IAM’s Top 40 Market Makers

Former Qualcomm executive Pio Suh officially became managing director of European NPE IPCom at the end of July last year, although he had effectively been doing the job since 2018. Succeeding Bernard Frohwitter – who founded the firm on the back of the purchase and widespread enforcement of a portfolio of Bosch patents – Suh has focused on broadening IPCom’s offering into mobile communications. The business scored a notable win over Vodafone in early 2021 when the UK Court of Appeal overturned a decision that had allowed the telecoms company to cite Crown Use as a defence against the infringement of IPCom’s patents.

ZTE is expecting big things from deputy IP head and chief licensing officer Marco Tong. The company – which currently boasts a trove of over 2,500 patent families declared essential to 5G standards – is projecting royalty revenues upwards of $150 million annually for the next five years, making it one of China’s premier patent licensing operations. Long one of the country’s most active patent sellers, Tong made waves earlier this year with a record-breaking patent assignment to Oppo – the latest sign of a nascent domestic transactions market emerging in China.

Last year Blackberry appointed monetisation veteran Bryan Yearwood to head up its patent licensing efforts, putting him in charge of a portfolio earning upwards of $300 million in royalties per year. Just a few months later, it was revealed that the tech leader was considering selling this 38,000 strong cache of assets. Whatever happens next, the former Rovi and McKool Smith licensing expert is in the eye of this particular megadeal – and the market is paying close attention.

Yosuke Iida leads one of Japan’s premier corporate IP teams, which looks set to play a pivotal role in how Asia’s biggest automaker approaches the licensing challenges of the 5G connected car era. The group is also hard at work securing wider adoption of Toyota’s own technologies throughout the auto industry and beyond. Ever the innovators, the group is achieving this through open patent pledges for hybrid and hydrogen tech, as well as a paid out-licensing programme, Toyota IP Solutions. A string of successful transactions with close supply partner Denso confirm that patents are a key innovation currency within the Toyota empire.

In a year where Facebook saw ongoing patent litigation with Blackberry (since settled, although no information about the deal was made public) Jeremiah Chan has made his mark with an effective PTAB campaign and a targeted defensive buying strategy that saw the social media giant acquire key assets from AT&T and immediately put them into the field. All this while building one of the most analytically savvy IP teams out there makes Facebook formidable at all levels of the IP market and Chan a force to be reckoned with.

Elvir Causevic and partner Ed Fish struck out as independents again last year, after three years running an IP group within investment bank Houlihan Lokey. It did not take long for Causevic to find himself at the heart of a potential blockbuster transaction – IAM has reported that he and Fish have been engaged to pitch the Blackberry portfolio to potential buyers. Such a headline deal could well position the pair’s new vehicle Tech+IP Capital, as a major player in the IP market.

Chair of Dominion Harbor Group, David Pridham boasts over $1 billion generated for clients and investors, making the NPE one of the market’s biggest players. The group uses data analytics to mine its own massive portfolio for the best monetisation opportunities, a capability that it hopes to expand as part of its client offering. But a sophisticated licensing operation, backed by strong litigation capabilities remains the core of the Dominion Harbor business.

While Google finally triumphed this year in its big US Supreme Court clash with Oracle over API copyright, the patent space is more fraught with risk than ever. In 2020, the search giant snatched the unenviable title of most-targeted US patent defendant from Microsoft. Michael Lee, head of patents, is ensuring that the company keeps a close eye on the transactions market, through both defensive-oriented buying programmes such as IP3 and deals of its own. A connected devices portfolio from Intel and the augmented reality IP rights of M&A target North were among the major additions of last year under Lee’s leadership.

Legal director Steven Liu is helping to make MediaTek one of the biggest winners in a booming chip industry, buoyed by the growth of Chinese smartphone brands. Liu and his team have optimised the company’s patent portfolio in a market characterised by both deep-pocketed NPEs and frequent competitor litigation. The group has taken a strategically diverse approach. On the one hand, it has acquired rights from companies such as GlobalFoundries, RPX and IBM. On the other, it entered one of its largest ever transactions this year when they sold around 2,000 patents to NPE WiLAN. That deal, along with recent litigation initiated against rival NXP, suggest that MediaTek is increasingly focused not just on risk but on value creation.

Lewis Lee is CEO and global head of an ambitious unit at Aon that is developing new deal structures in the IP finance space, under the insurance giant’s backing. The group’s innovative Collateral Protection Insurance product wraps an insurance policy around IP rights that are put up as security for a loan, increasing lenders’ confidence in the value of the assets that they are lending against. Aon announced the latest such deal – between a university spin-out and investment bank Jeffries – in June. This stellar activity is all backed by a data-led valuation capability. Having just raised a $400 million IP-focused fund, Lee and chief innovation officer Brian Hinman look set to start deploying those methods to land deals of their own.

A quick resolution to the epic patent standoff between TSMC and GlobalFoundries has paved the way for the former to make one of its biggest external patent acquisitions to date, picking up more than 750 patents in the settlement’s aftermath. Though it is a major R&D power in its own right, chief IP counsel Billie Chen has made secondary market activity a key part of how TSMC, the jewel of Taiwan’s tech industry, deals with patent risk; an ongoing partnership with WiLAN has helped it scoop up several portfolios from other big operating companies in the sector.

Heath Hoglund handles patent licensing at Dolby, a particularly crucial operation for the audiovisual equipment company. Through its own licensing efforts, plus those of its subsidiary, patent pool operator Via Licensing, Dolby generates an impressive revenue stream that allows significant reinvestment into R&D. Hoglund ensures the industry leader’s technology and brand reputation remains strong, facilitating non-contentious deals. However, Dolby has also proven its willingness to pursue holdouts with litigation, even in up-and-coming jurisdictions like India.

Chip-sector licensing vehicle IPValue has flourished under CEO John Lindgren in a market that continues to reward high-quality semiconductor-related patent rights. This year, the company licensed a portfolio of semiconductor circuit designs to graphics chip giant NVIDIA. On the transactions front, IPValue replenished its portfolio in hook-ups with Mitsubishi Electric and UMC. The firm has also recently disposed some assets to other NPEs that subsequently asserted them, a development sure to be watched closely by firms in the sector.

In April this year Conversant Intellectual Property Management changed its name back to Mosaid Technologies, a move that CEO Boris Teksler billed as a return to the organisation’s roots. This looks likely to mean a strong focus on the red-hot semiconductor space, in which the company has built up a portfolio of around 1,200 rights worldwide and will no doubt be looking for opportunities to grow. The corporate makeover came in the wake of a syndicated deal with RPX, which finally brought to a close Conversant’s long-running wireless patent disputes with Apple, Huawei, LG and ZTE.

Defensive outfit Allied Security Trust remains a dependable transactions partner to tech giants such as Facebook, Google and Microsoft, all participants in the company’s latest IP3 patent buying programme. The latest new deal model spearheaded by CEO Russell Binns’ team is a relationship with the LOT Network giving the organisation’s members a chance to swoop in and buy certain portfolios before they hit the brokered patent market.

Dublin-based Atlantic IP has made a big splash in the patent market, with high-value acquisitions paving the way for high-volume litigation campaigns, and increasingly, deals with major names. Attorney Gerald Padian is the chair and managing director of the firm, which is backed by hedge fund Magnetar Capital. Atlantic IP handles seven separate portfolios, the newest of which, covering wireless charging technology, was the product of a February hook-up with LG Innotek.

Sisvel’s recent settlement deals with Xiaomi and Oppo marked a breakthrough for the patent licensor, which has been locked in cross-border litigation with several top Chinese smartphone makers in recent years. The result is that SEP royalties from those major Chinese players are on the way not only for Sisvel, but also for its partner Mitsubishi Electric. CEO Mattia Fogliacco will hope that this provides the momentum for future agreements related to the company’s Mobile Communication Program.

Executive vice president and corporate executive Toshimoto Mitomo has led a patent portfolio overhaul stretching back to 2013, keeping Sony at the cutting edge of a dynamic landscape. The IP team’s top priority is not collecting and maintaining IP rights, Mitomo says, but “using patents to explore new business opportunities and show our capabilities to form alliances”. While the company does engage in pure patent transactions from time to time – it recently acquired hundreds of chip rights from Intel – the deal flow most important to Mitomo & company consists of very high-level corporate partnerships.

Last year was a banner one for patent pool operator Access Advance, and CEO Peter Moller is looking to build on that momentum as attention focuses on the next generation of video standards. Its HEVC pool (the company was previously known as HEVC Advance) consolidated its leading position with major additions to its licensor group. All eyes are now on the burgeoning VVC era (one reason why the firm changed its name). Access Advance launched its VVC pool offering in June, increasing rates overall but providing incentives for its HEVC licensees to sign on.

Vivo’s share of global smartphone sales has built steadily over the last three years, with Huawei’s decline providing the opening for the Shenzhen-based company to finally secure a 10% market share earlier this year. Vivo has also stepped up its internal filing and gotten involved in standards setting. A target of litigation in places including India and Europe, it has also boosted its portfolio by acquiring a couple hundred patents from Ericsson in assignments revealed earlier this year. If Xu Xianwen continues to follow the blueprint of other Chinese smartphone risers, we could be seeing a lot more from Vivo in the years to come.

There is a new man in charge at listed licensor InterDigital after the retirement of longtime executive Bill Merritt. Recently instated CEO Liren Chen is an industry veteran who has spent the past 25 years at Qualcomm, finishing up his tenure there as the chip giant’s global head of intellectual property. His new role will see Chen take on the familiar task of monetising assets for one of the wireless industry’s leading standards setters; he can also rely on the massive Technicolor portfolio to drive value. InterDigital’s licensing revenues climbed in 2020 on the back of a deal with Huawei, although the company remains locked in a knock-down drag-out fight with ascendant Chinese handset maker Xiaomi.

Licensing business WiLAN remains an important profit contributor for its parent company, Canadian-listed Quarterhill. Led by CEO Michael Vladescu, the IP-focused side of the business sealed new royalty-bearing deals in the past year with big names such as Intel, LG and HP. In a thriving market for semiconductor assets, WiLAN continues to add to its holdings. Its biggest recent acquisition brought in over 2,000 patent rights from Taiwanese chip designer MediaTek, while also adding a new portfolio from IBM. In the courtroom, Vladescu’s squad recently snagged a final judgment from Apple, which totalled more than $100 million.

Paul Lin set up Xiaomi’s IP strategy division in 2016 and has since proceeded to methodically negotiate deals with the biggest licensors in the game. Five years later, handset sales are booming for the Chinese behemoth, which means a significant payout to patent owners – just under $1 billion during 2020. The Xiaomi group has shown that it has backing to fight it out over terms that it regards as non-FRAND, but it is also empowered to strike sensible agreements with high-quality portfolio owners. Lin handles both IP strategy and broader business development duties and has emerged as an outspoken advocate for product makers that respect IP rights and seek truly balanced FRAND outcomes.

All eyes on are LG Electronics following its announcement that it will stop producing smartphones. There has been plenty of speculation over whether the South Korean tech giant will sell off assets, become a more active licensor, combine the two approaches or continue on as before. Only HwiJae (Jay) Cho and his sizable IP department know for sure which path the conglomerate is charting, although we do know that significant tranches of assets have been offered up by brokers to potential buyers in China and elsewhere. LG’s 5G portfolio and its few but recent forays into patent assertion will be closely studied as the company weighs its options.

The sell-off of Panasonic’s last semiconductor assets in 2020 did not mark the endgame for the Japanese mainstay’s IP monetisation efforts. On the contrary, the outfit led by Yoshiaki Tokuda has sprung to life over the past year. The sale of nearly 100 wireless patent assets to Apple showed that there are plenty of extremely valuable assets in the Panasonic portfolio. The company is also leaning on its portfolio to bolster its position in key operating businesses: a rare assertion from Panasonic in US court-targeted Magna International, a key competitor in the automotive supply chain where risks continue to accumulate.

A few years back, Oppo was a smartphone upstart playing catch-up in the patent game, taking canny advantage of deals with major licensors to buy patent rights in bulk. More recently, senior director of intellectual property Adler Feng has charted a new course for the now-established player in the secondary market for patents. The hallmarks of its recent activity are smaller deals, younger rights and hot standards. Far from holding its rights in reserve for potential conflict, Oppo is monetising proactively. After joining Avanci last year, it signed on to HEVC Advance as a licensor in May 2021. The sector’s fourth-biggest smartphone vendor by volume is fighting its corner in litigation across Asia and Europe.

Acacia is accelerating its return to the forefront of the monetisation landscape. Last year it landed the former Yahoo portfolio from Excalibur IP, while this year it has put some of those rights into action with new infringement suits, including with patents it acquired from L3Harris. CEO Clifford Press has told investors that “astounding settlements and judgments” suggest that the market is poised for a turnaround; a capital partnership with Starboard Value and returns from Acacia’s stakes in several life sciences companies should give the firm plenty of ammunition. Its latest acquisition saw it take on hundreds of patents from Newracom Inc, signalling an expansion into the semiconductor space.

Jeff Myers’ Apple IP team has had its hands full over the past year, with a string of high-stakes litigation battles that the tech giant is famous for pursuing to the bitter end. Less known is that the industry leader has quietly become more active on the patent transactions front. M&A is one way that it is using to build up its portfolio, with recent acquisitions in the AI and payments space boosting numbers. But pure patent deals are also on the cards – Apple recently bought nearly 100 wireless SEPs from Panasonic.

Investors applauded Xperi’s settlement of a long-running patent litigation battle with Comcast this year, which the company said would add $50 million to its annual revenues. Significant growth in media licensing receipts has helped buoy it through a repositioning of its semiconductor IP business. Licensing head Samir Armaly says the firm has a strong deal flow in front of it in the media sector, with opportunities equal to the Comcast agreement. Plans to separate Xperi’s patent assets from the operating company have been postponed but could eventually result in a formidable standalone licensing business.

It has been a down-and-up year for Intel, but the licensing, trademarks and standards group under director James Kovacs continues to be a major force in the industry. Throughout setbacks to its advanced chipmaking efforts and a change in CEO, the Intel patent portfolio remained a standout collection of rights, and Kovacs’ division found ready buyers for semiconductor and connected device patents in Sony and Google, two of the most sophisticated players out there. Intel continues to contest high-stakes litigation with Fortress in which it suffered a $2 billion-plus damages award at first instance, underlining how much value there is in the chip patent space.

Licensing platform Avanci has been fairly quiet since it unveiled a new 5G licensing programme with the imprimatur of US Department of Justice antitrust regulators last year. However, there have been significant developments in the ongoing litigation between its members and resistant automakers. Settlements between Nokia and Daimler, Conversant and Daimler, as well as a number of agreements involving Tesla suggest that there is movement in parts of the sector towards getting matters finalised and moving forwards with greater certainty. Of course, the more bilateral deals that are carried out in this space, the greater the appeal of Avanci’s efficient one-stop shop solution. Kasim Alfalahi, who leads the broader Marconi business, has also bolstered the licensing firm once again with the addition of Samsung Electronics veteran executive Hosik Jang. The company is a reservoir of high-level in-house IP experience, just waiting for its next breakthrough.

It was a momentous year for Huawei and one that could push IP monetisation even higher on its corporate agenda. As the company drastically reduced the footprint of its smartphone business, it also made a string of important announcements, which hint that despite headwinds in network gear and consumer products, it expects licensing to be a core profit contributor. In March, the Chinese behemoth revealed its long-awaited 5G patent royalty rates, which it has decided to cap at $2.50 per handset. In May, it broke with past precedent and announced that it had raked in $600 million in patent royalty income during Q1 2021, underlining its intent to cash in on its massive investments in 5G and other wireless technologies. Just two weeks later, confirmation came in that longtime IP head Jason Ding was moving on to another role internally. Taking his place is longtime Huawei insider Alan Fan, who was previously vice president of IP strategy and international legal policy. It was Fan who, when Huawei sued Verizon over patents in 2020 told the media: “We have had no choice to but be more assertive, including bringing actions in court.” Close involvement with Huawei’s recent international legal tussles could be just right grounding for Fan as he leads it into its next phase.

Intellectual Ventures returned to the forefront of the IP landscape in a big way when it concluded a blockbuster licensing deal with RPX that was built on a monetisation strategy steered for several years by the executive vice president in charge of its investment invention funds, Mathen Ganesan. But the critical piece in bringing the agreement together may well have been Ganesan’s hire of former TiVo chief IP officer Arvin Patel, who spearheaded negotiations with RPX over the syndicated licence. While longstanding industry relationships between the principal dealmakers helped to push the agreement across the finish line, the stage was set over several years, during which the IV team under Ganesan has become one of the driving forces on the sell side of the patent transactions space. This has resulted in many assets winding up in the hands of smaller NPE buyers more prone to litigation than IV, which makes a big umbrella deal with the Seattle-based aggregator a sensible move for operating companies across a host of different industries. Securing terms with a “couple of dozen” RPX members is far from an endgame, IV insists, leaving 95% of the addressable market for its formidable monetisation group. One attempt to grow IV’s business globally is a strategic China initiative offering low-cost licences to the country’s SMEs and exploring sales opportunities with growing entities.

In one of 2021’s headline patent deals, RPX secured a licence to the rights in Intellectual Ventures’ first two Invention Investment Funds. The low nine-figure agreement resulted in a massive haul for participating RPX members – approximately 18,000 patents across an especially broad range of technologies, including a significant portfolio of SEPs. Three years into Dan McCurdy’s tenure as CEO of the defensive aggregator, the IV contract is the clearest example yet of the firm’s laser focus on aggregating licensees. It also set the stage for the further expansion of RPX, covering not only the companies that participated in negotiations but also a second tranche of existing RPX stakeholders, plus new clients expected to come on board soon after the deal was completed. RPX has built up a strong track record of syndicated licensing, also recently sealing a deal ending Conversant’s disputes with a group of smartphone makers including Apple and Huawei. RPX also remains among the most active players on the buy side of the patent transactions landscape, securing the rights to hundreds of assets across communications, media and software during the first half of 2021. 

It was always going to be a challenging year for Ericsson’s IP team. CEO Börje Ekholm warned investors well in advance that the expiry of key licensing deals meant that the company was willing to accept “temporary gaps in revenues” throughout 2021 and continuing into 2022 to ensure that its market-leading wireless portfolio continues to deliver a fair value to the bottom line. To the credit of chief IP officer Christina Petersson, Ericsson was able to wrap up a new multi-year licensing deal with key smartphone seller Samsung Electronics only six months after litigation broke out between the pair and rapidly spread across the globe. This put the licensing business back on track to deliver upwards of Skr2 billion ($237 million) by Q2 2021, after just one rough quarter. Investors will be pleased that the disruption was short lived, while Ericsson is confident that it has built a sustainable basis from which to benefit from the coming proliferation of 5G.

Eran Zur’s Fortress operation continues to lead the pack in an era in which NPEs must go big or go home. An impressive track record of patent acquisitions has put the investment manager at the heart of numerous ongoing patent monetisation campaigns, and Zur is now seeking to leverage some notable successes over the past year into a new round of fundraising. One recent stand-out result is a $2 billion verdict for Fortress vehicle VSLI over Intel in the Western District of Texas. Intel subsequently saw off a second VLSI claim in the same Waco courtroom and still has plenty of options. However, it is the eye-watering first-instance award that signals why many feel are now banking on more financial investment heading towards the space. Fortress is looking to capitalise by raising a new fund that could top $900 million. Pitch decks advertise a “gross, unlevered internal rate of return of at least 20%”, illustrating Fortress’s confidence that it has found a winning formula in the process of making 40 IP-related investments since 2013 totalling $900 million. Zur’s team is touting a continued swing toward patent owners; if this comes to pass then few are better poised to take advantage.

Jenni Lukander has provided a firm hand on the tiller for Nokia Technologies throughout a period of change at the Finnish telco under the leadership of a new CEO. Stability within the IP group is a testament to the ballast that a €1.4 billion-a-year licensing programme can provide for an operating company in a highly competitive sector. Lukander’s team brought home a particularly momentous deal when it agreed to a settlement with automaker Daimler, closing a long-running SEP dispute and avoiding – for now – the prospect of lengthy CJEU proceedings that would have left a big question mark hanging over the whole FRAND licensing space. Nokia also buried the hatchet with Chinese company Lenovo, further clearing its docket of legal disputes. While deals born of litigation are high stakes and high profile, arguably more important for Nokia are those agreements that it enters into quietly and without public dispute. A key example from the past year is its royalty-bearing pact with Samsung Electronics that extended the pair’s licensing relationship into the realm of video standards – the Lenovo dispute also involved codec technologies. Inroads into the video space and an agreement with a reluctant car manufacturer are both bullish signs for the Nokia Technologies business, which, as Lukander declared to IAM, “is very profitable and on a solid foundation”.

Bill LaFontaine’s IP team at IBM remains firmly ensconced as the dominant force in the patent transactions market. Big Blue’s status as perennial leading filer of US patents demands a rigorous and unsentimental approach to portfolio management, as the department seeks to ensure that its significant IP investments result in value creation. In 2020, IBM increased its already high rate of US patent abandonments, letting around 6,000 rights lapse. At the same time, its patent-selling programme has been going at full throttle. The industry stalwart has spent two straight quarters as the top seller by deal number in IAM’s quarterly analysis of patent assignments. This is down to deals for software rights with buyers such as Instacart, ServiceNow and Alibaba, plus chip-sector disposals to Samsung Electronics and NPE Quarterhill. On the licensing front, litigation filings provide a glimpse into a programme that continues to seek royalties from up-and-coming internet companies – over the last year this has included Zillow, Chewy and Rakuten. The IBM business as a whole is going through some changes, having spun off its managed infrastructure business to focus on hybrid cloud and AI. Analysis of the patent space shows that LaFontaine’s team has positioned itself to remain a key asset for this more focused company.

With Lee In Jung at the helm, Samsung Electronics has become bolder than ever in asserting its own IP leadership and in fighting for more favourable licensing deals as one of the biggest global producers of electronic devices. The company’s short but highly consequential standoff with Ericsson earlier this year provided a case in point. The financial guidance provided by the Swedish telco at the outset made clear that Samsung was paying a hefty sum under a deal from 2014. Samsung’s team came out aggressively, throwing an unexpected first punch in the form of a Chinese FRAND lawsuit, convinced that the existing rate could not be sustained. While the details of the settlement remain murky, many believe that Samsung was able to secure concessions in what was overall a positive arrangement for both sides. In the transactions market, Lee’s team acts when it sees valuable third-party acquisition opportunities. When Samsung’s display affiliate was sued by an upstart competitor from Japan, a Samsung vehicle hit back by asserting patents bought from Seiko Epson. Despite owning the largest global patent portfolio, Samsung clearly understands the strategic edge that secondary market moves can provide.

Alex Rogers was recently appointed Qualcomm’s president of global affairs, adding to his existing duties as Qualcomm technology licensing president. It’s not hard to imagine why: Rogers has ably steered the IP side of the business through significant regulatory challenges. For the first time in years, Qualcomm is counting the royalties as they come in free from dark legal clouds overhead. In March, the Federal Trade Commission decided not to pursue its antitrust case against the chip company to the Supreme Court. This left in place a Court of Appeals for the Ninth Circuit reversal, which represented a huge comeback for Qualcomm after an earlier district court setback. This result has been a rescue order for the industry’s best and biggest wireless licensing programme. With long-sought Apple and Huawei deals in place, the machine built by Alex Rogers’ Qualcomm Technology Licensing team can finally fire on all cylinders. The company’s chip business is also strong, despite some setbacks during 2020 in the Chinese market, but IP income provides valuable support and a direct contribution to the bottom line. Qualcomm reaped nearly $1.5 billion in royalties for smartphone sales during a bumper Q3 2021. With more than 150 5G deals in place, it is poised brilliantly to capitalise on the continued shift to next-generation personal devices. The next task for Rogers may be figuring out how to earn more from fields such as IoT and auto, all while keeping handset licensees on side.