Meet the world’s elite IP deal makers

40 Billie Chen

Chipping away

Thirty-year industry veteran Billie Chen joined Taiwan Semiconductor Manufacturing Corporation (TSMC) as chief IP counsel in 2012 and has since also assumed the mantle of IP director, taking charge of all patent-related functions. Under her guidance, TSMC has grown its portfolio quickly through both in-house filing and third-party patent acquisition deals.

Q: How would you sum up TSMC’s patent strategy?

At TSMC, we do not design our overall IP strategy with an offensive or assertive mentality. We file a great number of patents and also buy patents from external parties, but the essential purpose is to protect our technologies, inventions, freedom to operate and ultimately, market share.

Our overall IP strategy is a combination of organic growth through R&D and external acquisitions. While mapping our patent strategy, we look at the technology carefully and strictly. If it is something extremely confidential, we will use trade secrets and know-how protection to make sure the key technology is not leaked. In this case, we will rely on our team to innovate and develop. Some technologies are less sensitive and we are happy to acquire them from external sources.

Q: TSMC acquired around 400 patents from WiLAN as part of a licence deal in April. Is this a common arrangement?

In the past, we have done some patent acquisitions and transactions, but those have usually been confidential and so have not been disclosed to the public and the media. Normally for TSMC, patent transactions are not strictly buying, selling or licensing deals; instead they are often comprehensive hybrid transactions that may involve licensing, assignments and buying or selling. Regarding the deal with WiLAN, it was a creative and strategic transaction with an amicable, win-win resolution. TSMC is open to exploring creative, multifaceted and win-win resolutions to IP disputes, and that approach has achieved some successful results for us.

Q: TSMC has been very active in Patent Trial and Appeal Board proceedings. What is your view on where the US litigation environment is heading?

TSMC is very tough when it comes to fighting litigations. When we are defendants, most of the plaintiffs against us are non-practising entities (NPEs). Since 2010, our team has worked diligently and tirelessly to win several US patent cases initiated by NPEs. We never surrender and we keep fighting to defend our IP rights. We are sending a strong message that TSMC is not an easy target. We are also one of the top 10 filers of IP rights in the United States and our institution rate is 100%. We are well prepared to fight and we are certainly not frightened by litigation. We stand behind our technology and we stand up to defend it all the time. On the other hand, we are open to negotiations. We normally do not simply pay royalty fees or reach a pure licensing deal; instead we are open to negotiations to facilitate innovative solutions and win-win situations.

Q: How is the wave of mergers and acquisitions in the semiconductor industry affecting your IP strategy?

We are monitoring the changes and deals closely. If a company with which TSMC currently has licensing or cross-licensing arrangements is acquired, the deal might change after the merger. We are also monitoring the patents that find their way into competitors’ hands through these deals. This will change the balance, so we need to evaluate the potential risk from each deal.

Q: What are the biggest changes you see on the horizon in Asia?

I think the biggest shift will be the rise of Chinese patents and their value. TSMC has been doing many patent filings and seeking protection in China, and we believe that the number and value of Chinese patents will increase. At the moment, the United States is the major patent battleground, but undoubtedly this will move to China. Wherever the commercial market is, the patent battles will follow and right now the China market is huge for businesses.

Q: What is it like to be a woman leading the IP function in a leading Asian technology company?

I do not think that gender is a major issue for IP work. Man or woman, at the end of the day, success depends on whether you are qualified to do the job and can win the trust of board executives. TSMC senior management care greatly about intellectual property. I have to win their trust and the trust of my team by defending our technology and business and presenting a good record of victories.

37 Kwang-Jun Kim

A change of tack at Asia’s first and biggest sovereign patent fund

Korea’s Intellectual Discovery (ID) was the first sovereign patent fund to set up shop in Asia in 2010 and CEO Kwang-Jun Kim is doing his best to ensure that it remains at the cutting edge of the industry. Kim was brought in to lead the fund operator in January 2015 after a long career in the Samsung Group, which included stints as chief IP officer and general counsel at Samsung Display, and as vice president of the Samsung Electronics IP Centre. However, although he has been at the helm for less than two years, Kim says that plenty has changed in terms of ID’s direction during that time.

In the early days of sovereign patent funds, aggregation was the name of the game. ID did this to great effect, amassing over 5,000 patents, running a defensive pool for Korean companies and signing up over 200 members. However, Kim says that this model will only take ID so far: “I am still acquiring, but not on the scale we have been.” That is not to say there is not still plenty of value to be found in the fund, even in unexpected places. As Kim explains: “Some of the acquisitions that we made early on are coming alive and people are showing interest now in some of the technologies we thought then were far-fetched” – including smart cars and renewable energy.

Along with ID’s ongoing licensing efforts, it has started unloading parts of its giant portfolio after the assets have been licensed to the Korean companies that are members of its defensive arrangements. “We are finding suitors from all over,” says Kim, especially from the United States and China – although closing deals in the latter market remains a challenge. While he acknowledges that the patent market is in a down cycle as far as prices are concerned, Kim firmly believes that an up cycle is coming in the near future. He predicts that megadeals in the order of the Nortel sale might once again be on the cards.

One way in which ID is looking to diversify its activities is through investing in early-stage tech companies with promising intellectual property, “so that we are not just a pure IP transactions and licensing model”. ID was the first sovereign patent fund to set up a venture capital arm with subsidiary ID Ventures, although Kim says that ID’s own efforts will draw more on its patent expertise: “The starting point is a little different. For companies to talk to us, they need to be tech companies and they need to have quality IP.”

So what does the future hold for ID? “We are changing gear from a very bureaucratic and sovereign strategy,” Kim says. Put simply, the organisation is endeavouring to make sure it can stand on its own two feet financially, so that it is ready for all eventualities. Observing the young sovereign patent fund space (which received its newest member when a second fund operator launched in Korea last year), Kim sees his peers moving in the same direction and paying more attention to the bottom line. He believes that ID is well positioned for the future: “We’ve been preparing for this a long time and fortunately we are seeing very good results that are improving every year.”

30 Courtney Quish

A new role at a pivotal time in the media technology industry

Courtney Quish is not afraid to take risks. Despite uncertainties in the patent market during 2015, she made the leap in-house after a decade in private practice, taking on the newly created position of vice president, patent strategy at Rovi. “The IP strategy function is inherent in patent prosecution, licensing and litigation, and we have very strong teams across all functions,” explains Quish. “However, the IP M&A strategy role was new for Rovi. It was created to address non-traditional licensing opportunities and to work with the licensing and corporate development teams to develop a strategy to augment our IP monetisation programme by building out from our core strengths.”

One of the biggest issues facing those building and implementing patent strategies today is how best to predict the next twists and turns on what has been a very bumpy road of late. However, Quish is clearly enjoying herself. “Together with the broader team, we take a two-pronged approach to creating Rovi’s patent acquisition strategy,” she explains. “We have short-term objectives focusing on today’s licensing opportunities and long-term strategies directed towards overall growth of our licensing business over the next five to 10 years. That long-term planning is what I find the most challenging and the most interesting.”

A significant part of this undertaking is accurately assessing and understanding the market and identifying alternative ways to capitalise on it. “Certainly we have to take into account all of the recent changes – and the fact that the market is still changing – when looking ahead,” states Quish. “In doing so, we put on the table all the ways we could potentially strengthen our business overall and then sift through and identify those ways that make the most business sense to us.”

One way in which Rovi has acted to strengthen its business is through a ground-breaking alliance with Intellectual Ventures (IV): Rovi became the non-practising entity’s exclusive partner in licensing their combined patent portfolio to over-the-top (OTT) customers. Upon joining Rovi, Quish immediately assumed a key role in the negotiations. “The partnership was a fantastic accomplishment for both Rovi and IV,” she enthuses. “It was a first for both of our companies and we are very excited about the business opportunities created by the deal. The entertainment industry is exploring how to take advantage of the fast-growing OTT market, and offering the Rovi and IV OTT portfolios in one licensable package enables our licensees to deliver these innovations to their customers around the world.”

With one successful deal in the bag, Rovi then set its sights on another lucrative proposition and in May this year announced that it would acquire TiVo for $1.1 billion. “We are really excited about the TiVo deal,” continues Quish. “This acquisition positions us to be a stronger product company, while picking up some significant IP at the same time.” She led the TiVo IP due diligence herself, focusing on the impact to the Rovi licensing business. Going forward, it is her responsibility to manage the IP integration and work to position the new companies for licensing success. Needless to say, next year will likely bring as many challenges and opportunities as the past couple; doubtless Quish is ready to meet them head on.

29 Shigeharu Yoshii

The accidental patent player changing minds in Japan

Veteran manager and executive Shigeharu Yoshii played a key role in helping to set up patent fund manager IP Bridge during his time with the Innovation Network Corporation of Japan. However, he never intended to run the firm himself. Four years ago, he says he was asked “at the last moment” to become IP Bridge’s founding CEO: “It was unexpected, because I am good at managing companies, but not an IP specialist.”

Yoshii is too modest about his qualifications. Highlighting the number of patent attorneys and lawyers on his staff, he jokes: “I have only a driver’s licence.” However, the man who has served as general counsel and board member at Coca-Cola Japan and Sanyo Electric has built Japan’s sovereign patent fund operator into one of Asia’s most active IP-based businesses, which qualifies him as a major patent player in his own right.

Yoshii’s introduction to the world of IP value creation came via the private equity sector, when he worked as a turnaround manager for companies in dire financial straits. Patents, he discovered, were some of the most under-utilised assets on the books. “Many companies which I handled had a lot of patents, but their value was not listed on the balance sheet because they were developed inside the company,” he recalls. Most of these companies were not actively monetising their portfolios; as a turnaround manager, Yoshii’s job was to get the most out of those assets. It was his work for Sanyo which prompted the Innovation Network Corporation of Japan to ask him to help with the launch of IP Bridge.

It was tough going in the beginning. While IP Bridge is charged with helping Japanese companies to extract more value from their intellectual property, institutional resistance to this approach remains in some quarters. “Sometimes, even if infringement is clear, the potential infringers are also customers and Japanese firms hesitate to take legal action against big customers,” explains Yoshii. In addition, there is a second barrier: “If one division of a large company wants to take legal action, the defendant may sue back another division of the company, so to take legal action prior internal consensus among all divisions is necessary, which is almost impossible”.

However, since securing victories for early clients such as Panasonic, IP Bridge is finding its services in greater demand. “Three years ago, companies didn’t know us well enough; now they know our activities and capability.” As a result, a growing number of companies are approaching IP Bridge about potential collaboration, rather than the other way around. This demand has seen its staff grow from just two to 24. “We started with Panasonic only,” recalls Yoshii, “but now we have NEC Fujitsu, Hitachi, Funai and others”.

Yoshii is conscious that it is important for IP Bridge to demonstrate that NPEs can be good corporate citizens in a market where they are often maligned: “We should not behave like a so-called ‘patent troll’. So we really want healthy development of industry.” Its policy has always been to litigate as a last resort – when counterparties refuse to respond to any communications, for example, and when the fund is sure it has a very strong case based on high-quality patent rights. Over the past year it has shown its seriousness by launching campaigns against TCL, Broadcom and OmniVision Technologies.

After years in the world of private equity, Yoshii appreciates the opportunity to run a business with a long-term focus. With its major investor a quasi-government organisation, Yoshii describes his assets under management as ‘patient money’: “I worked in private equity funds for 10 years, and private equity business investors are not patient… If I had investors whose mind was on short-term returns, I would not be able to run this business now.”

27 Arvin Patel

Getting deals inked in a tough market

Arvin Patel’s enthusiasm for his role as chief IP officer (CIPO) of French media and entertainment technology company Technicolor is palpable. “This is one of the coolest businesses I have ever been a part of,” he enthuses. “The CIPO position at Technicolor is pretty unique. I’m the head of one of our divisions – the patent licensing business – but I also have responsibility for all aspects of intellectual property across the company, including IP strategy and IP management in our operating businesses.”

Patel joined the company last September, following a somewhat turbulent couple of years for Technicolor, including a dispute with activist shareholder Vector Capital over the company’s future direction. “Technicolor has been around for a long time and, like all companies, has had to face a variety of business challenges,” Patel states. “I joined the company to transition the IP business after the end of our biggest revenue streams. I have tried to bring a degree of practicality to the business and really focused on getting deals done by finding common ground with our licensees.” And get deals done he has. In July Technicolor released its first-half results, which included a remarkable increase in revenues from sources other than its MPEG LA activities, and prompted a statement from CEO Fred Rose that he anticipates achieving €200 million earnings before interest, tax, depreciation and amortisation at year end from licensing. “While MPEG 2 is gone, we have a thriving core licensing programme which we will continue to develop,” Patel explains.

Among other things, Patel attributes his success so far to transparency and fairness – two qualities often said to be absent from IP-based negotiations. “Since I’ve been in charge of the patent licensing business, we have had good success in closing licensing deals despite the difficult legal and financial backdrop,” he says. “I think the key has been that we take a very practical, business-based approach. When it comes to licensing, I believe that you have got to demonstrate the value that you’re bringing to the licensee through the licence.” It’s not enough, he continues, to put a series of claim charts on the table and then expect payment. Instead, Patel and his team work very hard to demonstrate just how Technicolor’s technology can contribute to the licensee’s bottom line and have solid benchmarks to demonstrate that it is offering market acceptable rates: “I am really interested in ‘getting to yes’, so we look for ways to structure deals so that they will be acceptable to the licensee’s management. We expect a market return for the use of our technology, but we also want to be easy to work with. We will enforce our rights if we have to, but more often we are able to get deals done by being fact based and reasonable to deal with.”

The enthusiasm that Patel demonstrates for his role at Technicolor also extends to the broader IP market. While he acknowledges that it is still coming out the other side of a tough few years, he is optimistic about the future. “The death of the IP market has been greatly exaggerated,” he insists. “Just take a look at how aggressive Chinese companies are with regard to acquiring IP assets. They know that they can’t compete without intellectual property. I see the IP market bouncing back in a big way over the next decade, and that will be extremely beneficial for companies and individuals who are leaders in the next wave of the IP economy.”

25 Phil Hartstein

Finjan comes of age

In 2015, Finjan won a landmark $39.5 million infringement ruling against Blue Coat Systems. That decision might still be successfully appealed, but thus far has been upheld at every turn. The strength of Finjan’s cybersecurity patent portfolio has also been underlined by a remarkable run at the Patent Trial and Appeal Board which has seen it survive almost 90% of the inter partes reviews filed by Blue Coat. Additional highlights for the business include a $10.9 million settlement and licensing agreement with Proofpoint and the successful raising of a $10 million series A preferred share offering.

As CEO since 2014, Phil Harstein has played a key role in Finjan’s recent development. An experienced licensing executive with stints at IPNav and Ocean Tomo under his belt, Hartstein matches specialist IP savvy with the broader nous and insight needed to head a public company – a combination which is proving invaluable at a time when the markets remain tough for many listed IP stocks. “I can’t imagine any other industry that faces as many challenges of an unpredictable nature,” Hartstein says. He points to a familiar list of grievances to back up his case, including a series of decisions from the Supreme Court, ongoing discussions around patent reform in the US Congress, challenges from inter partes reviews and a patent landscape which has generally not favoured patent owners over the last decade.

These developments mean that, as for most licensing businesses, it has become far harder for Finjan to agree deals with alleged infringers. “Our expectation is that it will cost twice as much, take twice as long and at the end of the process you’ll receive half as much,” Hartstein reflects.

In his time at the helm, Hartstein has also emerged as a vocal leader, playing an active role in the Licensing Executives Society’s attempt to introduce best practices into licensing. This mirrors Finjan’s decision to commit to its own set of best practices in 2014 in an effort to highlight the company’s responsible approach. In a licensing market as challenging as today’s, Finjan’s CEO is plotting one clear path to success.

24 Kasim Alfalahi

Meeting the patent challenges posed by the Internet of Things

After a decade as chief IP officer (CIPO) of Ericsson, Kasim Alfalahi moved on earlier this year to become CEO of Avanci, a new licensing platform designed for the Internet of Things (IoT).

Q: What inspired the creation of Avanci and what are its objectives?

Avanci was established in April this year to provide an efficient, transparent platform to license essential wireless patents to the Internet of Things (IoT). Connectivity is becoming increasingly important: cars, energy, even cities themselves are all becoming more connected. One thing that repeatedly came out of discussions I was having in my capacity as CIPO of Ericsson with so many of the companies that are starting to utilise wireless technologies was that they do not want to negotiate licences with many different patent holders. They want a one-stop licence where they can sign one agreement and have access to all of those companies’ patents.

The idea is not for us to represent patent holders and make them the most revenue, but rather that we will sit in the middle and ensure a fair deal for everyone involved while also simplifying patent licensing.

Q: How does Avanci differ from other platforms out there?

The difference between what we are doing and what has been done in the past is that we are offering an entire portfolio licence. So when a company agrees to license its patents to us, it will include all of its essential patents, and – crucially – any new essential patents granted within the term of the agreement. I think that approach is very different from a patent pool, where licensors are selective about which patents they make available.

Also, a lot of pools focus on a very narrow area of technology and they do not include the largest patent holders with successful independent licensing programmes. Avanci, on the other hand, plans to include the key patent holders and will operate in a broader area of technology, encompassing more than just one standard.

Q: What is Avanci’s ongoing relationship with Ericsson?

We will license Ericsson’s patent portfolio in the same way that we will license other companies’ portfolios. Many companies asked me when I was at Ericsson to establish a platform such as this. It would not have worked had I tried to do it while at Ericsson; but now that it is happening from a position of independence, the market is happy because it will benefit the entire industry, it will be fair and non-discriminatory and it will not put anybody at a disadvantage.

Q: What impact do you anticipate Avanci having on the patent marketplace?

My hope is that the introduction of Avanci will provide predictability and convenience, and will result in less litigation. The optimal thing is that we get everybody on board, as this will ensure that all those companies contributing technologies get a good return on their investment, and also that those using the technologies get a fair price and can continue developing products with connectivity.

Even if a small number of companies do not join Avanci, the cost of a licence from Avanci will act as a reference point for the market and will hopefully encourage patent owners and licensees to agree to reasonable royalties.

21 Russell Binns

Bringing transparency and the non-profit motive to the patent market

Russell Binns has been CEO of Allied Security Trust (AST) since mid- 2015. This year, he led the defensive patent aggregator into its biggest project yet: the Industry Patent Purchase Promotion (IP3).

Q: You have been at AST for around two years; what challenges have you faced and what have been the highlights of your time in charge?

One big challenge for us is making sure we are getting as many quality assets for sale as possible; also getting AST widely known around the world so that sellers consider us before making sales to non-practising entities (NPEs). For us, being able to interrupt the traditional private transactions between operating companies and NPEs, and getting AST into the mix of those deals, continues to be a challenge.

As for highlights, the AST team, in conjunction with our members, is ushering in a time of more trust, collaboration and cooperation. Increased transparency has helped this. Members include the board of directors, so they have a stake in how things operate at AST. The more members get invested in AST and trust in what we are doing and how we do it, the more open members become.

Q: Companies have several options when trying to mitigate the risk of patent assertions. How have you tried to differentiate AST?

AST is very different because there is no profit motive. We try to be early and proactive and disrupt the patent market early on with full transparency to our members before anyone – which is quite different from anything else out there.

Q: You have helped to spearhead the IP3 patent purchase initiative. Could this become a model for future cooperation between major patent owners looking to address some of the problems of the patent market?

Absolutely – IP3 will never replace AST’s core business model, but it was a very effective mechanism to transact patents for both patent sellers and buyers. From start to finish it took up very little time compared to a normal patent transaction, and the ‘no haggling on the price’ policy made it a much more straightforward process for acquiring assets and easier for our members to make purchasing decisions. We learned a lot from this first endeavour and we look forward to conducting similar improved initiatives in the future.

Q: How would you sum up the state of the patent deals market?

There is still a lot of uncertainty on the value of patents, which is continuing to put downward pressure on the market, but I think we are at the bottom. I am not sure how long we will stay there, but I believe the next step will be upward. In terms of volume, the market is overall very strong. Even with prices declining, there are more transactions than ever before, which I think positions the market to grow and become stronger.

19 Bill Merritt

A licensing leader looking forward to new opportunities at InterDigital

As the conditions for patent licensing have become more challenging, InterDigital stands out as a rare good news story. Healthy revenue and profit numbers, as well as a share price that recently has regularly been notching up new 52-week highs, reflect how the Nasdaq-listed business has managed to outperform many of its peers.

Ultimately, InterDigital’s success is underpinned by both the size and strength of its portfolio (including more than 2,000 US grants), which puts it in a particularly strong position in today’s market. “Building large portfolios is important because the ability to be successful with a small number of assets is waning,” CEO Bill Merritt says. In a difficult deal-making environment, he suggests that there is one fundamental point to bear in mind: “Something that has remained consistent is that solid, fundamental innovation is still valued.”

Yet a mere five years ago, InterDigital was struggling to the extent that it effectively put itself up for sale. The big deal never came and so instead it disposed of 1,700 patents for $375 million to Intel, providing some much-needed breathing space. Finally a decision was made to back the quality of the R&D being done in the company’s labs. Today, that call has never looked more astute.

Four years on from that Intel disposal and, Merritt claims, patent sales have become a much less attractive option. “There has been a pullback in selling assets because of a market reduction in the value of patents and the challenges faced by people who might have been buyers,” he says.

Despite this, InterDigital remains in a robust position as the mobile industry starts the transition to fifth-generation cellular technology and the IoT. Both promise a vast increase in the number of connected devices. This change is happening at a time when opinion remains deeply divided as to just how much licensees should pay to use standard-essential patents. InterDigital has been a key player on the licensor side of the debate and Merritt rejects any notion that licensing royalties are out of kilter. “Royalties are supporting research; they are completed grounded in economic reality,” he insists. The next few years promise to put that claim to the test.

17 William Coughlin

In the driver’s seat at Ford

Companies in the auto industry have had to become far more sophisticated IP players over recent years, but Ford wised up to this long ago. Under the stewardship of Bill Coughlin – president and CEO of Ford Global Technologies – the carmaker has led the way in terms of both growing its portfolio, which currently stands at more than 8,500 US grants, and becoming a far more active member of the patent community.

Coughlin has been with Ford for 16 years and is clear on just how far the company’s view of patents has evolved. “When I joined, the key measurements were how many patents were we filing and how much it cost,” he recalls. “I thought we could do better, so I introduced a number of different measures focused on things like effectiveness and quality.” As a result, the auto giant has seen a dramatic increase in royalty income and a massive step up in the number of named inventors in the company, which has helped to fuel an increase in filings. “Our goal is not to sue people, but it is to leverage our IP; these things shouldn’t be collecting dust,” Coughlin says.

Acutely aware of the litigation risk that many operating companies face today, Coughlin has also signed Ford up to the License on Transfer Network – designed to protect members from lawsuits filed by non-practising entities (NPEs) – and to IP3, a collaborative project set up to buy patents.

“We’re taking a very proactive stance for an auto company with respect to patent defence,” says Coughlin. “I looked at where the company was headed, and looked at the smartphone wars and the rise of well-funded patent assertion entities, and was worried about whether our company and the industry was ready to protect consumers from people who have unrealistic views on the worth of what they own.”

Coughlin concedes that that threat has diminished to some extent, thanks to recent Supreme Court decisions and the introduction of post-issuance reviews – a development he has welcomed: “Our view is that there are lots of good, solid patents out there and we wouldn’t want to hurt those, but you need to be able to revisit the USPTO’s decision [to grant a patent] in a fair way.”

16 Brian Hinman

Fighting for Philips, focusing on quality

Brian Hinman has been chief IP officer at Philips IP & Standards since the beginning of 2014 – the latest in a series of high-profile positions held by this long-time IP market player.

Q: Since joining Philips, what changes have you made and what do you consider your highlights from the past year?

When coming to Philips three years ago, I was in the enviable position of not having to make drastic changes since the organisation – which I consider to be among the best in the world – works seamlessly. Philips’ revised focus on health systems and personal health technologies has created challenges and opportunities to ensure that we secure the very best and broadest IP portfolio to effectively protect each of Philips business groups. IP portfolio growth and management is a critical aspect of my organisational capabilities in this ever-changing industry. I am also continuing to strengthen Philips’s capabilities in upholding industry standards, supporting all the IP litigation that Philips is involved in, and finding new and creative ways to monetise our IP portfolio through technology, patent and global brand licensing.

For the first time this year, Philips was named number one filer at the European Patent Office (EPO). Although quality is always the primary focus, I think achieving this metric is testament to our strong focus on R&D and the strength of innovation at Philips.

Q: This is your first European-based role. Do you see Europe playing a more prominent role in shaping the patent market in the future?

When the unitary patent and Unified Patent Court (UPC) launch in 2017/2018, they will strengthen the system overall in Europe, providing a one-stop shop for patent filers that is more cost effective and more consistent. What you are currently seeing are venues such as Germany, France and the United Kingdom becoming more popular for IP litigation, and I see that trend continuing.

Q: You have dedicated much of your career to addressing the threat of non-practising entities (NPEs). What do you think the future looks like for assertion entities?

It depends on how you define an ‘NPE’. I think that current US legislative attempts to address the threat completely miss the mark, since there is no consistent definition of what an NPE is. If you cannot define the problem, you will never solve it. I believe that the issue is not with NPEs, but rather with bad-quality patents. It could be effectively addressed by eliminating these – although the United States has a long way to go before this happens. I was the founding CEO of Allied Security Trust and co-founder of Unified Patents Inc because the threat posed by NPEs to companies remains so significant.

Q: How do you think the issue of patent quality could best be resolved?

There are a number of different ways. I believe the priority should be on stronger patent examination to weed out patents with nebulous claims at the start of the process. The European Patent Office has a long history of granting high-quality patents and should be used as a benchmark for other offices.

Q: What is your take on the patent market today and how do you envisage it looking in five years’ time?

It will continue to be a very litigious IP environment, consolidation will occur, the patent sales market will become more robust as more and more companies try to identify key differentiating intellectual property that they need to protect their businesses, and as companies continuously prune their portfolios to generate needed funds for internal use and to avoid excessive IP filing/maintenance costs. The UPC and UPS will both have launched and hopefully will be very successful.

6 Xiang Wang

Xiaomi’s collaborator in chief

Over the last two years, smartphone maker Xiaomi has become the poster child for young Chinese businesses, moving quickly to catch up with more established rivals on the IP front. Led by founder Lei Jun, the company has also demonstrated that bringing in top IP business talent is just as important as buying patents. The June 2015 hiring of Qualcomm Greater China president Xiang Wang and subsequent announcement that he would take charge of the company’s IP efforts was a major statement of intent.

With 20 years of experience as a business executive in the semiconductor and communications industries under his belt, Wang gained significant exposure to intellectual property during his tenure with the San Diego based chipmaker: “Fourteen years ago when I joined Qualcomm, I was on a team in the semiconductor section. But as everyone knows, Qualcomm is very big in IP; so I started learning that very unique business model and became involved in many IP projects.” The number of licensing deals, patent acquisitions and new hires during Wang’s tenure so far demonstrates that he has hit the ground running: “Although I have been with Xiaomi about one year, I feel like it has been longer, because so many things have happened in the last six months. Xiaomi is a young, energetic company; we work very hard and have made very good progress.”

Intellectual property is just one part of Wang’s brief: as senior vice president of strategic cooperation, he also oversees the supply chain team. This range of responsibilities makes clear that the company views patents as not just a method of avoiding lawsuits, but a crucial way to build business relationships with suppliers and competitors alike. “The IP issue is fundamentally a business issue, so I think it makes a lot of sense to let business lead the IP strategy and execution,” Wang says. The portfolio also reflects the company’s start-up mentality: with limited resources, senior executives are expected to have many strings to their bow.

To complement Wang’s broad deal-making experience, Xiaomi has brought in veteran IP specialists to lead the IP functions that report in to him. In the past six months, the company hired Bin Sun, former head of intellectual property at leading Chinese IP owner BOE, to head its litigation team; and also absorbed patent fund operator Zhigu through a share purchase, bringing its team in-house. Zhigu president and former Intellectual Ventures executive Paul Lin now heads up a team that runs Xiaomi’s licensing efforts.

The task ahead of that team is a big one. In the early days of the company, its most important innovations were around developing a new business model – early bets on its custom operating system, user experience and e-commerce paid off, making it for a time the world’s most valuable start-up. Now the company must prove itself in the hardware realm as well. “We need to be even more involved in technology innovation,” says Wang: “Last year, we filed over 3,000 patents and we will continue to invest our resources on the product side and also the IP side.”

With Xiaomi looking to expand beyond the Chinese market, licensing deals have a big role to play in securing freedom to operate. The company signed an agreement with Qualcomm last winter and one with Microsoft in June. Says Wang: “Our strategy is very simple and direct: we want to build long-term, sustainable, win-win business partnerships with licensors. We want to be fair to both parties and achieve sustainable growth for both.”

3 Jason Ding

The man leading Huawei’s journey to the IP uplands

No company exemplifies the dramatic IP strides taken by Chinese companies better than telecommunications and electronics giant Huawei. Its IP team has been led by Jason Ding since 2006.

Q: How did you get your start at Huawei?

I joined Huawei as a hardware engineer in 1995, when the company was developing the C&C08 Exchange System – one of the most important products in its history. Years ago, when I brought clients to the company’s showroom, I often pointed to one circuit card out of hundreds installed on the rack and said proudly, “Look! This card was designed by me.” Of course, you cannot find that card in the showroom any longer, as Huawei has been growing fast and technologies have been updated rapidly as well.

Q: When did you become involved with the IP team?

It was quite unexpected for me to get transferred to the IP area. About 10 years ago, a company executive suddenly called me and said: “You should come and work in the intellectual property department.” I was not quite sure how much value intellectual property would bring to this company. To join the IP department, I had to leave my R&D group where I had been working for several years and understood the other members very well. I thought it would be a very uninspiring job at the time. The IP team of Huawei was very small, with only about a dozen members, and was completely different from the previous R&D department where I had led hundreds of members.

After a decade’s development, our IP team now has hundreds of members, working from branches in Shenzhen, Beijing, Shanghai, Munich, the Bay Area and Texas. When I joined, new patent applications had already reached 3,000 per year; however, not a lot of those were outside China. The first thing I decided was to start filing a large number of patent applications in the United States and Europe, and later other regions and countries with active economies. Huawei now has more than 7,000 granted patents in the United States, growing by 1,500 per year or so. Similarly, in Europe we have been listed as one of the top assignees for several years.

Q: How would you summarise Huawei’s overall IP strategy?

IP management means not only owning a portfolio, but also – more importantly – giving the company the capability to develop business worldwide on a legal basis by making deals with other rights holders. Undoubtedly, Huawei’s respect for third parties’ intellectual property and our practices in patent licensing and cross-licensing have contributed to our success in China, Europe and other areas. Many people ask me why Huawei faces less litigation from competitors than other Chinese companies, and others say the next one to get sued must be Huawei. As a matter of fact, Huawei has concluded patent licence agreements with most of our competitors and these predictions have not come to pass.

Q: You have made some high-profile cross-licence deals in the past year. What is the licensing market like right now?

As both a licensor and a licensee, there is no doubt that Huawei’s licensing approach is a balanced one, which not only reflects a reasonable return on the licensor’s R&D investment, but also avoids placing an excessive burden on licensees’ business. The IP system was originally designed to compensate and promote innovation by creating a reasonable return on investment in R&D. However, we also see that licence offers provided by some licensors have gone far beyond the range of a reasonable return, which raises questions about the legitimacy of patent licensing in the industry.

A mature industry has a post-tax margin of only 5% to 10%. Take a look at aeronautical manufacturing, a high-tech industry with limited competition: Boeing has had core operating margins of only around 8% in the past few years. And in many industries, only the top companies can usually be profitable, while other companies barely survive. If a licensor says to you and to other companies, “I believe my patent portfolio is worth 5% of your company’s revenue”, wow, that is almost taking away all profits of the entire industry. Frankly speaking, that is far beyond the licensor’s R&D investment.

Q: As Chinese companies play a bigger role globally, how is the IP landscape changing?

If you are a practitioner in this industry, you will find that fewer and fewer real licensors are coming from the United States that are not NPEs. Increasing numbers of US operating companies dislike patent protection – first because the Internet and open source technology are fundamentally affecting IP licensing and transactions, and second because the production and manufacture of products are increasingly located in Asia and Asian companies have more and more patents. However, since the patent system still exists, the game continues – opportunities are being transferred to the East just like manufacturing was.

1 Erich Andersen

Plotting a new patent course to ensure that Microsoft stays ahead

There is arguably no bigger job in corporate intellectual property than head of Microsoft’s IP group. The software giant touches so many parts of the patent market – from licensing through aggregation, collaboration and investment to sales and acquisition – that few other roles have as much influence.

This breadth meant that two years ago the company’s then IP head, Horacio Gutierrez, was at the top of the table in our inaugural Market Makers top 40. Shortly after that, he stepped down, ultimately becoming Microsoft’s general counsel before leaving to head the legal function at Spotify.

Under Gutierrez’s successor, Erich Andersen, Microsoft’s reach in the patent market remains unrivalled. However, it is also clear that after two years in the hot seat, the software giant’s new IP supremo has already had a profound impact. Andersen and his team have been reshaping the company’s patent strategy to more closely match the company-wide shift to a more collaborative, partnership-based approach to doing business.

This is quite a change for one of the industry’s licensing juggernauts. “We feel that the strategy of engaging with companies on licensing and meeting them where they are and giving us the opportunity to collaborate more has been successful,” Andersen reflects. “Some of the deals that we’ve done feel like real breakthroughs with those companies.”

As evidence, Andersen points to China – a market that has been challenging for many IP owners, including Microsoft. In June, the US tech giant announced a major licensing agreement with Chinese smartphone manufacturer Xiaomi, which has quickly become one of the major players in the world market. As well as agreeing to a cross-licence and that a selection of Microsoft products would be pre-loaded on some Xiaomi phones, in a rare move the US business also sold a portfolio of 1,500 patents to the Chinese company. “We are not in the general practice of divesting our patents,” admits Andersen. “That element of the deal was framed around their business need.” In other words, a tailored approach aimed at securing what may well be a very fruitful, ongoing relationship.

It is not just the flurry of licensing deals that Andersen and his team have inked that signals a less hard-nosed approach. Last September, Microsoft and Google announced an end to their series of protracted patent disputes around the world and revealed that they would “collaborate on certain patent matters”. Since then, both have been part of a group of major operating companies which has thrown its support behind the Industry Patent Purchase Programme (IP3), an initiative designed to provide patent owners with a forum through which to sell their intellectual property. “Historically, there has been a lot of collaboration in the IP space,” Andersen points out. “IP3 is an experiment to see if there are new and better ways to introduce greater efficiencies for patentees.”

Reflecting on Andersen’s tenure, it is plain that a lot of his first year was spent on internal analysis and planning, while year two has been about making that analysis pay off. “When we were going into the 2015 financial year, we had to look at the IP landscape and decide which strategic changes we wanted to make,” states Andersen. As he points out, new case law in the United States has cast a cloud over some patents, especially those relating to software, making planning more perilous. However, in commenting on the new direction, Andersen returns to a familiar theme: “We decided to make a strategic shift to work with partners in a way that accentuates the business value between the two companies.” The results of this past year have undoubtedly validated that approach.

However, Andersen has also taken over at a time when Microsoft’s licensing revenues are coming under pressure. In the third quarter of its 2015/16 financial year, the company announced that it had seen a 26% decrease in royalty income. That, Andersen admits, reflects the twin forces of the partnership-based approach, which is about more than just bringing in cash to the bottom line, and the fact that the global smartphone market has seen the price of most devices plummet. This fall naturally affects licensing income, given that the typical charge is tied to the volume of sales.

As he begins his third year at the helm, Andersen highlights three themes to watch over the next 12 months. There will, he hopes, be further clarity from US courts on issues such as patent-eligible subject matter. How the IP environment adapts to the ongoing development of cloud-based technology will also be worth following. Finally, Andersen flags the continued development of the Chinese and wider Asian markets, and particularly the possibility of more litigation. Such is Microsoft’s IP reach that we can expect the company to have its finger firmly on the pulse of each of those trends.