Build or Partner – Deciding Whether To Commercialize Enterprise Patent Portfolios
With In-House Teams or Specialized PartnersHosted by the Silicon Valley Chapter
Wednesday, December 16, 2020
PRESENTATION
PROGRAM:
Corporate IP executives charged with commercializing enterprise patent portfolios can build licensing programs using in-house teams or outsource licensing to external commercialization specialists who assume control of the assets. The decision on whether to build or partner involves evaluating and balancing numerous considerations, including many that guide the decision of whether to license in the first place:
- Expected returns over time
- Required investment for commercialization
- Short-term financial objectives and constraints
- Loss of use of patents for exclusivity and/or defense
- Counter-assertion risk
- Customer issues
- Management priorities and willingness to support the licensing efforts over time
- IP department focus issues
In this session, we will hear from the personal experiences of corporate IP executives who have dealt with these issues, as well as from a leading external patent commercialization firm that has partnered with multiple enterprises to commercialize major patent portfolios.
Panelists:
Joseph Lee, Vice President, Associate General Counsel, IP Licensing, Hewlett Packard Enterprise
Pat Patnode, President of Licensing, GE Ventures
Keith Wilson, EVP, Partnerships and Acquisitions, IPValue
David Wright, Former VP, Fellow & Patent CTO, Cypress Semiconductor
Moderator: Stefan Tamme, VP of Worldwide Licensing and IP Strategy, Rambus
Panel Bios:
Joseph Lee, Vice President and Associate General Counsel, HPE
Joseph leads the HPE’s IP Licensing team, with over 28 years of experience in the IP legal industry. He has extensive licensing experience, with prior licensing roles at Qualcomm, Intellectual Ventures and Acacia. Joseph has also served as Chief IP Counsel at Conexant Systems, and as an IP Managing Director of Broadcom’s Cellular Business Unit. He has a BSEE from the University of Southern California and a JD from UC Berkeley’s School of Law.
Pat Patnode, President of Licensing, GE Ventures
Pat leads the licensing team responsible for accelerating innovation and growth for partners by providing access to GE technologies and inventions through licensing and joint development partnerships. Before becoming President of Licensing in early 2016, he was General Counsel and managed the GE Ventures legal team responsible for all legal and compliance needs for the various business units. The legal team’s practice areas span numerous industries and subject areas including securities, intellectual property, complex commercial and licensing transactions, and litigation. Previously, Pat served as the Chief Compliance Officer for GE Global Research. He managed compliance for the GE Global Research Centers around the world, including sites in India, China, and Germany.
Keith Wilson, EVP, Partnerships and Acquisitions, IPValue Management
Keith joined IPValue in 2002, and in 2017 was appointed to his current role running business development and a portion of the company’s businesses. He has over 25 years of experience in intellectual property law, licensing, and management. Prior to assuming his current role, Keith was Senior Vice President, Legal, and oversaw all legal operations of the company. Prior to joining IPValue, Keith was Vice President, General and IP Counsel at Solus, a venture capital-funded technology company specializing in precision optical and electromechanical devices, where he managed the intellectual property and legal business for the firm. At Solus, Keith handled the development of the Solus IP portfolio, IP licensing litigation, corporate financing transactions, and the successful effort to sell Solus and its IP to NP Photonics. He worked for over a decade for Litton Industries, a $5B technology company, in a number of technical, legal, and executive positions, including Chief IP Counsel. At Litton, Keith was instrumental in several key intellectual property licensing programs and cases, including Litton v. Honeywell, which resulted in a jury verdict of $1.2B, the largest ever in a patent infringement case for a single patent, and Stanford/Litton v. Corning, et al., which was part of a successful patent licensing program to commercialize inventions out of Stanford University.
David Wright, Former VP, Fellow and Patent CT), Cypress Semiconductor
David was born and educated in the UK where he gained BS and MS degrees in Electrical Engineering at the Universities of Southampton and Bournemouth. In his early career he worked in the satellite communication and Marine electronics industries before joining Saitek PLC, a consumer electronics startup, to establish and lead its hardware/firmware team. In 1999 he was hired by Cypress Semiconductor to lead its USB Applications Engineering team in Woodinville, WA and subsequently led the System Engineering Group before assuming the role of lead architect for USB, Wireless and MCU products lines. David was promoted to VP in 2008, and in 2010 established Cypress’ Patent Strategy and Monetization function as VP, Fellow and Patent CTO including responsibility several patent licensing campaigns which he conceived and executed. In 2020 he left Cypress and now leads his own Patent Strategy and Monetization advisory business. Over the course of his career, he has been awarded over 175 US patents, and has been responsible for patent monetization proceeds into nine figures.
Moderator: Stefan Tamme, VP of Worldwide Licensing and IP Strategy, Rambus
Stefan joined Rambus in 2004. He leads the strategic development of Rambus’s patent portfolio and the implementation of its IP monetization strategies through its licensing programs and solutions businesses. His responsibilities include outbound licensing, as well as acquisitions and divestitures. He has been involved in successfully negotiating and closing transactions that have generated over $1 billion in revenues for Rambus. Previously, Stefan served as Rambus’s director of global business enablement, where he led the strategic alliance partner program and the worldwide reseller channel. He has over 20 years’ technology and licensing experience in the electronics industry, ranging from semiconductors to systems and software.
Thank you to our host:
LES-SV CLE Credit: 1.5 hours MCLE credit available (California).
