trajectory once again and there can be no doubt that under Vella’s watch the business is back on a firm footing. (RL) 

Jay Walker, the US Patent Utility and Patent Properties

In the spring of 2014 Jay Walker and his team at Patent Properties announced that they were launching the US Patent Utility, an attempt to help the vast majority of patent owners who never see a return on their patented inventions monetise their IP. Given that 95% of US patents remain on the shelf unused, representing a massive waste of R&D dollars, the economic benefits from licensing even a relatively small chunk of that stockpile could be very significant. It’s still early days for the Utility – a beta version was launched in November with a full-blown launch expected at some point in early 2015 – but whether it is a success or not, it is arguably Walker’s skills as a communicator and his message on the problems of a dysfunctional patent system that will have the deepest impact on the market. He is right to identify that there is something inherently wrong when the courtroom has become the most popular venue to determine the value of a licence. As the founder of and the named inventor on over 500 issued and pending US and international patents, Walker has the kind of gravitas which means that people sit up and take notice of what he has to say – and they are already beginning to if recent mainstream media coverage is anything to go by. The patent market has few advocates like him. (RL)

The IAM IP personalities of 2014 in full:

  1. Erich Andersen, Microsoft
  2. Ira Blumberg, Lenovo
  3. Doug Croxall, Marathon Patent Group
  4. Google
  5. Michelle Lee, USPTO
  6. William Merritt, InterDigital
  7. Kenichi Nagasawa, Canon
  8. Laura Quatela, Alcatel-Lucent
  9. Quanlin Paper
  10. Chief Justice John Roberts
  11. Matthew Vella, Acacia Research
  12. Jay Walker, the US Patent Utility and Patent Properties