What are the key skills that a negotiator should possess, and how can these be honed?
Perspective, patience and insight. To be successful in a negotiation, you need to look at the negotiation from all sides. That is easier said than done. Insight is gained through research and understanding the facts. A good negotiator should do their homework and appreciate that, in order for a deal to be successful, it needs to benefit both parties. You cannot bully your way into successful negotiations.
You have won acclaim as an expert witness – how do you convey complex technical concepts and arguments in a way that is clear to juries?
Analogies definitely help. Some attorneys loathe them, and some love them. The most complex technical concepts can be understood by anyone when presented in a way that they can associate with. My father reminded me of this often as my education grew and I became more experienced in business. He was a big advocate of KISS, the US Navy acronym for “keep it simple, stupid”.
Which of the patent monetisation deals that you have worked on are you most proud of – and why?
I am most proud of the monetisation deals I was involved with early on in my career, when I did not have a lot of experience and was negotiating with very accomplished negotiators. I was the CEO of a software development and patent holding company in the early 2000s, and then I ran the licensing programme for another patent holding and technology development company. During that timeframe, I negotiated dozens of licence agreements with Fortune 500 companies. I learned a lot on the job, for sure.
What are the biggest challenges that your clients are facing right now?
I work for a wide range of clients. On the SEP side, the uncertainty caused by anti-suit/anti-interference injunctions that tell courts in other countries what they can or cannot do is a real risk – in particular, China asserting a right to adjudicate global FRAND rates that most practitioners do not believe are fair or reasonable.
However, in general, the pendulum is swinging back somewhat in favour of SEP holders. This correction is overdue. Many implementers have been rewarded for holding out and delaying paying a fair and reasonable royalty for SEPs they leveraged to build their brands and companies. There needs to be a balance between the rights of implementers to access the key technologies that they require to develop their products with fair and reasonable licence fees that reward SEP holders for taking the financial risks to develop those technologies. Anyone who was been on the development side of SEPs knows how significant the R&D costs can be —and there is no guarantee that those efforts or contributions will be incorporated into a standard where they can be monetised.
If you could make three changes to the US licensing space, what would they be and how likely do you think they are to happen?
I am going to focus on SEP licensing here, since that is where I spend a lot of time. My opinions walk the line a bit with legal issues, but licensing is often intertwined with litigation, so I think of both in my licensing work. First, I would like to see more transparency with advocacy organisations such as the Fair Standards Alliance and The App Association that receive a lot of money from SEP implementers while advocating, in an attempt to drive SEP rates down. How likely is that to happen? I do not think that it is very likely. Second, I would like to see an end to the “false FRAND promise” antitrust charade. It is hard for me to understand how attorneys are allowed to make this claim (that every standards-development organisation participant lied about FRAND for every submission) in court. I think that this is ridiculous and likely to go away in the next few years. Third, I think injunctions should be allowed if a reasonable arbitration offer is rejected. I would give this a 50–50 chance of happening.
The views and opinions expressed in this questionnaire are those of the author(s) and do not necessarily reflect the opinions, position or policy of Berkeley Research Group, LLC or its other employees and affiliates.
Larry Tedesco provides financial damages, valuation, licensing and expert-witness services in litigation matters. Over 20 years, Mr Tedesco has monetised intellectual property as an owner and for clients in a wide range of industries. He has negotiated over 100 IP transactions. Mr Tedesco’s experience includes strategic advisory services to IP rights holders and companies of all sizes, delivering IP damages assessments in IP litigation and evaluating licensing terms and parties’ intent in patent licensing transactions.