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Strategic Patent Management & Monetization 2Q 2015
Contents:
1. Integrated Strategic Patent Management
2. Nest Labs’ Integrated Strategic Patent Management
3. Patent Citations as an Indicator of M&A Feasibility
4. Apple’s Strategic Alignment in Patent and M&A
5. Alcatel-Lucent acquisition by Nokia would provide leadership in Mobile based IoT innovation
6. Key wireless charging patents behind Samsung Galaxy S6: Open Innovation
7. Internet of Things (IoT) Intellectual Property (Patent) Information as of 1Q 2015
8. Convida Wireless: Best Practice of Strategic Alliances between NPE and PE for IoT Innovation
9. Investment for Patent Monetization
10. Reinventing of Patent Monetization Model
11. The Monetizing Patent’s DNA: How to identify and develop the monetizing patents
12. Increasing Monetization Activities Exploiting LTE Patents
13. How much will Apple need to pay to Ericsson for a reasonable licensing royalty of 4G LTE patents?
14. Increasing IP Financing Activities Exploiting Wireless Patents
15. Current Status of Patent Rights: U.S. v. Other Countries
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16. Smartphone Patent Wars: Legal & Policy Issues of Standard Essential Patents in the ICT Industry
17. Wireless Patents under the PTAB’s IPR & CBM Scrutiny
18. The U.S. Holds IPR Leadership in Patents for Wireless Standards
19. Wireless Patents for Standards & Applications Database
20. IoT (Internet of Things) Intellectual Property (Patent) Strategy Consulting Services
21. IoT (Internet of things) Wireless Connectivity Standards Innovation Leadership
22. Developing New Commercialization Opportunities for Existing Patents Exploiting Emerging IoT Platforms
23. IoT(Internet of Things) Platform Connectivity Technologies and Key Patents
24. Potential Patent Litigation Risk Assessment for the IoT (Internet of things) Wireless Connectivity Standards
25. Ericsson v. Nokia Patents for IoT(Internet of Things) Connectivity Standards
26. Increasing Litigation Risk with Increasing NPE Activities Exploiting the IoT (Internet of things) Wireless
Connectivity Patents
27. Quality Assessment of Qualcomm Patents for the IoT(Internet of Things) Connectivity Standards
28. Characteristics of Litigated Patents for the IoT(Internet of Things) Connectivity Standards
29. Evaluation of Monetized Patents for the IoT(Internet of Things) Connectivity Standards
For more information, please contact Alex Lee at alexglee@techipm.com
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Integrated Strategic Patent Management
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Nest Labs’ Integrated Strategic Patent Management
Company information
A smart home company headquartered in Palo Alto, California, that manufactures smart thermostats and smoke
detectors. Founded in 2010 and acquired by Google for $3.2 billion in 2014.
IP value recognition in M&A
Build up 132 US issued patents (+ pending applications + international families)
in four years
Cf. SmartThings’ acquisition by Samsung for $200 million with no patent
*notice the value difference: $3.2 billion v. $200 million
Strategic development of patent portfolios
Patent fortress for core business
Create 33 US issued utility patents and 28 US issued design patents regarding smart thermostat
Strategic patent acquisition
Acquired 69 US issued patents and one US patent applications regarding smart sensors and sensor networks.
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Strategic exploitation of patent portfolios
Strategic financing
Utilize 29 US issued patents for patent secured lending from Wells Fargo Bank
*after Series A and B funding, before Series C funding
Strategic patent licensing
Licensed patents for accessing to Intellectual Ventures’ IP for Defense, a strategic defense tool enabling
participants to access IV’s massive patent portfolio of over 40,000 patents
Reference
IoT (Internet of Things) IP (Patent)-intensive Venture Company Development Strategy
Link: http://www.slideshare.net/alexglee/io-t-internet-of-things-ip-pantent-intensive-venture-company-
development-strategy
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Patent Citations as an Indicator of M&A Feasibility
Recently, ETRC (Emerging Technology Research Center: http://etrc.co.kr/main/) in S. Korea reported an
interesting research result that the number of citations cited by examiner can be a good indicator of M&A
feasibility. In its case studies for the acquisitions of IT start-ups, ETRC found that many global IT companies’
patents heavily cited the patents of acquired IT start-ups.
TechIPm’s NFC patents research (ref. http://techipm-innovationfrontline.blogspot.com/2015/03/nfc-patents-for-
standards-applications.html) also confirm the usefulness of ETRC’s method for finding a potential M&A target.
Broadcom acquired UK-based NFC company “Innovision Research & Technology” at $47.5 M. According to the
USPTO assignment search, Broadcom acquired 48 US patent applications and issued patens though the acquisition
deal (ref. http://assignment.uspto.gov/#/assignment?id=32400-673&q=7881665). TechIPm could verify that
Broadcom’s patents heavily cited the patents of Innovision Research & Technology.
For example, US7881665, a patent of Innovision Research & Technology, was cited 11 times by Broadcom’s
patents (ref.
https://www.google.com/patents/US7881665?dq=inassignee:%22Innovision+Research+%26+Technology+PLC%
22&ei=5-k4VZmHIMuvggTjvoG4Bw&cl=en#forward-citations).
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Apple’s Strategic Alignment in Patent and M&A
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Alcatel-Lucent acquisition by Nokia would provide leadership in Mobile based IoT innovation
Nokia announced its plan to acquire Alcatel-Lucent at $16.6 billion. The acquisition would benefit its current
market position in telecom equipment business. The acquisition would also provide leadership in mobile based IoT
innovation.
M2M (Machine to Machine) and D2D (Device to Device) communication technologies are the key enablers for
emerging mobile based IoT (Internet of Things) applications. As the number of patent applications is a good
measure of innovation activities, to evaluate the M2M and D2D innovation activities, the patent applications
covering of key technologies for M2M and D2D communications are analyzed. More than 1300 patent applications
that are the essential patents for mobile based IoT are identified 1Q 2015 (ref.
http://www.techipm.com/alexdb/M2M%20&%20D2D%20Patents%20for%20IoT%20Data%201Q%202015_Intro.
pdf).
The merged Nokia and Alcatel-Lucent ranked third, just behind LG and Ericsson and ahead of Samsung.
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Key wireless charging patents behind Samsung Galaxy S6: Open Innovation
Recently Samsung Electronics unveiled the Galaxy S6 and Galaxy S6 Edge with wireless charging capability
during its Mobile World Congress (MWC) press conference. Samsung Electro-Mechanics developed Galaxy S6’s
wireless charging system based on the inductive resonant technologies licensed from Powerbyproxi.
PowerbyProxi collaborated with UniServices (the commercialization arm of The University of Auckland and a
shareholder of PowerbyProxi) to develop its IP portfolio.
US7675197 (Apparatus and method for inductive power transfer)
This invention relates to inductive power distribution systems commonly known as inductive coupled power
transfer (ICPT) systems. It is an object of the present invention to provide an ICPT system or a component for such
a system that allows pick-ups to be located at an extended distance from a primary conductor. The apparatus has a
first coil adapted to receive energy from a magnetic field associated with a primary conductive path of an ICPT
system; a second coil electrically connected to the first coil and provided remote from the first coil, and being
adapted to produce a magnetic field for supply of electrical energy to a pick-up of an ICPT system; and a tuning
capacitance provided in series or parallel with the first and second coils to enable the circuit so formed to have a
desired resonant frequency.
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US20110090723 (Contactless power receiver and method of operation)
The present invention is in the technical field of Inductively Coupled Power Transfer systems (ICPT). More
particularly the present invention relates to a contactless power receiver including a semiconductor switch
operating in linear mode. A contactless power receiver is provided with a dynamically tuned pick up coil. The
power transfer capacity of this power receiver is dynamically tuned using semiconductor devices that are operated
in linear mode over part of their operation. The semiconductor devices are driven by a controller that is configured
to implement a range of control strategies depending on system requirements. The semiconductor device may be
used by itself or in conjunction with reactive elements to dynamically tune the pick up coil.
In some implementations the contactless power receiver maybe configured to work with a consumer electronic or a
wireless sensor device. The contactless power receiver can be integrated with the energy storage component of the
device to provide a retrofit solution for existing products. The device can then be placed in vicinity of a planar
magnetic field generated by a charging pad.
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Internet of Things (IoT) Intellectual Property (Patent) Information as of 1Q 2015
IoT (Internet of Things) Intellectual Property (Patent) Strategy
"IoT IP strategy: Strategic IoT patent management"
Link:http://www.techipm.com/alexdb/TechIPm%20IoT%20(Internet%20of%20Things)%20Intellectual%20Proper
ty%20(Patent)%20Strategy%20Consulting%20Services.pdf
"IoT (Internet of Things) IP (Patent)-intensive Venture Company Development Strategy”
Link: http://www.slideshare.net/alexglee/io-t-internet-of-things-ip-pantent-intensive-venture-company-
development-strategy
"Global IoT (Internet of Things) Patent Landscape”
Link: http://www.slideshare.net/alexglee/global-iot-internet-of-things-patent-landscape
“IoT Patent Rankings: LG Becomes 4th-largest Holder of IoT Patents”
Link: http://www.businesskorea.co.kr/article/9093/iot-patent-rankings-lg-becomes-4th-largest-holder-iot-patents
“Apple patent points to dock that is potentially an IoT hub”
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Link: http://www.slashgear.com/apple-patent-points-to-dock-that-is-potentially-an-iot-hub-12373468/
“Internet of Things (IoT) Security patent pending rush “
Link: http://10korea.com/internet-of-things-iot-security-patent-pending-rush/
Internet of Things Essential Patents
"M2M & D2D Communication Patents for IoT Innovation Ranking"
LINK: http://techipm-innovationfrontline.blogspot.com/2015/03/m2m-d2d-communications-for-iot.html
“The IoT related patents research for US market leader among NFC, UHF RFID, and Zigbee for wireless sensor
networks product manufactures”
Link:http://www.techipm.com/alexdb/Internet%20of%20Things%20Essential%20Patent%20Candidates%20Data
%204Q%202013_Product%20Intro.pdf
IP (Patent) issues regarding the Internet of Things
"Standard essential patents licensing issues with the IoT”
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Link: http://www.taylorwessing.com/download/article_patent_iot.html
“Will Patents Hinder IoT Openness?”
Link: http://blog.vdcresearch.com/embedded_sw/2015/03/will-patents-hinder-iot-openness.html
“AllSeen Unveils Patent Policy for AllJoyn IoT Code”
Link: http://www.eweek.com/networking/allseen-unveils-patent-policy-for-alljoyn-iot-code.html
“The Internet of Things (loT): IP Challenges in a Connected World: IPO Seminar"
Link: http://www.ipo.org/index.php/2014/05/internet-things-lot-ip-challenges-connected-world/
“Intellectual Property Challenges in the Era of Internet of Things: IEEE Seminar”
Link: http://www.comsocscv.org/showevent.php?id=1422346486
“The issue of intellectual property rights for the global IoT system development”
Link: (part 1) http://www.insidecounsel.com/2014/03/28/the-internet-of-things-and-the-issue-of-ip-rights (part
2) http://www.insidecounsel.com/2014/04/15/the-internet-of-things-and-the-issue-of-ip-rights
"Security IP for the IoT"
Link: http://info.wibusystemsusa.com/blog/bid/345437/Secure-Licensing-IP-Protection-and-the-Internet-of-Things
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Investing in the Internet of Things
"Who will develop the essential IP for the IoT"
Link: http://postscapes.com/investing-in-the-internet-of-things
Intellectual Property and Economic Growth
"Review of IP strategy for economic growth including the IoT"
Link: http://www.ipo.gov.uk/ipreview-finalreport.pdf
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Convida Wireless: Best Practice of Strategic Alliances between NPE and PE for IoT Innovation
Convida Wireless is a joint venture between InterDigital and Sony America formed in 2013 for driving new IoT
innovation in the field of machine-to-machine (M2M) communications and other connectivity technologies. It is a
good example of strategic alliances between NPE and PE to combine Sony's consumer electronics production
expertise with InterDigital's pioneering wireless research for IPR generation.
Recent patent research for the M2M communication technologies (ref. http://techipm-
innovationfrontline.blogspot.com/2015/03/m2m-d2d-communications-for-iot.html) showed that Convida Wireless
ranked 14th in number of patent applications among 58 IPR holders. Convida Wireless’ patents cover M2M/IoT
systems that include devices such as sensors, gateways to other networks and back-end servers. Convida Wireless’
patents also cover M2M/IoT systems’ performances such as devices management, data collection from the devices,
data storage and data processing and data querying from users or applications.
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Investment for Patent Monetization
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Reinventing of Patent Monetization Model
Patent Reuse Bank
This patent monetization model utilizes the existing patents that are developed by the government funded research
institutions and are under-exploited for commercial purposes. The patent reuse bank categorizes the patents by
specific industry, market, technology and pools them into a web platform. Usually, high tech SMEs in needs of
specific patent portfolios license them for their commercial uses.
Patent Cloud Platform
This patent monetization model utilizes the cloud platform to link inventors, patent users, and investors.
A patent development project (patenting on demand) can be initiated by inventors, patent users, or investors. For
example, a patent user requests patent development for a specific commercial use, and an investor or cloud funding
investors can fund the project. A specific monetization ideal also can be obtained from the cloud sourcing.
Patent Factory
This patent monetization model exploits the existing high tech SMEs that are usually in IT and telecommunications
and in financial difficulties in their main business. The patent factories develop specifically targeted patent
portfolios and strategically package the patents for sale. Usually, private equities fund the patent factories for a
rather quick return (around two years).
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IP-Backed Spin-Off
This patent monetization model utilizes existing R&D team members and patents. One example is the Newracom,
Inc., which is a a start-up formed by WiFi research team members from ETRI in S. Korea supported by more than
100 patents and funded $15M from a venture capital. Another example is CF Global, which is the first spin-off
from Intellectual Venture’s Invention Development Fund.
IP-Backed Insurance & Lending
This patent monetization model utilizes an insurance policy on the value of IP. Then, the insurance policy becomes
collateral for a bank loan for any amount of money up to the insured value. One example is the lending by a
university's endowment/pension fund to a team with some good new technology and patents that obtained such a
patent backed insurance policy. If the team succeeds, the university's fund gets it loan monies paid back, plus some
equity gains. If the team fails, the university's fund just gets it loan monies back from the insurance policy.
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The Monetizing Patent’s DNA: How to identify and develop the monetizing patents
On April 7, 2015, the USPTO issued U.S. Patent No. 9,000,000. Even if there were so many patents that were
issued up to now, however, the number of patents that were commercially exploited and monetized successfully
was very small. This is similar to the situation that, even if there were so many innovators and entrepreneurs, only
small numbers achieved commercial success from their ideas.
In “The Innovator's DNA”, the authors identified the code of successful innovators that distinguishes them from
others based on the case study of well known successful innovators such as Steve Jobses and Jeff Bezoses. The key
lesson from the research of the innovator’s DNA was that the successful innovators’ DNA is not simply genetic
traits endowed, but that they can be developed. Then, by the analogy, one can ask similar questions for patent:
What make the monetizing patents different?; Can we find the code of the monetizing patents?; Can we identify
and develop the monetizing patents?
Monetizing patents protect the market for commercially successful products/services from competitors. Monetizing
patents can be exploited as financial/investment assets or through licensing to other parties for additional cash flow.
Followings are the monetizing patent’s DNA uncovered from the case study of carefully selected monetizing
patents through the integrated technology, legal and business analysis.
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• Monetizing patents solve the right technological problem: the right technological problem is a problem in
great needs of improved/innovative solution; the right technological problem is recognized well in an
industry; the right technological problem leads to a solution that has great business impacts; the solution of
the right technological problem follows the correct evolutionally pass for emerging technology.
• Monetizing patents practice value innovation: monetizing patents provide unique value proposition with
maximum market protection; monetizing patents provide values to customers without additional cost/pain or
infrastructure/process change requirements.
• Monetizing patents actively participate in the business ecosystem: monetizing patents can be a platform or
integrated into a platform; monetizing patents form a dominant design or industry standard; monetizing
patents form diverse value chains; monetizing patents derive the value for M&A.
• Monetizing patents are legal savvy: monetizing patents are created following the case laws and statutes to
obtain maximum legal rights; monetizing patents are the litigation-proof patents; monetizing patents adapt to
the dynamic changes of legal environment.
For more information regarding the methodology for identifying and developing monetizing patents, please contact
Alex Lee at alexglee@techipm.com .
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Increasing Monetization Activities Exploiting LTE Patents
Recent TechIPm’s research for patents relate to 4G LTE standard found increasing monetization activities
exploiting LTE standard related patents. LTE patents analysis for the market leaders among LTE UE (cellular
phones, smart phones, PDAs, mobile PCs, etc.) and base station (eNB) product manufactures and innovators
identified more than 1600 issued patents hold by 42 entities in the US as of March 31, 2015 (ref.
http://www.techipm.com/alexdb/4G%20LTE%20Patents%20for%20Standards%20Data%201Q%202015_Intro.pdf
).
Among 42 LTE patents holders, NPE accounts for 11% IPR share of LTE standard related patents. Identified NPE
IPR shareholders are Adaptix, ETRI, InterDigital, Innovative Sonic, Inventergy, IPR Licensing, ITRI, Optis
Wireless Technology, Seoul National University, Thomson Licensing and UPIP. Recent monetization activities
exploiting LTE patents among NPE shareholders are as follows.
Adaptix, a subsidiary of Acacia Research, sued several telecom operators including AT&T and smartphone
manufactures including HTC for infringement of its 4G LTE patents (ref.
http://www.law360.com/articles/616031/adaptix-ramps-up-at-t-htc-patent-feud-despite-setback ). Adaptix entered
into patent license agreements with several entities including NEC as settlements for patent dispute (ref.
http://finance.yahoo.com/news/acacia-subsidiary-resolves-action-nec-105900394.html ).
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InterDigital sued several smartphone manufactures including Nokia for infringement of its 4G LTE patents and
entered into patent license agreement with Samsung as a settlement for patent dispute (ref.
http://www.pcworld.com/article/2359140/samsung-signs-cellular-patent-deal-with-interdigital-ending-all-
litigation.html ).
UPIP sued several smartphone manufactures including Huawei for infringement of its 4G LTE patents in Germany
and the UK (Ref. http://www.businesswire.com/news/home/20140310005655/en/Unwired-Planet-Announces-
Enforcement-Action-Germany-United#.VR6pAfnF-HA ).
Recently, Optis Wireless Technology sued ZTE for infringement of its 4G LTE patents acquired from Panasonic
(Ref. http://www.rfcexpress.com/lawsuits/patent-lawsuits/texas-eastern-district-court/949460/optis-wireless-
technology-llc-et-al-v-zte-corporation-et-al/summary/ ).
Inventergy is actively operating its licensing program exploiting its 4G LTE patents acquired from Panasonic (Ref.
http://www.marketwatch.com/story/inventergy-launches-standardized-licensing-initiative-for-mobile-device-
manufacturers-2015-03-09 ).
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In addition to NPE IPR holders, Ericsson and Nokia (both entities are accounts for 13% IPR share of LTE standard
related patents) are actively involved in monetization exploiting LTE patents:
Ericsson sued Samsung for infringement of its 4G LTE patents and entered into patent license agreements with
Samsung as a settlement for patent dispute (Ref. http://www.reuters.com/article/2014/01/27/us-ericsson-samsung-
patents-idUSBREA0Q0A120140127 ). Ericsson also sued Apple for infringement of its 4G LTE patents (Ref.
http://www.cellular-news.com/story/Legal/67300.php ). Licensing royalty of Ericsson that can have from Apple is
expected to be around $200 M per year (Ref. http://techipm-innovationfrontline.blogspot.com/2015/03/how-much-
will-apple-need-to-pay-to.html ).
Nokia sued HTC for infringement of its 4G LTE patents and entered into patent license agreements with HTC as a
settlement for patent dispute (Ref. http://www.theinquirer.net/inquirer/news/2327794/htc-and-nokia-end-legal-spat-
with-patents-agreement).
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How much will Apple need to pay to Ericsson for a reasonable licensing royalty of 4G LTE patents?
Recently, Ericsson sued Apple for infringement over 41 Ericsson patents including 4G/LTE standard essential
patents (SEPs) related to Apple's iPhones and iPads. Ericsson said Apple owes it patent royalties for using its
wireless technologies in the iPhone and iPad, but Apple refused its fair and reasonable licensing offer.
Notwithstanding the recent administrative and judicial blocking against exploiting SEPs for injunction, several
courts ruled that SEPs are still eligible for monetary relief for infringement. In Microsoft Co., v. Motorola, Inc., No.
2:10-cv-01823-JLR (W.D. WA), the court provided basic guidelines for assessing FRAND royalty for SEPs. The
guidelines are based on the Georgia-Pacific analysis of the reasonable royalty (Georgia-Pacific Corp. v. U.S.
Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970)) modified for taking into account SSOs’ primary goals
for adopting FRAND commitments. The key modification to the Georgia-Pacific factors leads to the reasoning that
a royalty in a patent pool for the specific SEPs at issue or comparable licensing transactions as a candidate for the
royalty established through negotiation under FRAND commitments. Thus, the royalty rate in the recently formed
LTE patent pool may provide expected FRAND licensing revenue.
Another court’s guidelines for assessing FRAND royalty for SEPs can be found in In re INNOVATIO IP
VENTURES, LLC, No. 1:11-cv-09308 (N.D. Ill. 2013), Dkt. No. 975. The INNOVATIO IP VENTURES court
calculated FRAND royalty (cap) of WiFi SEPs as (average profit margin to the contribution of patentee’s SEPs) x
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(net profit of relating products) x (pro rata share of patentee’s SEPs to the total number of WiFi SEPs providing
similar contribution to the profit). Similar calculation can also lead to the FRAND royalty (cap) for 4G LTE
smartphone SEPs.
To evaluate Apple’s 4G LTE smartphone SEPs licensing royalty owed to Ericsson, Ericsson’s IPR share in 4G
LTE SEPs is researched. Recent TechIPm, LLC’s research for 4G LTE standard related patent in the US reviles
Ericsson’s 4G LTE smartphone SEPs’ IPR share is around 7% (for details about analysis method, please refer to
4G LTE Patents for Standard Innovativeness Ranking: http://techipm-
innovationfrontline.blogspot.com/2015/01/4g-lte-patents-for-standard_8.html).
Then, based on various market research data as of 4Q 2014, the net profit of Apple from smartphone sales per year
in the US market is calculated as roughly $10 B. Finally, if the average profit margin to the contribution of the 4G
LTE SEPs of 3% (smallest scalable product base) is assumed, the licensing royalty of Ericsson that can have from
Apple is expected to be around $200 M per year.
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Increasing IP Financing Activities Exploiting Wireless Patents
Patents can be used as collateral to secure a loan from a bank. Recent wireless patent research of security
agreement in the USPTO’s assignment data base uncovered the increasing financing activities exploiting wireless
patents as the recognition of wireless patents’ value is increasing (ref. http://www.slideshare.net/alexglee/wireless-
patents-for-standards-applications-1q-2015).
Company Bank/Fund Number
of
issued
patents
and
pending
patent
applicat
ions
Technology Key wireless patent USPTO
assignment link
Adaptix Baker
Communications
Fund
36 WiMax/LTE
Devices
US6947748: OFDMA with
adaptive subcarrier-cluster
configuration and selective
loading
http://assignment.
uspto.gov/#/assig
nment?id=18875-
448&q=7454212
Spectralink Bank of Montreal 19 IEEE 802.11e
WiFi
US7616616: Apparatus and
method for enhanced quality of
service in a wireless
communications network
http://assignment.
uspto.gov/#/assig
nment?id=30122-
891&q=7616616
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Wavelink Jefferies Finance 79 WLAN
Security
US7133526: System and
method for providing WLAN
security through synchronized
update and rotation of WEP
keys
http://assignment.
uspto.gov/#/assig
nment?id=31029-
849&q=6965674
Extricom Kreos Capital 17 WiFi AP US7164674: Multiplex
communication between access
points and hub
http://assignment.
uspto.gov/#/assig
nment?id=23355-
806&q=7164674
Devicefidelity Blue Sky Private
Equity
26 NFC Devices US8070057: Switching
between internal and external
antennas
http://assignment.
uspto.gov/#/assig
nment?id=34706-
572&q=7941197
First Data Credit Suisse AG 157 NFC Mobile
payment
system
US8523053: Enabling
consumer choice on contactless
transactions when using a dual-
branded payment instrument
http://assignment.
uspto.gov/#/assig
nment?id=30080-
531&q=8523053
For more information regarding wireless patent evaluation and valuation for IP financing, please contact Alex Lee
at alexglee@techipm.com .
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Current Status of Patent Rights: U.S. v. Other Countries
U.S. Other Countries
Inter partes review (IPR): Fostering invalidation
through administrative proceedings
Alice: Increasing confusion regarding patent
eligibility; Fostering invalidation of software and
business methods related patents
Innovation Act: Making enforcement harder
Cases for Standard Essential Patents: Decreasing
damages make harder to license voluntarily
Decreasing investment in patent monetization
market
S. Korea: Establishing patent litigation hub by
increasing damages, making new rules that make
harder to invalidate and recognition of software
patent right
China: Increasing recognition of patent rights
(recent Apple’s win in smartphone litigation case)
Japan: Amendments to Japan’s intellectual property
laws, took effect on April 1 this year, make
enforcement easier through a new patent opposition
system in Japan
UK: Patent Box scheme for providing an incentive to
file patent applications
All: Increasing investment in patent monetization
market
Right direction?
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Smartphone Patent Wars: Legal & Policy Issues of Standard Essential Patents in the ICT Industry
As represented by “Smartphone Patent Wars,” patents for smartphones became the most important strategic
competition tool among market leaders. Especially, patents for mobile communication standards, which are the so-
called ‘Standard Essential Patents (SEPs),’ became the center of legal and policy debates regarding their
intellectual property rights (IPRs).
The author provides the implications of recent courts’ resolutions regarding FRAND (Fair, Reasonable And Non
Discriminatory) disputes to the ICT (Information and Communications Technology) industry and provide several
alternative options for resolving FRAND disputes. The author contends that the current concerted resolutions in
courts and regulation agencies can result in adverse effects to the ICT industry. The author also contends the main
drawback of the recent proposals to resolve the disputes surrounding SEPs through the ex ante FRAND licensing
and the ICT industry players’ voluntary collaboration. From the analysis of ICT industry players’ response to the
outcomes of court resolutions, the author contends a compromising way to provide FRAND Royalty adopting
arguments from both sides of the disputes. The author also contends a practical improvement to the voluntary
collaboration proposals to resolve the disputes surrounding SEPs.
Table of Contents
I. Introduction
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II. A Holistic Review of Current Issues in FRAND Disputes
A. Interpretation of FRAND Commitments
B. Determination of FRAND Royalty
C. Antitrust Issue
III. Implications for ICT Industry
A. Response of ICT Industry to the Courts’ Resolutions
B. Potential Adverse Effects of Courts’ Resolutions
C. Alternative Methods to Resolve FRAND Disputes
IV. Recommendations
A. FRAND Royalty and Injunctive Relief
B. Alternative Methods for FRAND Licensing
V. Conclusion
Full Text: http://www.slideshare.net/alexglee/microsoft-v-google-smartphone-patent-wars-legal-policy-issues-of-
standard-essential-patens-in-ict-industry
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©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Wireless Patents under the PTAB’s IPR & CBM Scrutiny
Patent Party/Case Claim Prior Art/Analysis/Decision
US6772215
(Method for
minimizing
feedback
responses in
ARQ
protocols)
Priority date:
April 9, 1999
*Standard
Essential
Patent for
IEEE 802.11n
Broadcom
v. Wi-Fi
ONE
(Ericsson)
IPR2013-
00601
Claims 1, 2, 4, 6, 8, 15, 22,
25, 26, 29, 32, 34, 45, 46,
49, 52, and 54
1. A method for minimizing
feedback responses in an
ARQ protocol, comprising
the steps of:
sending a plurality of first
data units over a
communication link;
receiving said plurality of
first data units; and
responsive to the receiving
step, constructing a message
field for a second data unit,
said message field including
a type identifier field and at
least one of a sequence
number field, a length field,
and a content field.
US6581176 (Method for transmitting control frames
and user data frames in mobile radio communication
system); Priority date: Aug. 20, 1998
US6581176 discloses a “transmitting station” that
sends user data frames to a “receiving station” over a
“radio section between a receiving station and the
transmitting station.” US6581176 discloses a
“receiving station” that receives user data frames
from the “transmitting station.”
US6581176 discloses an “RLP NAK” message that
includes a field NAK_TYPE that identifies whether
the message identifies a range of sequence numbers
or uses a bitmap. If the value of NAK_TYPE is “00,”
the RLP NAK message includes two fields—FIRST
and LAST—with “the 12-bit sequence number of the
first data frame for which a retransmission is
required,” and “the 12-bit number of the last data
frame for which a retransmission is required,”
respectively. If the value of NAK_TYPE is “01,” the
RLP NAK message includes a field
NAK_MAP_SEQ with “the 12-bit sequence number
of the first data frame in this NAK Map for which
retransmission is requested.” The RLP NAK
message includes a type identifier field
33
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
(NAK_TYPE), and a sequence number field
(FIRST, LAST, or NAK_MAP_SEQ). US6581176
discloses the limitation whether “type identifier
field” is construed to mean “a field of a message that
identifies the type of that message,” or, in the
alternative, to mean any type of data.
Claims 1, 2, 4, 6, 8, 15, 22, 25, 26, 29, 32, 34,
45, 46, 49, 52, and 54 are unpatentable under 35
U.S.C. § 102(b) as anticipated by US6581176.
US6466568
(Multi-rate
radiocommun
ication
systems and
terminals)
Priority date:
Oct 15, 1996
Broadcom
v. Wi-Fi
ONE
(Ericsson)
IPR2013-
00602
Claims 1-6
Claim 1. A communication
station comprising:
a processor for arranging
information for
transmission including
providing at least one first
field in which payload
information is disposed and
providing at least one
second field, separate from
said first field, which
includes a service type
identifier which identifies a
type of payload information
US5488610 (Communication system); Priority date:
Aug. 26, 1993
US5488610 describes a multiplexer for use in a
system for transmitting more than one type of data,
e.g., voice and data. Figure 2 is a block diagram
showing the main components of communication
system 10 of the invention. Controller 18 comprises
processor 19, storage means 20,
multiplexer/demultiplexer 22, voice coder/decoder
24, and line interface 27. Communication system 10
can be used to share voice and visual data with
another user of a similar system. Multiplexer 22
multiplexes the voice and data signals, adds
synchronization information, and transmits the
composite signal to the physical layer high speed
modem (V32bis) connected to the Public Switched
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©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
provided in said at least one
first field; and
a transmitter for
transmitting information
received from said
processor including said at
least one first field and said
at least one second field.
Telephone Network (PSTN) or a GSM mobile
network). The composite signal is organized into
frames each containing a header and one or more
complete voice frames and/or other non-voice data.
The content of each frame is determined by the
applications and may change during the call. Figures
5a to 5g show the structures of some possible frames.
In Figures 5a to 5g, “H” is a header field that
identifies the frame type, which is used to identify
the contents of a frame.
Under the direction of processor 19, multiplexer 22
arranges voice and non-voice data for transmission
in frames. A frame may contain at least a field V
(voice) or D (non-voice data) in which payload
information is disposed. A frame also contains a
separate field, H (header), that identifies the frame
type—i.e., the type of payload information—as voice
only, data only, or voice and data.
Claims 1–6 are unpatentable under 35 U.S.C. §
102(b) as anticipated by US5488610.
US5541662 (Content programmer control of video
and data display using associated data); Priority date:
Sep. 30, 1994
US5541662 describes an interactive video system
35
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that processes a video data stream and an associated
data stream corresponding to the video data stream.
US5541662 is focused on a receiver, while the
claims are to a transmitting device. However, one of
ordinary skill in the art would have understood that
the US5541662 implicitly teaches a communication
station for transmitting packetized digital data
streams, including the three types of payload, in
US5541662. Therefore it would have been obvious
to provide a transmitter for sending the type of data
that US5541662 receives.
Claims 1–6 are unpatentable under 35 U.S.C. §
103(a) as obvious over US5541662.
US5515369
(Method for
frequency
sharing and
frequency
punchout in
frequency
hopping
communicatio
ns network)
Priority date:
Jun 24, 1994
BlackBerry
v. Wi-LAN
(Metricom)
IPR2013-
00125
Claims 5-7 and 9
5. In a node operable on a
communications network
having a plurality of shared-
medium channels and
having a plurality of
channel-agile nodes each
node capable of transmitting
and receiving data over a
plurality of said channels, a
method for establishing a
unique channel-hopping
US5377221 (Communications system); Priority date:
May 12, 1984
US5377221 does not disclose assigning a unique
seed value to a node as required by claim 5’s
limitation (a). Nor does it disclose randomizing a list
of available node channels using a deterministic
pseudo-random number generator seeded with said
seed value (referring to the unique seed value) as
required by claim 5’s limitation (d). In addition,
US5377221 does not disclose the channel punchout
mask as required by claim 5’s limitations (b) and (c).
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©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
* It relates to
“channel
map” in the
Bluetooth
standard that
is
implementati
on specific.
band plan for that node and
communicating that band
plan to other nodes in the
network comprising the
steps of:
a) assigning to that node a
unique seed value;
b) determining a channel
punchout mask, said mask
indicating those channels on
which the node experiences
interference or is otherwise
unable to receive data;
c) applying said mask to a
list of network channels to
eliminate undesirable
channels and therefore to
obtain a list of available
node channels;
d) randomizing said list of
available node channels by
using a deterministic
pseudorandom number
generator seeded with said
There is no reasonable likelihood that claim 5 is
anticipated by US5377221. Thus, the petition for
instituting inter partes review is not granted.
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©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
seed value thereby
obtaining a unique channel-
hopping band plan; and
e) communicating said
unique channel-hopping
band plan to other nodes in
the network by transmitting
data from which said other
nodes may derive said
unique channel-hopping
band plan.
US7463151
(Systems and
methods for
providing
mobile
services using
short-range
radio
communicatio
n devices)
Priority date:
April 4, 2005
Google v.
Unwired
Planet
(Openwave
System)
CBM2014-
00004
Claims 21 and 22
Claim 21. A method for
providing a promotional
mobile service to a short-
range radio communication
(SRC) enabled mobile
terminal over a mobile
network, the method
comprising:
receiving SRC device
information from the SRC-
enabled mobile terminal
over the mobile network,
the SRC device information
The claimed invention is directed to an abstract idea,
specifically, the abstract idea of receiving
information and providing services or advertisements
based on that information. The preambles and all
claim limitations of both claims support this abstract
idea, and the patent repeatedly discloses that the
invention is directed to providing services or
advertisements. The identified abstract idea is a
fundamental building block of economics, similar in
nature to the abstract idea of hedging claimed in
Bilski and intermediated settlement claimed in Alice.
The claimed subject matter does not do anything
more than simply instruct the practitioner to
implement the abstract idea of gathering,
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©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
acquired by the SRC-
enabled mobile terminal
from an SRC device;
authenticating the SRC
device information; and
in response to
authenticating the SRC
device information,
providing the promotional
mobile service to the SRC-
enabled mobile terminal
over the mobile network on
a time-limited basis.
Claim 22. A method for
receiving an advertisement
over a mobile network, the
method comprising:
acquiring short range
communication (SRC)
device information from a
SRC device using an SRC-
enabled mobile terminal;
providing the SRC device
information to a mobile
service provider over the
mobile network; and
receiving the advertisement
authenticating, and transmitting data and services on
generic technology. Despite its arguments that the
communication elements of the claims add enough to
make the claims patentable, Patent Owner fails to
identify any language in the claims or the
Specification demonstrating that the generic
communication systems function in an
unconventional manner. Instead, through the bare
recitation of the steps of “receiving,” “acquiring,”
“authenticating,” and “providing,” the claims are
“specified at a high level of generality,” which the
Federal Circuit has found to be “insufficient to
supply an ‘inventive concept.’” Ultramercial, 772
F.3d at 716.
Claims 21 and 22 are unpatentable under 35
U.S.C. § 101.
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over the mobile network.
For more information regarding wireless patent analysis for the Post-Grant Patent Proceedings, please contact Alex
Lee at alexglee@techipm.com .
40
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The U.S. Holds IPR Leadership in Patents for Wireless Standards
To evaluate the IPR leadership in wireless communications, the US patents that are related to the key wireless
standards are analyzed. The wireless patens are grouped by mobile wireless communications (4G LTE) related
patents and fixed wireless communications (WLAN, WPAN, NFC) related patents. Patent disclosures in claims
and detail description for each patent are analyzed as to whether the contents are within the scope of key standard
specifications (3GPP, IEEE, ISO, NFC Forum). Top 20 patent holders for each group are then selected to rank the
combined IPR shares. For details about the analysis, please refer “Wireless Patents for Standards & Applications
1Q 2015” (http://www.slideshare.net/alexglee/wireless-patents-for-standards-applications-1q-2015).
For the mobile wireless communications IPR, LG Electronics is the leader followed by Samsung Electronics,
Qualcomm, Google, Ericsson, Nokia, Apple, InterDigital, BlackBerry and Panasonic. For the fixed wireless
communications IPR, Sony is the leader followed by Intel, Marvell, Samsung Electronics, Qualcomm, Broadcom,
Cisco, NXP, Philips and Texas Instruments. Combining the mobile and fixed wireless communications IPR,
Samsung Electronics is the leader followed by LG Electronics, Qualcomm, Intel, Sony, Nokia, Google, Ericsson,
Marvell and InterDigital.
The combined IPR shares for the top 20 IPR holder’s countries based on the location of headquarter show that the
U.S. holds IPR leadership in patents for the key wireless standards.
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42
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
4G LTE, 5G M2M/IoT, Smartphone NFC Patents for Standards & Applications Data
TechIPm's patents research data are very useful information for patent licensing royalty & litigation damage
estimation, patent investment feasibility analysis, competitive intelligence, R&D planning and strategic patent
development
4G LTE Patents for Standards Data is a custom research based on 4G LTE patents analysis for the market leaders
among LTE UE and base station product manufactures and innovators. To evaluate the essentiality of a patent for
the LTE-Advanced standard, patent disclosures in claims and detail description for each 4G LTE related patent are
compared to the 3GPP Release 10 technical specifications for the LTE RAN. Assignee name, patent number
(USPTO & EPO Families hyperlinked to Google Patent), standard specifications series & section number,
technology category and essentiality level for more than 1600 issued patents are provided.
For more information please visit
http://www.techipm.com/alexdb/4G%20LTE%20Patents%20for%20Standards%20Data%201Q%202015_Intro.pdf
M2M & D2D communication technologies are the key enablers for emerging IoT (Internet of Things) applications.
They are also considered as the essential components of 5G mobile communication. M2M & D2D Patents for IoT
Data is a custom research based on patents analysis for the market leaders among M2M & D2D product
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©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
manufactures and service providers. Patent disclosures in claims and detail description for each patent are analyzed
as to whether the contents are within the scope of key technologies for M2M (e.g. low power design &
management) and D2D (e.g. discovery process) communications. Assignee name, patent/publication number,
hyperlink to Google Patent technology category, title, abstract and application date for more than 1300 patent
applications are provided.
For more information please visit
http://www.techipm.com/alexdb/M2M%20&%20D2D%20Patents%20for%20IoT%20Data%201Q%202015_Intro.
pdf
NFC Patents for Standards & Applications Data is a custom research based on NFC related patents analysis for the
market leaders among NFC product manufactures and service providers. NFC patents are classified by industry
standard for NFC technology (ISO and NFC Forum) and major NFC applications. Assignee name, patent number
(USPTO & EPO Families hyperlinked to Google Patent), applications and standard specifications series & section
number for more than 600 issued patents are provided.
For more information please visit
44
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http://www.techipm.com/alexdb/NFC%20Patents%20for%20Standards%20&%20Applications%20Data%201Q%
202015_Intro.pdf
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IoT (Internet of Things) Intellectual Property (Patent) Strategy Consulting Services
O V E R V I E W
Goldman Sachs defines the IoT (Internet of Things) as the third wave of internet revolution: by connecting to the
internet billions of devices, the IoT opens up a host of new business opportunities and challenges. According to
McKinsey, the IoT has the potential to create up to $6 trillion economic value annually by 2025. TechIPm provides
the expert consulting services for the IoT IP (Intellectual Property) strategy.
A C C O M P L I S H M E N T S
46
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
• Over 20 years of experiences in technology research, business development, strategy consulting, and intellectual
property management
• Consulted IP strategy to diverse industry players (Fortune 500 companies, Patent monetization firms, Law firms,
Investment firms, Research institutions) in the field of electronics, IT and telecommunications
• Can coordinate across multiple job functions including patent experts, engineers, and business professionals
• Can provide integrated strategic patent management
C O N S U L T I N G S E R V I C E S
Strategic Patent Value Creation & Portfolio Development
Well tailored value creation methodology combined with patent prosecution strategy can develop new patent
portfolios for maximum ROI from existing patents. Many patent applications and newly issued patents can be
further developed for creating new values by amending and creating claims and generating family patents to
encompass emerging technology and products/services trends, market demands, and strategic exploitation goals
(e.g. cross-licensing, monetization etc.).
47
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
A client’s patents are reviewed for selecting patents relating to the IoT. The IoT related patents are categorized as
standard relevant and application specific patents. The categorized IoT patents are evaluated to select good
candidates for value creation. For the standard relevant IoT patents, the selected patents are further analyzed to find
candidates for the IoT standard essential patents (SEPs) and development as the IoT SEPs with respect to the
specific standards. For the IoT SEPs candidates, the claim-standard specification mapping is performed to generate
EoU claim charts. For the development candidates as SEPs, the model claims are constructed which can make a
candidate as a IoT SEP with respect to a specific standard. Additional claims are constructed to capture the
unclaimed embodiments in the candidates’ detail descriptions.
For the application specific IoT patents, the selected patents are further analyzed to find candidates for commercial
essential patents (essential for commercial product/service implementation), patents for market platforms
(dominant designs), and patents for disruptive technologies (for future market generation potential). Existing
claims are amended and additional claims are constructed to capture the unclaimed embodiments in the candidates’
detail descriptions to reinforce the protectability (against invalidation), enforceability (against potential
infringement), and marketability (for monetization, new products/services etc.).
Patent Evaluation for Investment
48
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Understanding the true value of patents becomes very important step in investment decision making processes as
the patents became an important investment asset class. Investment professionals are frequently involved in patent
valuation during M&A activity, buying and selling patents for bankruptcy cases, patent secured debt financing
deals, sale & license-back transactions, securitizations using patent as the underlying asset, (long or short) stock
investment for IP based business entities etc. To understand the true value of patents, however, accurate evaluation
of patents under investment consideration is need. Therefore, accurate evaluation of patents became the essential
part for investment professionals to figure out feasibility of investment involving patents.
To evaluate of patents accurately, and thus, to get an accurate read on any investment opportunities, legal expertise
in additional to technical and business expertise are required due to legal rights nature of patents. Therefore,
involvement of expert with the technical, business, and legal expertise is crucial to evaluate patents accurately, and
thus, to understand the true value of patents. TechIPm LLC provides the expert patent evaluation services for
investment professionals exploiting the technical, business, and legal expertise and many years of experience in
evaluating more than ten thousand patents relating to over hundred million dollars of investments in patent
investments.
A client’s IoT patents are reviewed to provide overall qualities and investment values in alignment with client’s
investment goal. Upon client’s request, selected patents or patent portfolio(s) are analyzed utilizing well known
valuation methods (e.g. income, market, cost method) in detail to provide ROI based on the high level evaluation.
49
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Strategic Patent Acquisition & Licensing Program Development
TechIPm provides the expert advice for strategic IoT patent acquisition for diverse clients including business
corporations, research institutes, investment organizations, and patent management firms. TechIPm can align
diverse clients’ business purpose (e.g. competitive intelligence, offensive, defensive, and monetization) with
strategic IoT patent acquisition process. With the specific business goal in mind, TechIPm can classify the field of
acquisition target by the IoT market/product/service/technology. TechIPm also can evaluate the value of
acquisition target. TechIPm can decide the best sourcing method among potential options: patent search and
mining, close/open patent market place, internal auditing and patent development process. TechIPm also can
coordinate the deal/transaction process collaborating with brokers.
TechIPm also provides consulting service for developing profitable patent licensing program exploiting the IoT
patents. TechIPm closely works with client for developing patent licensing program until the closing of the
licensing agreement. TechIPm provides strategic planning in alignment with client's business goal, due diligence
for licensable patent portfolios, strategic patent prosecution for monetization value creation, analysis for target
market, potential licensees and revenue generating potential, and licensing enforcement (including litigation)
strategy.
50
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IoT (Internet of things) Wireless Connectivity Standards Innovation Leadership
As the number of granted patent is a good measure of innovation activities, issued US patents that are related to the
key wireless standards for the IoT connectivity (LTE, Wireless LAN, Zigbee, Bluetooth, NFC, UHF RFID) are
analyzed to evaluate the technology innovation leadership. More than 10,000 issued patents as of May 15, 2015 are
reviewed. Patent disclosures in claims and detail description for each patent are analyzed as to whether the
contents are within the scope of key technologies for the relevant standard specifications (3GPP, IEEE, ISO, NFC
Forum, Bluetooth SIG). For details about the analysis, please refer “Wireless Patents for Standards & Applications
1Q 2015” (http://www.slideshare.net/alexglee/wireless-patents-for-standards-applications-1q-2015).
More than 3,000 patents hold by more than 160 assignees are identified as the key wireless standard patents for the
IoT connectivity. Samsung Electronics is the leader followed by LG Electronics, Qualcomm, Nokia, Google,
Ericsson, Intel, Apple, InterDigital, Sony, Broadcom, BlackBerry, Texas Instruments, Marvell, Panasonic, ETRI,
NEC and Cisco.
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Developing New Commercialization Opportunities for Existing Patents Exploiting Emerging IoT Platforms
HBS Professor Iansiti, the author of “The Keystone Advantage,” suggested technological assimilation as a new
engine for technological innovations in his article “Creative Construction.” In the technological assimilation
frameworks, a core innovation that once provided stand-alone products or services for a specific market can be the
building blocks for mass market generating innovations through assimilation to broader platforms that were not
existed at the time of innovations. A good example may be the GPS technology providing LBS (location based
services) applications for smartphones and automobiles. Another good example may be the DVR technology of
TiVo that was integrated into digital set-top box platforms.
Recently, several global leaders in IoT (Internet of Things) business provide the IoT platforms to create diverse
platform-based business models:
• Samsung’s Artik platform can help developers create new sensor-enabled devices. Artik platform includes a
family of processors and wireless connectivity that can power and connect everything such as servers,
smartphones and wearables (https://www.artik.io/).
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• Apple’s HomeKit home automation platform can help developers create new securely connected home
automation devices in iOS. HomeKit enables users to discover HomeKit accessories in their home and
configure them, or create actions to control the devices (https://developer.apple.com/homekit/).
• Google will unveil IoT platform in May. The platform will help developers create connected home
environment (http://timesofindia.indiatimes.com/tech/tech-news/Googles-IoT-platform-to-launch-this-
month/articleshow/47115137.cms).
• MediaTek’s LinkIT One platform provides module-based reference design and feature rich capabilities to
software development, prototyping and final hardware design of Wearables and IoT devices
(http://labs.mediatek.com/site/global/home/p_home.gsp).
The IoT platforms can also be used as the platform-based commercialization for the existing patented
technologies. The integration feasibility of the existing patented technologies into the IoT platforms can be
found by contrasting all possible business models from the IoT platforms to the potential value propositions
provided by the inventive departures (novelty points) of the existing patents (please refer http://techipm-
innovationfrontline.blogspot.com/2015/04/the-monetizing-patents-dna-how-to.html for the “Monetizing
Patent’s DNATM
” methodology).
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IoT(Internet of Things) Platform Connectivity Technologies and Key Patents
IoT Platform Connectivity Technology Key Patent
Samsung Artik
platform can help
developers create new
sensor-enabled devices.
Artik platform includes
a family of processors
and wireless
connectivity that can
power and connect
everything such as
servers, smartphones
and wearables
(https://www.artik.io/).
ARTIK1: Bluetooth Low
Energy (BLE) with Chip
Antenna
ARTIK5 & 10:
WiFi/BT/BLE +
ZigBee/Thread (802.11 b/g/n)
*Thread is an IPv6 based
protocol (based on
6LoWPAN) for smart home
applications to communicate
through mesh network
exploiting existing ZigBee
(IEEE 802.15.4) standard:
Ref.
http://threadgroup.org/Default
.aspx?Contenttype=ArticleDe
t&tabID=94&moduleId=492
&Aid=45&PR=PR
US8315219 (Method for supporting mobility of a mobile
node in a multi-hop IP network and a network system
therefor): A method is provided for supporting mobility
of a Mobile Node (MN) in a multi-hop Internet Protocol
(IP) network, in which an MN that has moved from a
source Personal Area Network (PAN) to a target PAN,
sends a Router Solicitation (RS) message with an option
for requesting its profile to a gateway of the target PAN,
and receives a Router Advertisement (RA) message from
the gateway in response to the RS message. The RA
message includes a home prefix of the MN as the
requested profile. The method supports mobility of MNs,
enables unicast communication, and facilitates efficient
use of the network.
Apple HomeKit home Broadcom's Wireless Internet US8849202 (Audio transfer using the Bluetooth Low
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©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
automation platform
can help developers
create new securely
connected home
automation devices in
iOS. HomeKit enables
users to discover
HomeKit accessories in
their home and
configure them, or
create actions to
control the devices
(https://developer.apple
.com/homekit/).
Connectivity for Embedded
Devices (WICED™)
platform enables WiFi
(802.11 b/g/n), Bluetooth,
and Bluetooth Low Energy
(BLE) connectivity
(https://www.broadcom.com/
application/internet_of_things
.php).
Energy standard): The described embodiments include a
system for communicating between electronic devices.
During operation, a receiving electronic device receives a
data channel protocol data unit (PDU) in a link layer of a
Bluetooth Low Energy (BTLE) protocol stack. The
receiving electronic device then reads a field in a header
of the data channel PDU to determine if the header
indicates that a payload of the data channel PDU contains
audio data. When the header indicates that the payload of
the data channel PDU contains audio data, the receiving
electronic device is configured to send the audio data
from the payload to an audio layer in the BTLE protocol
stack for processing.
US8451858 (Collision avoidance in multiple protocol
communication networks using a shared communication
medium ): A method for collision avoidance in multiple
protocol networks using a shared communication
medium begins by determining a first protocol probable
active time period. The method continues by determining
a first protocol probable inactive time period. The
method continues by generating a transmit blocking
indication based on the first protocol probable active
time period and the first protocol probable inactive time
period.
56
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Qualcomm AllPlay
Smart Media Platform
allows simple wireless
connectivity to
individual speakers or
an entire home audio
system over the user's
existing home WiFi
network
(https://www.qualcom
m.com/products/allplay
/platform).
WiFi (802.11 b/g/n) and
Bluetooth connectivity
US8594056 (Method and apparatus for dynamic and dual
antenna bluetooth (BT)/WLAN coexistence): An
apparatus and method are disclosed for effectively and
efficiently arbitrating concurrent usage between WLAN
and Bluetooth access technologies for co-located
wireless devices. A state level arbiter determines state
and relevant parameters of a WLAN module and of a
Bluetooth module of a wireless transceiver unit. The state
level arbiter uses the state and relevant parameters to
determine which access technology (WLAN or
Bluetooth) or combination of the access technologies
(WLAN or Bluetooth) will provide the best concurrent
performance for wireless transmissions at a given time
for specific Bluetooth states and WLAN states.
57
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Google will unveil IoT
platform in May. The
platform will help
developers create
connected home
environment
(http://timesofindia.indi
atimes.com/tech/tech-
news/Googles-IoT-
platform-to-launch-
this-
month/articleshow/471
15137.cms).
WiFi (802.11 b/g/n)
connectivity for the smart
home applications
Method and apparatus using sounding PPDUs to provide
range extension to IEEE 802.11n signals: A wireless
transmitter includes a stream parser for generating a
plurality of spatial streams from a digital signal and a
space time block coder (STBC) for mapping each of the
spatial streams to a plurality of space-time streams that
each include data and a preamble for estimating a
channel transfer function. The transmitter also includes a
spatial mapper for spatially expanding each of the space-
time streams by applying a spatial expansion matrix to
data and to first training symbols used in the preamble to
probe a channel experienced by the data and by applying
an extension matrix to second training symbols used in
58
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
the preamble to probe at least one additional dimension
of the channel to enable use of beamforming to achieve
range extension The spatial expansion matrix and the
extension matrix form an overall matrix that has at least
two orthogonal columns with different norms. The
wireless transmitter also includes an analog front end for
modulating the spatially expanded space-time streams
onto a wireless carrier.
MediaTek LinkIT One
platform provides
module-based reference
WiFi (802.11 b/g/n),
Bluetooth, and Bluetooth
Low Energy (BLE)
US8335577 (Method of generating advanced audio
distribution profile (A2DP) source code and chipset
using the same): A chipset for an audio player supporting
59
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
design and feature rich
capabilities to software
development,
prototyping and final
hardware design of
Wearables and IoT
devices
(http://labs.mediatek.co
m/site/global/home/p_h
ome.gsp).
connectivity Bluetooth advanced audio distribution profile (A2DP).
The chipset comprises first and second processors. The
first processor reads audio source data from a storage
device and performs a first part of advanced audio
distribution profile (A2DP) source encoding. The second
processor is coupled to the first processor and performs a
second part of the advanced audio distribution profile
(A2DP) source encoding. The first and second processors
collectively act as a Bluetooth host.
Vodafone global M2M
platform provides a
network access layer
4G LTE based M2M
connectivity
US8838806 (Connection management for M2M device
in a mobile communication network): There is provided
a method that relates to the setting up and/or maintaining
60
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
specifically designed
for low power Internet
of Things applications,
which gives greater
visibility and control
over all connected
devices
(http://www.m2m.voda
fone.com/)
* LTE based M2M (LTE-M)
standard will be included in
3GPP’s LTE release 13
specifications, expected to be
finalized in early 2016.
of a connection between a machine-to-machine (M2M)
device and a mobile communication network. In order to
be able to adapt the connection management to the
requirements of the M2M device, the M2M device may
transmit an indication that it is an M2M device to the
mobile communication network. At least one network
node of the mobile communication network controls the
setting up and/or the maintaining of the connection based
on the indication. The network node may route a request
for setting up the connection to a further network node
based on the indication.
61
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Potential Patent Litigation Risk Assessment for the IoT (Internet of things) Wireless Connectivity Standards
Many market researchers expect that the interconnected IoT devices will create a new market that will result in
more than $1 trillion in value added to the global economy within 10 years. Wireless connectivity is the key
enabler for the mass deployment of the IoT devices. To assess the potential patent litigation risk for the IoT
wireless connectivity, patents that are related to the key wireless standards for the IoT connectivity (LTE, Wireless
LAN, Zigbee, Bluetooth, NFC, UHF RFID) are analyzed to evaluate the technology innovation leadership. More
than 10,000 issued patents in the US as of May 15, 2015 are reviewed. Patent disclosures in claims and detail
description for each patent are analyzed as to whether the contents are within the scope of key technologies for the
relevant standard specifications (3GPP, IEEE, ISO, NFC Forum, Bluetooth SIG). For details about the analysis,
please refer “Wireless Patents for Standards & Applications 1Q 2015”
(http://www.slideshare.net/alexglee/wireless-patents-for-standards-applications-1q-2015).
More than 3,000 patents hold by more than 160 assignees are identified as the key wireless standard patents for the
IoT connectivity. To assess the potential patent litigation risk, the identified wireless standard patents for the IoT
connectivity are further analyzed to figure out the patents that might be exploited for litigation: Patents owned by a
NPE (NPE Passive) that may be transferred to other entities that might exploit them for litigation; Patents owned
by a NPE (NPE Active) will enforce them; Patents owned by a NPE (NPE PAE) will enforce them for
monetization purpose; Patents owned by a PE (Privateer) that may be transferred to other entities that will enforce
62
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
them for monetization purpose; and Patents owned by a PE that are transferred to other entities for the unknown
purpose (Suspected Assignment).
More than 700 patents hold by more than 30 assignees are identified as the patents that might be exploited for
litigation. PE PAEs, NPE PAEs, Privateers, NPE Actives, NPE Passives hold 44%, 31%, 9%, 8% and 7% of the
total patents with the potential litigation risk respectively. The IPR share of patents for the Suspected Assignment
is 1%.
63
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
64
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Ericsson v. Nokia Patents for IoT(Internet of Things) Connectivity Standards
Attribute Ericsson Nokia
No of Patents Analyzed 142 145
Connectivity Standards 3GPP CDMA/LTE, IEEE 802.11 WiFi,
IEEE 802.15.1/Bluetooth SIG Core 2 - 4
3GPP CDMA/LTE, IEEE 802.11 WiFi,
IEEE 802.15.1/Bluetooth SIG Core 2 – 4,
IEEE 802.15.4 Zigbee, ISO 18092/NFC
Forum
Related IoT Platform Samsung Artik, Apple HomeKit,
Broadcom WICED™, Qualcomm AllPlay,
Google Connected Home, MediaTek
LinkIT One, Vodafone global M2M
platform
Samsung Artik, Apple HomeKit, Broadcom
WICED™, Qualcomm AllPlay, Google
Connected Home, MediaTek LinkIT One,
Vodafone global M2M platform
Average Forward
Citations/No of Patents
with more than 100
Forward Citations
27/7 13/2
Most Cited Patent US6445917 (Mobile station measurements
with event-based reporting): The present
invention provides event-based or driven
reporting of mobile station measurements.
A mobile station measures one or more
radio-related parameters for one or more
cells in a radio access network. The mobile
US6031827 (Method for radio resource
control): In order to control the use of
physical radio resources, the physical radio
resources are divided into chronologically
consecutive frames (14), so that a frame
contains slots (16, 17, 18) of various sizes,
which slots represent a given share of the
65
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
station evaluates the measured radio-related
parameter with respect to a predetermined
condition or event and determines that the
predetermined condition is satisfied or that
the event has occurred. Based on that
evaluation, the mobile radio sends a report
to the radio access network. Accordingly,
the occurrence of an event and/or the
satisfaction of a condition triggers the
sending of the report to the network. That
way, the network receives the information
so that it can take timely and appropriate
action without sending outdated or
redundant measurement reports that do not
convey relevant or new information.
physical radio resources contained in the
frame and can be individually allocated to
different radio connections. The first
dimension of a frame is time and the
second dimension can be time, frequency
or code. In the direction of the second
dimension the slots represent various sizes,
and a given first integral number of slots of
the first size can be modularly replaced by
another integral number of slots of another
size. A certain number of consecutive
frames form a superframe (19), in which
case frames with corresponding locations in
consecutive superframes are equal in slot
division and allocations, if the data
transmission demands do not change.
Changes in the state of occupancy of the
slots are possible at each superframe. In
order to form an uplink connection, the
mobile station sends a capacity request,
where it indicates the type of requested
connection and the demand of resources. In
order to form a downlink connection, the
base station subsystem sends a paging call,
where it indicates the location in the
superframe of the slots allocated to the
connection. In order to indicate the state of
occupancy, the base station subsystem
66
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
maintains a superframe-size parametrized
reservation table.
Priority Year
No of Patents
Transferred/Party
32/BlackBerry, CE Nuclear Power, Cluster
LLC, InterDigital, UPIP
22/Acacia, Google, Qualcomm, Sisvel,
Vringo, WiLAN
0
5
10
15
20
25
30
Ericsson
Nokia
67
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
No of Patents
Litigated/Party
9/Apple, Samsung, D-Link, Acer, Dell,
Gateway, NETGEAR, Toshiba
4/Apple, Alcatel-Lucent, Ericsson, HTC,
LG, ZTE, Verizon, AT&T, T-Mobile,
Sprint
References
IoT (Internet of things) Wireless Connectivity Standards Innovation Leadership
Link: http://techipm-innovationfrontline.blogspot.com/2015/05/iot-internet-of-things-wireless.html
TechIPm IoT (Internet of Things) Intellectual Property (Patent) Strategy Consulting Services
Link:http://www.techipm.com/alexdb/TechIPm%20IoT%20(Internet%20of%20Things)%20Intellectual%2
0Property%20(Patent)%20Strategy%20Consulting%20Services.pdf
68
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Increasing Litigation Risk with Increasing NPE Activities Exploiting the IoT (Internet of things) Wireless
Connectivity Patents
Many market researchers expect that the interconnected IoT devices will create a new market that will result in
more than $1 trillion in value added to the global economy within 10 years. Wireless connectivity is the key
enabler for the mass deployment of the IoT devices. To assess the potential patent litigation risk for the IoT
wireless connectivity, patents that are related to the key wireless standards for the IoT connectivity (LTE, Wireless
LAN, Zigbee, Bluetooth, NFC, UHF RFID) are analyzed to evaluate the technology innovation leadership. More
than 10,000 issued patents in the US as of 2Q 2015 are reviewed. Patent disclosures in claims and detail
description for each patent are analyzed as to whether the contents are within the scope of key technologies for the
relevant standard specifications (3GPP, IEEE, ISO, NFC Forum, Bluetooth SIG). For details about the analysis,
please refer “Wireless Patents for Standards & Applications 1Q 2015”
(http://www.slideshare.net/alexglee/wireless-patents-for-standards-applications-1q-2015).
More than 3,000 patents hold by more than 160 assignees are identified as the key wireless standard patents for the
IoT connectivity. To assess the potential patent litigation risk, the identified wireless standard patents for the IoT
connectivity are further analyzed to figure out the patents that might be exploited for litigation: Patents owned by a
NPE (NPE Passive) that may be transferred to other entities that might exploit them for litigation; Patents owned
by a NPE (NPE Active) will enforce them; Patents owned by a NPE (NPE PAE) will enforce them for
69
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
monetization purpose; Patents owned by a PE (Privateer) that may be transferred to other entities that will enforce
them for monetization purpose; and Patents owned by a PE that are transferred to other entities for the unknown
purpose (Suspected Assignment).
More than 700 patents hold by more than 30 assignees are identified as the patents that might be exploited for
litigation. PE PAEs, NPE PAEs, Privateers, NPE Actives, NPE Passives hold 44%, 31%, 9%, 8% and 7% of the
total patents with the potential litigation risk respectively. The IPR share of patents for the Suspected Assignment
is 1%.
To find a specific patent litigation risk, individual patent with high litigation potential is further researched. One
interesting fact is that there were the increasing ownership transfers of patents with high litigation potential to
several NPEs for the purpose of monetization.
For example, US6519223 (Ericsson: System and method for implementing a semi reliable retransmission protocol)
that is a patent used in litigation (Case 6:10-cv-00473, Texas Eastern District Court) transferred to WI-FI ONE,
LLC. Other examples are: US8457022 (Nokia: Method and apparatus for providing signaling of redundancy
versions) that was transferred to Cellular Communications Equipment LLC is exploited in litigation (Case 2:15-cv-
00581, Texas Eastern District Court); US8411557 (Panasonic: Mobile station apparatus and random access method)
that was transferred to Optis Cellular Technology, LLC is exploited in litigation (Case 2:15-cv-00300, Texas
70
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Eastern District Court); US8935587 (LG Electronics: Method for effectively transmitting control signal in wireless
communication system) that is identified as the LTE SEP (Standard Essential Patent) was transferred to Optis
Cellular Technology, LLC.
Another interesting NPE activity involving high patent litigation potential is the assignment to and from Cluster
LLC. Cluster LLC involved in 45 assignment activities as an assignor (assignee: UPIP, WI-FI ONE, Optis Cellular
Technology) and as an assignee (assignor: Ericsson, UPIP) as of 2Q 2015.
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Quality Assessment of Qualcomm Patents for
No of Patents Analyzed
Connectivity Standards
Related IoT Platform
Portfolios
Average Forward Citations/No of Patents
with more than 50 Forward Citations
Most Cited Patent
http://www.techipm.com/
Patents for the IoT(Internet of Things) Connectivity Standards
273
3GPP CDMA/LTE, IEEE 802.11 WiFi, IEEE 802.15.1/Bluetooth
SIG Core 2 – 4, IEEE 802.15.4 Zigbee, ISO 18092/NFC Forum
Samsung Artik, Apple HomeKit, Broadcom WICED™,
AllPlay, Google Connected Home, MediaTek LinkIT One,
Vodafone global M2M platform
Average Forward Citations/No of Patents 15/15
US6473467 (Method and apparatus for measuring reporting
channel state information in a high efficiency, high performance
communications system): Channel state information (CSI) can be
Mobile
WiFi
23%
WPAN
6%
NFC/RFID
2%
71
IoT(Internet of Things) Connectivity Standards
3GPP CDMA/LTE, IEEE 802.11 WiFi, IEEE 802.15.1/Bluetooth
4, IEEE 802.15.4 Zigbee, ISO 18092/NFC Forum
, Broadcom WICED™, Qualcomm
Google Connected Home, MediaTek LinkIT One,
US6473467 (Method and apparatus for measuring reporting
channel state information in a high efficiency, high performance
Channel state information (CSI) can be
Mobile
69%
72
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
used by a communications system to precondition transmissions
between transmitter units and receiver units. In one aspect of the
invention, disjoint sub-channel sets are assigned to transmit
antennas located at a transmitter unit. Pilot symbols are generated
and transmitted on a subset of the disjoint sub-channels. Upon
receipt of the transmitted pilot symbols, the receiver units
determine the CSI for the disjoint sub-channels that carried pilot
symbols. These CSI values are reported to the transmitter unit,
which will use these CSI values to generate CSI estimates for the
disjoint sub-channels that did not carry pilot symbols. The amount
of information necessary to report CSI on the reverse link can be
further minimized through compression techniques and resource
allocation techniques.
Priority Year
No of Patents Acquired/Party 61/3Com, Airgo Networks, Atheros, Flarion, HP, Lear Co., Nokia,
Palm, Silicon Wave, Snaptrack
0
5
10
15
20
25
30
35
1995
1996
1997
1998
1999
2000
2001
2002
2003
2004
2005
2006
2007
2008
2009
2010
2011
2012
Qualcomm
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Claim Mix: Degree to which different kind
of statutory claim types are used in a patent
H(igh) in Claim Mix means higher protection
against invalidation
Claim Diversity: Degree to which different
kind of claim formats, terminology,
arrangement in a given statutory claim type
are used in a patent
H(igh) in Claim Diversity means higher
avoiding potential infringement loophole
http://www.techipm.com/
Claim Mix: Degree to which different kind
of statutory claim types are used in a patent
H(igh) in Claim Mix means higher protection
Claim Diversity: Degree to which different
in a given statutory claim type
H(igh) in Claim Diversity means higher in
loophole
M
33%
L
10%
L
30%
H
16%
73
H
57%
M
54%
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Claim Setting: Degree to which different
kind of commercially significant settings
are used in a patent
H(igh) in Claim Setting means higher in
patent value realization
http://www.techipm.com/
Claim Setting: Degree to which different
kind of commercially significant settings
H(igh) in Claim Setting means higher in
H
27%
L
27%
74
M
46%
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Characteristics of Litigated Patents for
No of Patents Analyzed
Connectivity Standards
Related IoT Platform
Portfolios
No of Litigations/District Court/ITC/PTAB
http://www.techipm.com/
Patents for the IoT(Internet of Things) Connectivity Standards
29
3GPP CDMA/LTE, IEEE 802.11 WiFi, IEEE 802.15.1/Bluetooth
SIG Core 2 – 4, IEEE 802.15.4 Zigbee, ISO 18092/NFC Forum
Samsung Artik, Apple HomeKit, Broadcom WICED™,
AllPlay, Google Connected Home, MediaTek LinkIT One,
Vodafone global M2M platform
No of Litigations/District Court/ITC/PTAB 247/225/9/13
NFC/RFID
24%
WiFi
17%
WPAN
7%
75
Things) Connectivity Standards
3GPP CDMA/LTE, IEEE 802.11 WiFi, IEEE 802.15.1/Bluetooth
4, IEEE 802.15.4 Zigbee, ISO 18092/NFC Forum
, Broadcom WICED™, Qualcomm
Google Connected Home, MediaTek LinkIT One,
Mobile
52%
76
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Major Litigated District Court Texas Eastern District Court, Delaware District Court, California
Northern District Court, Illinois Northern District Court,
Washington Western District Court
Major Defendants Apple, Samsung, LG, Sony, HTC, Nokia, Ericsson, Alcatel-Lucent,
ZTE, Huawei, HP, Marvell, Cisco, Dell, Sharp, Toshiba, Acer,
Panasonic, Netgear, D-Link, MediaTek, Texas Instruments, TSMC,
Motorola Solutions, AT&T, T-Mobile, Verizon, Sprint, Microsoft,
Google, Amazon
Most Litigated Patent US6665536 (Local area network having multiple channel wireless
access): A communication network having at least one access point
supports wireless communication among a plurality of wireless
roaming devices via a first and a second wireless channel. The
access point comprises a first and a second transceiver. The first
and second transceivers operate on the first and second wireless
channels, respectively. Each of the plurality of wireless roaming
devices are capable of communicating on the first and second
wireless channel. In one embodiment, the first wireless channel is
used to exchange data, while the second channel is used to manage
such exchanges as well as access to the first channel. In an alternate
embodiment, both channels are used to support communication
flow, however the first channel supports a protocol that is more
deterministic than that of the second channel. Allocation of ones of
the plurality of wireless roaming devices from one channel to the
next may occur per direction from the access point. It may also
result from decisions made by each of the wireless roaming devices
made independent of the access point. For example, a decision may
77
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
be made based on the data type being transferred or based on the
current channel load. Such factors may also be used by the access
point for allocation determinations. In addition, allocation may be
based on the type of roaming device involved, such as allocating
peripherals to a slower channel.
No of Patents Owned by NPE 17
No of Patents Assigned/Assignor/Assignee/ 18/ Ericsson, Adaptix, Micron Technology, Panasonic, Inside
Secure, Ipwireless, Broadcom, Nokia/ Wi-Fi One, SDR Holdings,
Round Rock, Optis Cellular Technology, NFC Technology,
Innovatio IP Ventures, France Brevets, Cellular Communications
Equipment, Avago Technologies
Average No of US Family Patents 3
Average Forward Citations/No of Patents
with more than 50 Forward Citations
33/8
Average Backward Citations/No of Patents
with more than 50 Backward Citations
47/8
78
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Priority Year
0
5
10
15
20
25
30
35
1995
1996
1997
1998
1999
2000
2001
2002
2003
2004
2005
2006
2007
2008
2009
2010
2011
2012
Litigated Patents
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Wisdomain Valuation Grade
AA: Above top 1% in Value relative to the
relevant technical fields
A+: Top 1~3% in Value relative to the
relevant technical fields
A0: Top 3~5% in Value relative to the
relevant technical fields
A-: Top 5~10% in Value relative to the
relevant technical fields
B+: Top 10~20% in Value relative to the
relevant technical fields
B0: Top 20~50% in Value relative to the
relevant technical fields
B-: Top 50~60% in Value relative to the
relevant technical fields
C: Below top 60% in Value relative to the
relevant technical fields
http://www.techipm.com/
AA: Above top 1% in Value relative to the
B+: Top 10~20% in Value relative to the
B0: Top 20~50% in Value relative to the
: Top 50~60% in Value relative to the
ow top 60% in Value relative to the
A-
21%
AA
17%
B0
14%
A+
10%
B-
10%
C
7%
79
B+
21%
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Claim Mix: Degree to which different kind
of statutory claim types are used in a patent
H(igh) in Claim Mix means higher protection
against invalidation
Claim Diversity: Degree to which different
kind of claim formats, terminology,
arrangement in a given statutory claim type
are used in a patent
H(igh) in Claim Diversity means higher
avoiding potential infringement loophole
http://www.techipm.com/
Claim Mix: Degree to which different kind
of statutory claim types are used in a patent
H(igh) in Claim Mix means higher protection
Claim Diversity: Degree to which different
in a given statutory claim type
H(igh) in Claim Diversity means higher in
loophole
L
24%
H
10%
M
35%
H
17%
80
M
66%
L
48%
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Claim Setting: Degree to which different
kind of commercially significant settings
are used in a patent
H(igh) in Claim Setting means higher in
patent value realization
http://www.techipm.com/
Claim Setting: Degree to which different
kind of commercially significant settings
H(igh) in Claim Setting means higher in
M
31%
L
7%
81
H
62%
82
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Evaluation of Monetized Patents for the IoT(Internet of Things) Connectivity Standards
No of Patents Analyzed/Assignee 115
No of Patents Monetized Through
Acquisition/Assignor
109
Optis Cellular
Technology
15%
Qualcomm
12%
Intel
9%
Intellectual
Ventures
9%
France
Brevets
6%
Round
Rock
6%
ZIH (Zebra)
5%
Acacia
3%
Avaya
Technology
3%
BlackBerry
3%
Callahan
Cellular LLC
3%
Innovatio IP
Ventures
3%
Nvidia
3% Sisvel
3%
UPIP
3%
Google
2%
Lenovo
2%
Wavelink
2% Wi-
Fi
One
2%
WiLAN
2%
Agere System
1%
Avago
Technologies
1%
Avaya Holdings
1%InterDigital
1%Inventergy
1%SDR Holdings
1%Spectralink
1%
Thomson
Licensing
1%
Vringo
1%
Other
10%
83
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
No of Patents Monetized Through IP
Financing/Bank
39
Ericsson
22%
Nokia
16%
Micron
Technology
6%
Supersensor
6%
Snaptrack
4%
Panasonic
4%
NXP
4%
Ipwireless
4% Intersil
4%
Inside Secure
4%
Gigabit
Wireless
4%
LG Electronics
3%
Broadcom
3%
Arraycomm
3%
Airgo Networks
3% Conexant
2%
Silicon
Wave
1%
Palm
1%
Omnipoint
1%
Nortel
1%NCR Co.
1%Lear Co.
1%InterDigital
1%Harris Co.
1%BlackBerry
1%Aware
1%Agere System
1%Adaptix
1%3Com
1%
Other
9%
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Connectivity Standards
Related IoT Platform
http://www.techipm.com/
3GPP CDMA/LTE, IEEE 802.11 WiFi, IEEE 802.15.1/Bluetooth
SIG Core 2 – 4, IEEE 802.15.4 Zigbee, ISO 18092/NFC Forum
Samsung Artik, Apple HomeKit, Broadcom WICED™,
AllPlay, Google Connected Home, MediaTek LinkIT One,
Vodafone global M2M platform
Bank of New
York
20%
Morgan Stanley
15%
Jeffries Finance
5%
Bank of
Montreal
2%
Banker
Communications
Fund
3%
CBD
Credit
Funding
3%
Deutsch
Bank
3%
Iroquois
Master Fund
3%
84
3GPP CDMA/LTE, IEEE 802.11 WiFi, IEEE 802.15.1/Bluetooth
4, IEEE 802.15.4 Zigbee, ISO 18092/NFC Forum
, Broadcom WICED™, Qualcomm
Google Connected Home, MediaTek LinkIT One,
Wilmington
Trust
46%
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Portfolios
Value Proposition
http://www.techipm.com/
WiFi
24%
NFC/RFID
17%
WPAN
3%
Increase Data
Throughput
15%
Wireless
Identification
10%
QoS
8%
Low Power
Consumption
6%
Mobile
Transaction
5%
Location
Finding
4%
Power
Control
4%
Optimize
Communication
3% Security
3%
Multimode
Modulation
2%
Synchronisation
2%
Carrier
Aggretion
1%
Decrease
Interference
1%
Mulimode
Operation
1%
85
Mobile
56%
Increase
Connection
Reliability
35%
Increase Data
Throughput
Mulimode Smart Antenna
1%
86
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
No of Patents Litigated 20
Average Forward Citations/No of Patents
with more than 50 Forward Citations
32/22
Priority Year
0
2
4
6
8
10
12
14
1991
1993
1995
1996
1997
1998
1999
2000
2001
2002
2003
2004
2005
2006
2007
2008
2009
2010
Monetized Patents
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Wisdomain Valuation Grade
AA: Above top 1% in Value relative to the
relevant technical fields
A+: Top 1~3% in Value relative to the
relevant technical fields
A0: Top 3~5% in Value relative to the
relevant technical fields
A-: Top 5~10% in Value relative to the
relevant technical fields
B+: Top 10~20% in Value relative to the
relevant technical fields
B0: Top 20~50% in Value relative to the
relevant technical fields
B-: Top 50~60% in Value relative to the
relevant technical fields
C: Below top 60% in Value relative to the
relevant technical fields
http://www.techipm.com/
AA: Above top 1% in Value relative to the
B+: Top 10~20% in Value relative to the
B0: Top 20~50% in Value relative to the
: Top 50~60% in Value relative to the
C: Below top 60% in Value relative to the
B+
27%
B0
27%
A-
13%
C
9%
AA
9%
A+
6%
B-
6%
A0
3%
87
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Claim Mix: Degree to which different kind
of statutory claim types are used in a patent
H(igh) in Claim Mix means higher protection
against invalidation
Claim Diversity: Degree to which different
kind of claim formats, terminology,
arrangement in a given statutory claim type
are used in a patent
H(igh) in Claim Diversity means higher
avoiding potential infringement loophole
http://www.techipm.com/
Claim Mix: Degree to which different kind
of statutory claim types are used in a patent
H(igh) in Claim Mix means higher protection
Claim Diversity: Degree to which different
in a given statutory claim type
H(igh) in Claim Diversity means higher in
loophole
L
23%
H
15%
M
42%
H
3%
88
M
62%
L
55%
©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
Claim Setting: Degree to which different
kind of commercially significant settings
are used in a patent
H(igh) in Claim Setting means higher in
patent value realization
References
IoT (Internet of things) Wireless Connectivity Standards Innovation Leadership
Link: http://techipm-innovationfrontline.blogspot.com/2015/05/iot
TechIPm IoT (Internet of Things) Intellectual Property (Patent) Strategy Consulting Services
Link:http://www.techipm.com/alexdb/TechIPm%20IoT%20(Internet%20of%20Things)%20Intellectual%2
0Property%20(Patent)%20Strategy%20Consulting%20Services.pdf
For more information, please contact Alex G. Lee at
http://www.techipm.com/
Claim Setting: Degree to which different
kind of commercially significant settings
H(igh) in Claim Setting means higher in
IoT (Internet of things) Wireless Connectivity Standards Innovation Leadership
innovationfrontline.blogspot.com/2015/05/iot-internet-of-things-wireless.html
TechIPm IoT (Internet of Things) Intellectual Property (Patent) Strategy Consulting Services
http://www.techipm.com/alexdb/TechIPm%20IoT%20(Internet%20of%20Things)%20Intellectual%2
0Property%20(Patent)%20Strategy%20Consulting%20Services.pdf
Alex G. Lee at alexglee@techipm.com
H
25%
L
24%
89
wireless.html
TechIPm IoT (Internet of Things) Intellectual Property (Patent) Strategy Consulting Services
http://www.techipm.com/alexdb/TechIPm%20IoT%20(Internet%20of%20Things)%20Intellectual%2
M
51%

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Strategic Patent Management & Monetization 2Q 2015

  • 1. 1 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Strategic Patent Management & Monetization 2Q 2015 Contents: 1. Integrated Strategic Patent Management 2. Nest Labs’ Integrated Strategic Patent Management 3. Patent Citations as an Indicator of M&A Feasibility 4. Apple’s Strategic Alignment in Patent and M&A 5. Alcatel-Lucent acquisition by Nokia would provide leadership in Mobile based IoT innovation 6. Key wireless charging patents behind Samsung Galaxy S6: Open Innovation 7. Internet of Things (IoT) Intellectual Property (Patent) Information as of 1Q 2015 8. Convida Wireless: Best Practice of Strategic Alliances between NPE and PE for IoT Innovation 9. Investment for Patent Monetization 10. Reinventing of Patent Monetization Model 11. The Monetizing Patent’s DNA: How to identify and develop the monetizing patents 12. Increasing Monetization Activities Exploiting LTE Patents 13. How much will Apple need to pay to Ericsson for a reasonable licensing royalty of 4G LTE patents? 14. Increasing IP Financing Activities Exploiting Wireless Patents 15. Current Status of Patent Rights: U.S. v. Other Countries
  • 2. 2 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ 16. Smartphone Patent Wars: Legal & Policy Issues of Standard Essential Patents in the ICT Industry 17. Wireless Patents under the PTAB’s IPR & CBM Scrutiny 18. The U.S. Holds IPR Leadership in Patents for Wireless Standards 19. Wireless Patents for Standards & Applications Database 20. IoT (Internet of Things) Intellectual Property (Patent) Strategy Consulting Services 21. IoT (Internet of things) Wireless Connectivity Standards Innovation Leadership 22. Developing New Commercialization Opportunities for Existing Patents Exploiting Emerging IoT Platforms 23. IoT(Internet of Things) Platform Connectivity Technologies and Key Patents 24. Potential Patent Litigation Risk Assessment for the IoT (Internet of things) Wireless Connectivity Standards 25. Ericsson v. Nokia Patents for IoT(Internet of Things) Connectivity Standards 26. Increasing Litigation Risk with Increasing NPE Activities Exploiting the IoT (Internet of things) Wireless Connectivity Patents 27. Quality Assessment of Qualcomm Patents for the IoT(Internet of Things) Connectivity Standards 28. Characteristics of Litigated Patents for the IoT(Internet of Things) Connectivity Standards 29. Evaluation of Monetized Patents for the IoT(Internet of Things) Connectivity Standards For more information, please contact Alex Lee at alexglee@techipm.com
  • 3. 3 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Integrated Strategic Patent Management
  • 4. 4 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Nest Labs’ Integrated Strategic Patent Management Company information A smart home company headquartered in Palo Alto, California, that manufactures smart thermostats and smoke detectors. Founded in 2010 and acquired by Google for $3.2 billion in 2014. IP value recognition in M&A Build up 132 US issued patents (+ pending applications + international families) in four years Cf. SmartThings’ acquisition by Samsung for $200 million with no patent *notice the value difference: $3.2 billion v. $200 million Strategic development of patent portfolios Patent fortress for core business Create 33 US issued utility patents and 28 US issued design patents regarding smart thermostat Strategic patent acquisition Acquired 69 US issued patents and one US patent applications regarding smart sensors and sensor networks.
  • 5. 5 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Strategic exploitation of patent portfolios Strategic financing Utilize 29 US issued patents for patent secured lending from Wells Fargo Bank *after Series A and B funding, before Series C funding Strategic patent licensing Licensed patents for accessing to Intellectual Ventures’ IP for Defense, a strategic defense tool enabling participants to access IV’s massive patent portfolio of over 40,000 patents Reference IoT (Internet of Things) IP (Patent)-intensive Venture Company Development Strategy Link: http://www.slideshare.net/alexglee/io-t-internet-of-things-ip-pantent-intensive-venture-company- development-strategy
  • 6. 6 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Patent Citations as an Indicator of M&A Feasibility Recently, ETRC (Emerging Technology Research Center: http://etrc.co.kr/main/) in S. Korea reported an interesting research result that the number of citations cited by examiner can be a good indicator of M&A feasibility. In its case studies for the acquisitions of IT start-ups, ETRC found that many global IT companies’ patents heavily cited the patents of acquired IT start-ups. TechIPm’s NFC patents research (ref. http://techipm-innovationfrontline.blogspot.com/2015/03/nfc-patents-for- standards-applications.html) also confirm the usefulness of ETRC’s method for finding a potential M&A target. Broadcom acquired UK-based NFC company “Innovision Research & Technology” at $47.5 M. According to the USPTO assignment search, Broadcom acquired 48 US patent applications and issued patens though the acquisition deal (ref. http://assignment.uspto.gov/#/assignment?id=32400-673&q=7881665). TechIPm could verify that Broadcom’s patents heavily cited the patents of Innovision Research & Technology. For example, US7881665, a patent of Innovision Research & Technology, was cited 11 times by Broadcom’s patents (ref. https://www.google.com/patents/US7881665?dq=inassignee:%22Innovision+Research+%26+Technology+PLC% 22&ei=5-k4VZmHIMuvggTjvoG4Bw&cl=en#forward-citations).
  • 7. 7 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Apple’s Strategic Alignment in Patent and M&A
  • 8. 8 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
  • 9. 9 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Alcatel-Lucent acquisition by Nokia would provide leadership in Mobile based IoT innovation Nokia announced its plan to acquire Alcatel-Lucent at $16.6 billion. The acquisition would benefit its current market position in telecom equipment business. The acquisition would also provide leadership in mobile based IoT innovation. M2M (Machine to Machine) and D2D (Device to Device) communication technologies are the key enablers for emerging mobile based IoT (Internet of Things) applications. As the number of patent applications is a good measure of innovation activities, to evaluate the M2M and D2D innovation activities, the patent applications covering of key technologies for M2M and D2D communications are analyzed. More than 1300 patent applications that are the essential patents for mobile based IoT are identified 1Q 2015 (ref. http://www.techipm.com/alexdb/M2M%20&%20D2D%20Patents%20for%20IoT%20Data%201Q%202015_Intro. pdf). The merged Nokia and Alcatel-Lucent ranked third, just behind LG and Ericsson and ahead of Samsung.
  • 10. 10 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Key wireless charging patents behind Samsung Galaxy S6: Open Innovation Recently Samsung Electronics unveiled the Galaxy S6 and Galaxy S6 Edge with wireless charging capability during its Mobile World Congress (MWC) press conference. Samsung Electro-Mechanics developed Galaxy S6’s wireless charging system based on the inductive resonant technologies licensed from Powerbyproxi. PowerbyProxi collaborated with UniServices (the commercialization arm of The University of Auckland and a shareholder of PowerbyProxi) to develop its IP portfolio. US7675197 (Apparatus and method for inductive power transfer) This invention relates to inductive power distribution systems commonly known as inductive coupled power transfer (ICPT) systems. It is an object of the present invention to provide an ICPT system or a component for such a system that allows pick-ups to be located at an extended distance from a primary conductor. The apparatus has a first coil adapted to receive energy from a magnetic field associated with a primary conductive path of an ICPT system; a second coil electrically connected to the first coil and provided remote from the first coil, and being adapted to produce a magnetic field for supply of electrical energy to a pick-up of an ICPT system; and a tuning capacitance provided in series or parallel with the first and second coils to enable the circuit so formed to have a desired resonant frequency.
  • 11. 11 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ US20110090723 (Contactless power receiver and method of operation) The present invention is in the technical field of Inductively Coupled Power Transfer systems (ICPT). More particularly the present invention relates to a contactless power receiver including a semiconductor switch operating in linear mode. A contactless power receiver is provided with a dynamically tuned pick up coil. The power transfer capacity of this power receiver is dynamically tuned using semiconductor devices that are operated in linear mode over part of their operation. The semiconductor devices are driven by a controller that is configured to implement a range of control strategies depending on system requirements. The semiconductor device may be used by itself or in conjunction with reactive elements to dynamically tune the pick up coil. In some implementations the contactless power receiver maybe configured to work with a consumer electronic or a wireless sensor device. The contactless power receiver can be integrated with the energy storage component of the device to provide a retrofit solution for existing products. The device can then be placed in vicinity of a planar magnetic field generated by a charging pad.
  • 12. 12 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Internet of Things (IoT) Intellectual Property (Patent) Information as of 1Q 2015 IoT (Internet of Things) Intellectual Property (Patent) Strategy "IoT IP strategy: Strategic IoT patent management" Link:http://www.techipm.com/alexdb/TechIPm%20IoT%20(Internet%20of%20Things)%20Intellectual%20Proper ty%20(Patent)%20Strategy%20Consulting%20Services.pdf "IoT (Internet of Things) IP (Patent)-intensive Venture Company Development Strategy” Link: http://www.slideshare.net/alexglee/io-t-internet-of-things-ip-pantent-intensive-venture-company- development-strategy "Global IoT (Internet of Things) Patent Landscape” Link: http://www.slideshare.net/alexglee/global-iot-internet-of-things-patent-landscape “IoT Patent Rankings: LG Becomes 4th-largest Holder of IoT Patents” Link: http://www.businesskorea.co.kr/article/9093/iot-patent-rankings-lg-becomes-4th-largest-holder-iot-patents “Apple patent points to dock that is potentially an IoT hub”
  • 13. 13 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Link: http://www.slashgear.com/apple-patent-points-to-dock-that-is-potentially-an-iot-hub-12373468/ “Internet of Things (IoT) Security patent pending rush “ Link: http://10korea.com/internet-of-things-iot-security-patent-pending-rush/ Internet of Things Essential Patents "M2M & D2D Communication Patents for IoT Innovation Ranking" LINK: http://techipm-innovationfrontline.blogspot.com/2015/03/m2m-d2d-communications-for-iot.html “The IoT related patents research for US market leader among NFC, UHF RFID, and Zigbee for wireless sensor networks product manufactures” Link:http://www.techipm.com/alexdb/Internet%20of%20Things%20Essential%20Patent%20Candidates%20Data %204Q%202013_Product%20Intro.pdf IP (Patent) issues regarding the Internet of Things "Standard essential patents licensing issues with the IoT”
  • 14. 14 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Link: http://www.taylorwessing.com/download/article_patent_iot.html “Will Patents Hinder IoT Openness?” Link: http://blog.vdcresearch.com/embedded_sw/2015/03/will-patents-hinder-iot-openness.html “AllSeen Unveils Patent Policy for AllJoyn IoT Code” Link: http://www.eweek.com/networking/allseen-unveils-patent-policy-for-alljoyn-iot-code.html “The Internet of Things (loT): IP Challenges in a Connected World: IPO Seminar" Link: http://www.ipo.org/index.php/2014/05/internet-things-lot-ip-challenges-connected-world/ “Intellectual Property Challenges in the Era of Internet of Things: IEEE Seminar” Link: http://www.comsocscv.org/showevent.php?id=1422346486 “The issue of intellectual property rights for the global IoT system development” Link: (part 1) http://www.insidecounsel.com/2014/03/28/the-internet-of-things-and-the-issue-of-ip-rights (part 2) http://www.insidecounsel.com/2014/04/15/the-internet-of-things-and-the-issue-of-ip-rights "Security IP for the IoT" Link: http://info.wibusystemsusa.com/blog/bid/345437/Secure-Licensing-IP-Protection-and-the-Internet-of-Things
  • 15. 15 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Investing in the Internet of Things "Who will develop the essential IP for the IoT" Link: http://postscapes.com/investing-in-the-internet-of-things Intellectual Property and Economic Growth "Review of IP strategy for economic growth including the IoT" Link: http://www.ipo.gov.uk/ipreview-finalreport.pdf
  • 16. 16 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Convida Wireless: Best Practice of Strategic Alliances between NPE and PE for IoT Innovation Convida Wireless is a joint venture between InterDigital and Sony America formed in 2013 for driving new IoT innovation in the field of machine-to-machine (M2M) communications and other connectivity technologies. It is a good example of strategic alliances between NPE and PE to combine Sony's consumer electronics production expertise with InterDigital's pioneering wireless research for IPR generation. Recent patent research for the M2M communication technologies (ref. http://techipm- innovationfrontline.blogspot.com/2015/03/m2m-d2d-communications-for-iot.html) showed that Convida Wireless ranked 14th in number of patent applications among 58 IPR holders. Convida Wireless’ patents cover M2M/IoT systems that include devices such as sensors, gateways to other networks and back-end servers. Convida Wireless’ patents also cover M2M/IoT systems’ performances such as devices management, data collection from the devices, data storage and data processing and data querying from users or applications.
  • 17. 17 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Investment for Patent Monetization
  • 18. 18 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Reinventing of Patent Monetization Model Patent Reuse Bank This patent monetization model utilizes the existing patents that are developed by the government funded research institutions and are under-exploited for commercial purposes. The patent reuse bank categorizes the patents by specific industry, market, technology and pools them into a web platform. Usually, high tech SMEs in needs of specific patent portfolios license them for their commercial uses. Patent Cloud Platform This patent monetization model utilizes the cloud platform to link inventors, patent users, and investors. A patent development project (patenting on demand) can be initiated by inventors, patent users, or investors. For example, a patent user requests patent development for a specific commercial use, and an investor or cloud funding investors can fund the project. A specific monetization ideal also can be obtained from the cloud sourcing. Patent Factory This patent monetization model exploits the existing high tech SMEs that are usually in IT and telecommunications and in financial difficulties in their main business. The patent factories develop specifically targeted patent portfolios and strategically package the patents for sale. Usually, private equities fund the patent factories for a rather quick return (around two years).
  • 19. 19 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ IP-Backed Spin-Off This patent monetization model utilizes existing R&D team members and patents. One example is the Newracom, Inc., which is a a start-up formed by WiFi research team members from ETRI in S. Korea supported by more than 100 patents and funded $15M from a venture capital. Another example is CF Global, which is the first spin-off from Intellectual Venture’s Invention Development Fund. IP-Backed Insurance & Lending This patent monetization model utilizes an insurance policy on the value of IP. Then, the insurance policy becomes collateral for a bank loan for any amount of money up to the insured value. One example is the lending by a university's endowment/pension fund to a team with some good new technology and patents that obtained such a patent backed insurance policy. If the team succeeds, the university's fund gets it loan monies paid back, plus some equity gains. If the team fails, the university's fund just gets it loan monies back from the insurance policy.
  • 20. 20 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ The Monetizing Patent’s DNA: How to identify and develop the monetizing patents On April 7, 2015, the USPTO issued U.S. Patent No. 9,000,000. Even if there were so many patents that were issued up to now, however, the number of patents that were commercially exploited and monetized successfully was very small. This is similar to the situation that, even if there were so many innovators and entrepreneurs, only small numbers achieved commercial success from their ideas. In “The Innovator's DNA”, the authors identified the code of successful innovators that distinguishes them from others based on the case study of well known successful innovators such as Steve Jobses and Jeff Bezoses. The key lesson from the research of the innovator’s DNA was that the successful innovators’ DNA is not simply genetic traits endowed, but that they can be developed. Then, by the analogy, one can ask similar questions for patent: What make the monetizing patents different?; Can we find the code of the monetizing patents?; Can we identify and develop the monetizing patents? Monetizing patents protect the market for commercially successful products/services from competitors. Monetizing patents can be exploited as financial/investment assets or through licensing to other parties for additional cash flow. Followings are the monetizing patent’s DNA uncovered from the case study of carefully selected monetizing patents through the integrated technology, legal and business analysis.
  • 21. 21 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ • Monetizing patents solve the right technological problem: the right technological problem is a problem in great needs of improved/innovative solution; the right technological problem is recognized well in an industry; the right technological problem leads to a solution that has great business impacts; the solution of the right technological problem follows the correct evolutionally pass for emerging technology. • Monetizing patents practice value innovation: monetizing patents provide unique value proposition with maximum market protection; monetizing patents provide values to customers without additional cost/pain or infrastructure/process change requirements. • Monetizing patents actively participate in the business ecosystem: monetizing patents can be a platform or integrated into a platform; monetizing patents form a dominant design or industry standard; monetizing patents form diverse value chains; monetizing patents derive the value for M&A. • Monetizing patents are legal savvy: monetizing patents are created following the case laws and statutes to obtain maximum legal rights; monetizing patents are the litigation-proof patents; monetizing patents adapt to the dynamic changes of legal environment. For more information regarding the methodology for identifying and developing monetizing patents, please contact Alex Lee at alexglee@techipm.com .
  • 22. 22 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Increasing Monetization Activities Exploiting LTE Patents Recent TechIPm’s research for patents relate to 4G LTE standard found increasing monetization activities exploiting LTE standard related patents. LTE patents analysis for the market leaders among LTE UE (cellular phones, smart phones, PDAs, mobile PCs, etc.) and base station (eNB) product manufactures and innovators identified more than 1600 issued patents hold by 42 entities in the US as of March 31, 2015 (ref. http://www.techipm.com/alexdb/4G%20LTE%20Patents%20for%20Standards%20Data%201Q%202015_Intro.pdf ). Among 42 LTE patents holders, NPE accounts for 11% IPR share of LTE standard related patents. Identified NPE IPR shareholders are Adaptix, ETRI, InterDigital, Innovative Sonic, Inventergy, IPR Licensing, ITRI, Optis Wireless Technology, Seoul National University, Thomson Licensing and UPIP. Recent monetization activities exploiting LTE patents among NPE shareholders are as follows. Adaptix, a subsidiary of Acacia Research, sued several telecom operators including AT&T and smartphone manufactures including HTC for infringement of its 4G LTE patents (ref. http://www.law360.com/articles/616031/adaptix-ramps-up-at-t-htc-patent-feud-despite-setback ). Adaptix entered into patent license agreements with several entities including NEC as settlements for patent dispute (ref. http://finance.yahoo.com/news/acacia-subsidiary-resolves-action-nec-105900394.html ).
  • 23. 23 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ InterDigital sued several smartphone manufactures including Nokia for infringement of its 4G LTE patents and entered into patent license agreement with Samsung as a settlement for patent dispute (ref. http://www.pcworld.com/article/2359140/samsung-signs-cellular-patent-deal-with-interdigital-ending-all- litigation.html ). UPIP sued several smartphone manufactures including Huawei for infringement of its 4G LTE patents in Germany and the UK (Ref. http://www.businesswire.com/news/home/20140310005655/en/Unwired-Planet-Announces- Enforcement-Action-Germany-United#.VR6pAfnF-HA ). Recently, Optis Wireless Technology sued ZTE for infringement of its 4G LTE patents acquired from Panasonic (Ref. http://www.rfcexpress.com/lawsuits/patent-lawsuits/texas-eastern-district-court/949460/optis-wireless- technology-llc-et-al-v-zte-corporation-et-al/summary/ ). Inventergy is actively operating its licensing program exploiting its 4G LTE patents acquired from Panasonic (Ref. http://www.marketwatch.com/story/inventergy-launches-standardized-licensing-initiative-for-mobile-device- manufacturers-2015-03-09 ).
  • 24. 24 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ In addition to NPE IPR holders, Ericsson and Nokia (both entities are accounts for 13% IPR share of LTE standard related patents) are actively involved in monetization exploiting LTE patents: Ericsson sued Samsung for infringement of its 4G LTE patents and entered into patent license agreements with Samsung as a settlement for patent dispute (Ref. http://www.reuters.com/article/2014/01/27/us-ericsson-samsung- patents-idUSBREA0Q0A120140127 ). Ericsson also sued Apple for infringement of its 4G LTE patents (Ref. http://www.cellular-news.com/story/Legal/67300.php ). Licensing royalty of Ericsson that can have from Apple is expected to be around $200 M per year (Ref. http://techipm-innovationfrontline.blogspot.com/2015/03/how-much- will-apple-need-to-pay-to.html ). Nokia sued HTC for infringement of its 4G LTE patents and entered into patent license agreements with HTC as a settlement for patent dispute (Ref. http://www.theinquirer.net/inquirer/news/2327794/htc-and-nokia-end-legal-spat- with-patents-agreement).
  • 25. 25 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ How much will Apple need to pay to Ericsson for a reasonable licensing royalty of 4G LTE patents? Recently, Ericsson sued Apple for infringement over 41 Ericsson patents including 4G/LTE standard essential patents (SEPs) related to Apple's iPhones and iPads. Ericsson said Apple owes it patent royalties for using its wireless technologies in the iPhone and iPad, but Apple refused its fair and reasonable licensing offer. Notwithstanding the recent administrative and judicial blocking against exploiting SEPs for injunction, several courts ruled that SEPs are still eligible for monetary relief for infringement. In Microsoft Co., v. Motorola, Inc., No. 2:10-cv-01823-JLR (W.D. WA), the court provided basic guidelines for assessing FRAND royalty for SEPs. The guidelines are based on the Georgia-Pacific analysis of the reasonable royalty (Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970)) modified for taking into account SSOs’ primary goals for adopting FRAND commitments. The key modification to the Georgia-Pacific factors leads to the reasoning that a royalty in a patent pool for the specific SEPs at issue or comparable licensing transactions as a candidate for the royalty established through negotiation under FRAND commitments. Thus, the royalty rate in the recently formed LTE patent pool may provide expected FRAND licensing revenue. Another court’s guidelines for assessing FRAND royalty for SEPs can be found in In re INNOVATIO IP VENTURES, LLC, No. 1:11-cv-09308 (N.D. Ill. 2013), Dkt. No. 975. The INNOVATIO IP VENTURES court calculated FRAND royalty (cap) of WiFi SEPs as (average profit margin to the contribution of patentee’s SEPs) x
  • 26. 26 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ (net profit of relating products) x (pro rata share of patentee’s SEPs to the total number of WiFi SEPs providing similar contribution to the profit). Similar calculation can also lead to the FRAND royalty (cap) for 4G LTE smartphone SEPs. To evaluate Apple’s 4G LTE smartphone SEPs licensing royalty owed to Ericsson, Ericsson’s IPR share in 4G LTE SEPs is researched. Recent TechIPm, LLC’s research for 4G LTE standard related patent in the US reviles Ericsson’s 4G LTE smartphone SEPs’ IPR share is around 7% (for details about analysis method, please refer to 4G LTE Patents for Standard Innovativeness Ranking: http://techipm- innovationfrontline.blogspot.com/2015/01/4g-lte-patents-for-standard_8.html). Then, based on various market research data as of 4Q 2014, the net profit of Apple from smartphone sales per year in the US market is calculated as roughly $10 B. Finally, if the average profit margin to the contribution of the 4G LTE SEPs of 3% (smallest scalable product base) is assumed, the licensing royalty of Ericsson that can have from Apple is expected to be around $200 M per year.
  • 27. 27 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Increasing IP Financing Activities Exploiting Wireless Patents Patents can be used as collateral to secure a loan from a bank. Recent wireless patent research of security agreement in the USPTO’s assignment data base uncovered the increasing financing activities exploiting wireless patents as the recognition of wireless patents’ value is increasing (ref. http://www.slideshare.net/alexglee/wireless- patents-for-standards-applications-1q-2015). Company Bank/Fund Number of issued patents and pending patent applicat ions Technology Key wireless patent USPTO assignment link Adaptix Baker Communications Fund 36 WiMax/LTE Devices US6947748: OFDMA with adaptive subcarrier-cluster configuration and selective loading http://assignment. uspto.gov/#/assig nment?id=18875- 448&q=7454212 Spectralink Bank of Montreal 19 IEEE 802.11e WiFi US7616616: Apparatus and method for enhanced quality of service in a wireless communications network http://assignment. uspto.gov/#/assig nment?id=30122- 891&q=7616616
  • 28. 28 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Wavelink Jefferies Finance 79 WLAN Security US7133526: System and method for providing WLAN security through synchronized update and rotation of WEP keys http://assignment. uspto.gov/#/assig nment?id=31029- 849&q=6965674 Extricom Kreos Capital 17 WiFi AP US7164674: Multiplex communication between access points and hub http://assignment. uspto.gov/#/assig nment?id=23355- 806&q=7164674 Devicefidelity Blue Sky Private Equity 26 NFC Devices US8070057: Switching between internal and external antennas http://assignment. uspto.gov/#/assig nment?id=34706- 572&q=7941197 First Data Credit Suisse AG 157 NFC Mobile payment system US8523053: Enabling consumer choice on contactless transactions when using a dual- branded payment instrument http://assignment. uspto.gov/#/assig nment?id=30080- 531&q=8523053 For more information regarding wireless patent evaluation and valuation for IP financing, please contact Alex Lee at alexglee@techipm.com .
  • 29. 29 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Current Status of Patent Rights: U.S. v. Other Countries U.S. Other Countries Inter partes review (IPR): Fostering invalidation through administrative proceedings Alice: Increasing confusion regarding patent eligibility; Fostering invalidation of software and business methods related patents Innovation Act: Making enforcement harder Cases for Standard Essential Patents: Decreasing damages make harder to license voluntarily Decreasing investment in patent monetization market S. Korea: Establishing patent litigation hub by increasing damages, making new rules that make harder to invalidate and recognition of software patent right China: Increasing recognition of patent rights (recent Apple’s win in smartphone litigation case) Japan: Amendments to Japan’s intellectual property laws, took effect on April 1 this year, make enforcement easier through a new patent opposition system in Japan UK: Patent Box scheme for providing an incentive to file patent applications All: Increasing investment in patent monetization market Right direction?
  • 30. 30 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Smartphone Patent Wars: Legal & Policy Issues of Standard Essential Patents in the ICT Industry As represented by “Smartphone Patent Wars,” patents for smartphones became the most important strategic competition tool among market leaders. Especially, patents for mobile communication standards, which are the so- called ‘Standard Essential Patents (SEPs),’ became the center of legal and policy debates regarding their intellectual property rights (IPRs). The author provides the implications of recent courts’ resolutions regarding FRAND (Fair, Reasonable And Non Discriminatory) disputes to the ICT (Information and Communications Technology) industry and provide several alternative options for resolving FRAND disputes. The author contends that the current concerted resolutions in courts and regulation agencies can result in adverse effects to the ICT industry. The author also contends the main drawback of the recent proposals to resolve the disputes surrounding SEPs through the ex ante FRAND licensing and the ICT industry players’ voluntary collaboration. From the analysis of ICT industry players’ response to the outcomes of court resolutions, the author contends a compromising way to provide FRAND Royalty adopting arguments from both sides of the disputes. The author also contends a practical improvement to the voluntary collaboration proposals to resolve the disputes surrounding SEPs. Table of Contents I. Introduction
  • 31. 31 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ II. A Holistic Review of Current Issues in FRAND Disputes A. Interpretation of FRAND Commitments B. Determination of FRAND Royalty C. Antitrust Issue III. Implications for ICT Industry A. Response of ICT Industry to the Courts’ Resolutions B. Potential Adverse Effects of Courts’ Resolutions C. Alternative Methods to Resolve FRAND Disputes IV. Recommendations A. FRAND Royalty and Injunctive Relief B. Alternative Methods for FRAND Licensing V. Conclusion Full Text: http://www.slideshare.net/alexglee/microsoft-v-google-smartphone-patent-wars-legal-policy-issues-of- standard-essential-patens-in-ict-industry
  • 32. 32 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Wireless Patents under the PTAB’s IPR & CBM Scrutiny Patent Party/Case Claim Prior Art/Analysis/Decision US6772215 (Method for minimizing feedback responses in ARQ protocols) Priority date: April 9, 1999 *Standard Essential Patent for IEEE 802.11n Broadcom v. Wi-Fi ONE (Ericsson) IPR2013- 00601 Claims 1, 2, 4, 6, 8, 15, 22, 25, 26, 29, 32, 34, 45, 46, 49, 52, and 54 1. A method for minimizing feedback responses in an ARQ protocol, comprising the steps of: sending a plurality of first data units over a communication link; receiving said plurality of first data units; and responsive to the receiving step, constructing a message field for a second data unit, said message field including a type identifier field and at least one of a sequence number field, a length field, and a content field. US6581176 (Method for transmitting control frames and user data frames in mobile radio communication system); Priority date: Aug. 20, 1998 US6581176 discloses a “transmitting station” that sends user data frames to a “receiving station” over a “radio section between a receiving station and the transmitting station.” US6581176 discloses a “receiving station” that receives user data frames from the “transmitting station.” US6581176 discloses an “RLP NAK” message that includes a field NAK_TYPE that identifies whether the message identifies a range of sequence numbers or uses a bitmap. If the value of NAK_TYPE is “00,” the RLP NAK message includes two fields—FIRST and LAST—with “the 12-bit sequence number of the first data frame for which a retransmission is required,” and “the 12-bit number of the last data frame for which a retransmission is required,” respectively. If the value of NAK_TYPE is “01,” the RLP NAK message includes a field NAK_MAP_SEQ with “the 12-bit sequence number of the first data frame in this NAK Map for which retransmission is requested.” The RLP NAK message includes a type identifier field
  • 33. 33 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ (NAK_TYPE), and a sequence number field (FIRST, LAST, or NAK_MAP_SEQ). US6581176 discloses the limitation whether “type identifier field” is construed to mean “a field of a message that identifies the type of that message,” or, in the alternative, to mean any type of data. Claims 1, 2, 4, 6, 8, 15, 22, 25, 26, 29, 32, 34, 45, 46, 49, 52, and 54 are unpatentable under 35 U.S.C. § 102(b) as anticipated by US6581176. US6466568 (Multi-rate radiocommun ication systems and terminals) Priority date: Oct 15, 1996 Broadcom v. Wi-Fi ONE (Ericsson) IPR2013- 00602 Claims 1-6 Claim 1. A communication station comprising: a processor for arranging information for transmission including providing at least one first field in which payload information is disposed and providing at least one second field, separate from said first field, which includes a service type identifier which identifies a type of payload information US5488610 (Communication system); Priority date: Aug. 26, 1993 US5488610 describes a multiplexer for use in a system for transmitting more than one type of data, e.g., voice and data. Figure 2 is a block diagram showing the main components of communication system 10 of the invention. Controller 18 comprises processor 19, storage means 20, multiplexer/demultiplexer 22, voice coder/decoder 24, and line interface 27. Communication system 10 can be used to share voice and visual data with another user of a similar system. Multiplexer 22 multiplexes the voice and data signals, adds synchronization information, and transmits the composite signal to the physical layer high speed modem (V32bis) connected to the Public Switched
  • 34. 34 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ provided in said at least one first field; and a transmitter for transmitting information received from said processor including said at least one first field and said at least one second field. Telephone Network (PSTN) or a GSM mobile network). The composite signal is organized into frames each containing a header and one or more complete voice frames and/or other non-voice data. The content of each frame is determined by the applications and may change during the call. Figures 5a to 5g show the structures of some possible frames. In Figures 5a to 5g, “H” is a header field that identifies the frame type, which is used to identify the contents of a frame. Under the direction of processor 19, multiplexer 22 arranges voice and non-voice data for transmission in frames. A frame may contain at least a field V (voice) or D (non-voice data) in which payload information is disposed. A frame also contains a separate field, H (header), that identifies the frame type—i.e., the type of payload information—as voice only, data only, or voice and data. Claims 1–6 are unpatentable under 35 U.S.C. § 102(b) as anticipated by US5488610. US5541662 (Content programmer control of video and data display using associated data); Priority date: Sep. 30, 1994 US5541662 describes an interactive video system
  • 35. 35 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ that processes a video data stream and an associated data stream corresponding to the video data stream. US5541662 is focused on a receiver, while the claims are to a transmitting device. However, one of ordinary skill in the art would have understood that the US5541662 implicitly teaches a communication station for transmitting packetized digital data streams, including the three types of payload, in US5541662. Therefore it would have been obvious to provide a transmitter for sending the type of data that US5541662 receives. Claims 1–6 are unpatentable under 35 U.S.C. § 103(a) as obvious over US5541662. US5515369 (Method for frequency sharing and frequency punchout in frequency hopping communicatio ns network) Priority date: Jun 24, 1994 BlackBerry v. Wi-LAN (Metricom) IPR2013- 00125 Claims 5-7 and 9 5. In a node operable on a communications network having a plurality of shared- medium channels and having a plurality of channel-agile nodes each node capable of transmitting and receiving data over a plurality of said channels, a method for establishing a unique channel-hopping US5377221 (Communications system); Priority date: May 12, 1984 US5377221 does not disclose assigning a unique seed value to a node as required by claim 5’s limitation (a). Nor does it disclose randomizing a list of available node channels using a deterministic pseudo-random number generator seeded with said seed value (referring to the unique seed value) as required by claim 5’s limitation (d). In addition, US5377221 does not disclose the channel punchout mask as required by claim 5’s limitations (b) and (c).
  • 36. 36 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ * It relates to “channel map” in the Bluetooth standard that is implementati on specific. band plan for that node and communicating that band plan to other nodes in the network comprising the steps of: a) assigning to that node a unique seed value; b) determining a channel punchout mask, said mask indicating those channels on which the node experiences interference or is otherwise unable to receive data; c) applying said mask to a list of network channels to eliminate undesirable channels and therefore to obtain a list of available node channels; d) randomizing said list of available node channels by using a deterministic pseudorandom number generator seeded with said There is no reasonable likelihood that claim 5 is anticipated by US5377221. Thus, the petition for instituting inter partes review is not granted.
  • 37. 37 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ seed value thereby obtaining a unique channel- hopping band plan; and e) communicating said unique channel-hopping band plan to other nodes in the network by transmitting data from which said other nodes may derive said unique channel-hopping band plan. US7463151 (Systems and methods for providing mobile services using short-range radio communicatio n devices) Priority date: April 4, 2005 Google v. Unwired Planet (Openwave System) CBM2014- 00004 Claims 21 and 22 Claim 21. A method for providing a promotional mobile service to a short- range radio communication (SRC) enabled mobile terminal over a mobile network, the method comprising: receiving SRC device information from the SRC- enabled mobile terminal over the mobile network, the SRC device information The claimed invention is directed to an abstract idea, specifically, the abstract idea of receiving information and providing services or advertisements based on that information. The preambles and all claim limitations of both claims support this abstract idea, and the patent repeatedly discloses that the invention is directed to providing services or advertisements. The identified abstract idea is a fundamental building block of economics, similar in nature to the abstract idea of hedging claimed in Bilski and intermediated settlement claimed in Alice. The claimed subject matter does not do anything more than simply instruct the practitioner to implement the abstract idea of gathering,
  • 38. 38 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ acquired by the SRC- enabled mobile terminal from an SRC device; authenticating the SRC device information; and in response to authenticating the SRC device information, providing the promotional mobile service to the SRC- enabled mobile terminal over the mobile network on a time-limited basis. Claim 22. A method for receiving an advertisement over a mobile network, the method comprising: acquiring short range communication (SRC) device information from a SRC device using an SRC- enabled mobile terminal; providing the SRC device information to a mobile service provider over the mobile network; and receiving the advertisement authenticating, and transmitting data and services on generic technology. Despite its arguments that the communication elements of the claims add enough to make the claims patentable, Patent Owner fails to identify any language in the claims or the Specification demonstrating that the generic communication systems function in an unconventional manner. Instead, through the bare recitation of the steps of “receiving,” “acquiring,” “authenticating,” and “providing,” the claims are “specified at a high level of generality,” which the Federal Circuit has found to be “insufficient to supply an ‘inventive concept.’” Ultramercial, 772 F.3d at 716. Claims 21 and 22 are unpatentable under 35 U.S.C. § 101.
  • 39. 39 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ over the mobile network. For more information regarding wireless patent analysis for the Post-Grant Patent Proceedings, please contact Alex Lee at alexglee@techipm.com .
  • 40. 40 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ The U.S. Holds IPR Leadership in Patents for Wireless Standards To evaluate the IPR leadership in wireless communications, the US patents that are related to the key wireless standards are analyzed. The wireless patens are grouped by mobile wireless communications (4G LTE) related patents and fixed wireless communications (WLAN, WPAN, NFC) related patents. Patent disclosures in claims and detail description for each patent are analyzed as to whether the contents are within the scope of key standard specifications (3GPP, IEEE, ISO, NFC Forum). Top 20 patent holders for each group are then selected to rank the combined IPR shares. For details about the analysis, please refer “Wireless Patents for Standards & Applications 1Q 2015” (http://www.slideshare.net/alexglee/wireless-patents-for-standards-applications-1q-2015). For the mobile wireless communications IPR, LG Electronics is the leader followed by Samsung Electronics, Qualcomm, Google, Ericsson, Nokia, Apple, InterDigital, BlackBerry and Panasonic. For the fixed wireless communications IPR, Sony is the leader followed by Intel, Marvell, Samsung Electronics, Qualcomm, Broadcom, Cisco, NXP, Philips and Texas Instruments. Combining the mobile and fixed wireless communications IPR, Samsung Electronics is the leader followed by LG Electronics, Qualcomm, Intel, Sony, Nokia, Google, Ericsson, Marvell and InterDigital. The combined IPR shares for the top 20 IPR holder’s countries based on the location of headquarter show that the U.S. holds IPR leadership in patents for the key wireless standards.
  • 41. 41 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
  • 42. 42 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ 4G LTE, 5G M2M/IoT, Smartphone NFC Patents for Standards & Applications Data TechIPm's patents research data are very useful information for patent licensing royalty & litigation damage estimation, patent investment feasibility analysis, competitive intelligence, R&D planning and strategic patent development 4G LTE Patents for Standards Data is a custom research based on 4G LTE patents analysis for the market leaders among LTE UE and base station product manufactures and innovators. To evaluate the essentiality of a patent for the LTE-Advanced standard, patent disclosures in claims and detail description for each 4G LTE related patent are compared to the 3GPP Release 10 technical specifications for the LTE RAN. Assignee name, patent number (USPTO & EPO Families hyperlinked to Google Patent), standard specifications series & section number, technology category and essentiality level for more than 1600 issued patents are provided. For more information please visit http://www.techipm.com/alexdb/4G%20LTE%20Patents%20for%20Standards%20Data%201Q%202015_Intro.pdf M2M & D2D communication technologies are the key enablers for emerging IoT (Internet of Things) applications. They are also considered as the essential components of 5G mobile communication. M2M & D2D Patents for IoT Data is a custom research based on patents analysis for the market leaders among M2M & D2D product
  • 43. 43 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ manufactures and service providers. Patent disclosures in claims and detail description for each patent are analyzed as to whether the contents are within the scope of key technologies for M2M (e.g. low power design & management) and D2D (e.g. discovery process) communications. Assignee name, patent/publication number, hyperlink to Google Patent technology category, title, abstract and application date for more than 1300 patent applications are provided. For more information please visit http://www.techipm.com/alexdb/M2M%20&%20D2D%20Patents%20for%20IoT%20Data%201Q%202015_Intro. pdf NFC Patents for Standards & Applications Data is a custom research based on NFC related patents analysis for the market leaders among NFC product manufactures and service providers. NFC patents are classified by industry standard for NFC technology (ISO and NFC Forum) and major NFC applications. Assignee name, patent number (USPTO & EPO Families hyperlinked to Google Patent), applications and standard specifications series & section number for more than 600 issued patents are provided. For more information please visit
  • 44. 44 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ http://www.techipm.com/alexdb/NFC%20Patents%20for%20Standards%20&%20Applications%20Data%201Q% 202015_Intro.pdf
  • 45. 45 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ IoT (Internet of Things) Intellectual Property (Patent) Strategy Consulting Services O V E R V I E W Goldman Sachs defines the IoT (Internet of Things) as the third wave of internet revolution: by connecting to the internet billions of devices, the IoT opens up a host of new business opportunities and challenges. According to McKinsey, the IoT has the potential to create up to $6 trillion economic value annually by 2025. TechIPm provides the expert consulting services for the IoT IP (Intellectual Property) strategy. A C C O M P L I S H M E N T S
  • 46. 46 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ • Over 20 years of experiences in technology research, business development, strategy consulting, and intellectual property management • Consulted IP strategy to diverse industry players (Fortune 500 companies, Patent monetization firms, Law firms, Investment firms, Research institutions) in the field of electronics, IT and telecommunications • Can coordinate across multiple job functions including patent experts, engineers, and business professionals • Can provide integrated strategic patent management C O N S U L T I N G S E R V I C E S Strategic Patent Value Creation & Portfolio Development Well tailored value creation methodology combined with patent prosecution strategy can develop new patent portfolios for maximum ROI from existing patents. Many patent applications and newly issued patents can be further developed for creating new values by amending and creating claims and generating family patents to encompass emerging technology and products/services trends, market demands, and strategic exploitation goals (e.g. cross-licensing, monetization etc.).
  • 47. 47 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ A client’s patents are reviewed for selecting patents relating to the IoT. The IoT related patents are categorized as standard relevant and application specific patents. The categorized IoT patents are evaluated to select good candidates for value creation. For the standard relevant IoT patents, the selected patents are further analyzed to find candidates for the IoT standard essential patents (SEPs) and development as the IoT SEPs with respect to the specific standards. For the IoT SEPs candidates, the claim-standard specification mapping is performed to generate EoU claim charts. For the development candidates as SEPs, the model claims are constructed which can make a candidate as a IoT SEP with respect to a specific standard. Additional claims are constructed to capture the unclaimed embodiments in the candidates’ detail descriptions. For the application specific IoT patents, the selected patents are further analyzed to find candidates for commercial essential patents (essential for commercial product/service implementation), patents for market platforms (dominant designs), and patents for disruptive technologies (for future market generation potential). Existing claims are amended and additional claims are constructed to capture the unclaimed embodiments in the candidates’ detail descriptions to reinforce the protectability (against invalidation), enforceability (against potential infringement), and marketability (for monetization, new products/services etc.). Patent Evaluation for Investment
  • 48. 48 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Understanding the true value of patents becomes very important step in investment decision making processes as the patents became an important investment asset class. Investment professionals are frequently involved in patent valuation during M&A activity, buying and selling patents for bankruptcy cases, patent secured debt financing deals, sale & license-back transactions, securitizations using patent as the underlying asset, (long or short) stock investment for IP based business entities etc. To understand the true value of patents, however, accurate evaluation of patents under investment consideration is need. Therefore, accurate evaluation of patents became the essential part for investment professionals to figure out feasibility of investment involving patents. To evaluate of patents accurately, and thus, to get an accurate read on any investment opportunities, legal expertise in additional to technical and business expertise are required due to legal rights nature of patents. Therefore, involvement of expert with the technical, business, and legal expertise is crucial to evaluate patents accurately, and thus, to understand the true value of patents. TechIPm LLC provides the expert patent evaluation services for investment professionals exploiting the technical, business, and legal expertise and many years of experience in evaluating more than ten thousand patents relating to over hundred million dollars of investments in patent investments. A client’s IoT patents are reviewed to provide overall qualities and investment values in alignment with client’s investment goal. Upon client’s request, selected patents or patent portfolio(s) are analyzed utilizing well known valuation methods (e.g. income, market, cost method) in detail to provide ROI based on the high level evaluation.
  • 49. 49 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Strategic Patent Acquisition & Licensing Program Development TechIPm provides the expert advice for strategic IoT patent acquisition for diverse clients including business corporations, research institutes, investment organizations, and patent management firms. TechIPm can align diverse clients’ business purpose (e.g. competitive intelligence, offensive, defensive, and monetization) with strategic IoT patent acquisition process. With the specific business goal in mind, TechIPm can classify the field of acquisition target by the IoT market/product/service/technology. TechIPm also can evaluate the value of acquisition target. TechIPm can decide the best sourcing method among potential options: patent search and mining, close/open patent market place, internal auditing and patent development process. TechIPm also can coordinate the deal/transaction process collaborating with brokers. TechIPm also provides consulting service for developing profitable patent licensing program exploiting the IoT patents. TechIPm closely works with client for developing patent licensing program until the closing of the licensing agreement. TechIPm provides strategic planning in alignment with client's business goal, due diligence for licensable patent portfolios, strategic patent prosecution for monetization value creation, analysis for target market, potential licensees and revenue generating potential, and licensing enforcement (including litigation) strategy.
  • 50. 50 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ IoT (Internet of things) Wireless Connectivity Standards Innovation Leadership As the number of granted patent is a good measure of innovation activities, issued US patents that are related to the key wireless standards for the IoT connectivity (LTE, Wireless LAN, Zigbee, Bluetooth, NFC, UHF RFID) are analyzed to evaluate the technology innovation leadership. More than 10,000 issued patents as of May 15, 2015 are reviewed. Patent disclosures in claims and detail description for each patent are analyzed as to whether the contents are within the scope of key technologies for the relevant standard specifications (3GPP, IEEE, ISO, NFC Forum, Bluetooth SIG). For details about the analysis, please refer “Wireless Patents for Standards & Applications 1Q 2015” (http://www.slideshare.net/alexglee/wireless-patents-for-standards-applications-1q-2015). More than 3,000 patents hold by more than 160 assignees are identified as the key wireless standard patents for the IoT connectivity. Samsung Electronics is the leader followed by LG Electronics, Qualcomm, Nokia, Google, Ericsson, Intel, Apple, InterDigital, Sony, Broadcom, BlackBerry, Texas Instruments, Marvell, Panasonic, ETRI, NEC and Cisco.
  • 51. 51 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
  • 52. 52 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Developing New Commercialization Opportunities for Existing Patents Exploiting Emerging IoT Platforms HBS Professor Iansiti, the author of “The Keystone Advantage,” suggested technological assimilation as a new engine for technological innovations in his article “Creative Construction.” In the technological assimilation frameworks, a core innovation that once provided stand-alone products or services for a specific market can be the building blocks for mass market generating innovations through assimilation to broader platforms that were not existed at the time of innovations. A good example may be the GPS technology providing LBS (location based services) applications for smartphones and automobiles. Another good example may be the DVR technology of TiVo that was integrated into digital set-top box platforms. Recently, several global leaders in IoT (Internet of Things) business provide the IoT platforms to create diverse platform-based business models: • Samsung’s Artik platform can help developers create new sensor-enabled devices. Artik platform includes a family of processors and wireless connectivity that can power and connect everything such as servers, smartphones and wearables (https://www.artik.io/).
  • 53. 53 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ • Apple’s HomeKit home automation platform can help developers create new securely connected home automation devices in iOS. HomeKit enables users to discover HomeKit accessories in their home and configure them, or create actions to control the devices (https://developer.apple.com/homekit/). • Google will unveil IoT platform in May. The platform will help developers create connected home environment (http://timesofindia.indiatimes.com/tech/tech-news/Googles-IoT-platform-to-launch-this- month/articleshow/47115137.cms). • MediaTek’s LinkIT One platform provides module-based reference design and feature rich capabilities to software development, prototyping and final hardware design of Wearables and IoT devices (http://labs.mediatek.com/site/global/home/p_home.gsp). The IoT platforms can also be used as the platform-based commercialization for the existing patented technologies. The integration feasibility of the existing patented technologies into the IoT platforms can be found by contrasting all possible business models from the IoT platforms to the potential value propositions provided by the inventive departures (novelty points) of the existing patents (please refer http://techipm- innovationfrontline.blogspot.com/2015/04/the-monetizing-patents-dna-how-to.html for the “Monetizing Patent’s DNATM ” methodology).
  • 54. 54 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ IoT(Internet of Things) Platform Connectivity Technologies and Key Patents IoT Platform Connectivity Technology Key Patent Samsung Artik platform can help developers create new sensor-enabled devices. Artik platform includes a family of processors and wireless connectivity that can power and connect everything such as servers, smartphones and wearables (https://www.artik.io/). ARTIK1: Bluetooth Low Energy (BLE) with Chip Antenna ARTIK5 & 10: WiFi/BT/BLE + ZigBee/Thread (802.11 b/g/n) *Thread is an IPv6 based protocol (based on 6LoWPAN) for smart home applications to communicate through mesh network exploiting existing ZigBee (IEEE 802.15.4) standard: Ref. http://threadgroup.org/Default .aspx?Contenttype=ArticleDe t&tabID=94&moduleId=492 &Aid=45&PR=PR US8315219 (Method for supporting mobility of a mobile node in a multi-hop IP network and a network system therefor): A method is provided for supporting mobility of a Mobile Node (MN) in a multi-hop Internet Protocol (IP) network, in which an MN that has moved from a source Personal Area Network (PAN) to a target PAN, sends a Router Solicitation (RS) message with an option for requesting its profile to a gateway of the target PAN, and receives a Router Advertisement (RA) message from the gateway in response to the RS message. The RA message includes a home prefix of the MN as the requested profile. The method supports mobility of MNs, enables unicast communication, and facilitates efficient use of the network. Apple HomeKit home Broadcom's Wireless Internet US8849202 (Audio transfer using the Bluetooth Low
  • 55. 55 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ automation platform can help developers create new securely connected home automation devices in iOS. HomeKit enables users to discover HomeKit accessories in their home and configure them, or create actions to control the devices (https://developer.apple .com/homekit/). Connectivity for Embedded Devices (WICED™) platform enables WiFi (802.11 b/g/n), Bluetooth, and Bluetooth Low Energy (BLE) connectivity (https://www.broadcom.com/ application/internet_of_things .php). Energy standard): The described embodiments include a system for communicating between electronic devices. During operation, a receiving electronic device receives a data channel protocol data unit (PDU) in a link layer of a Bluetooth Low Energy (BTLE) protocol stack. The receiving electronic device then reads a field in a header of the data channel PDU to determine if the header indicates that a payload of the data channel PDU contains audio data. When the header indicates that the payload of the data channel PDU contains audio data, the receiving electronic device is configured to send the audio data from the payload to an audio layer in the BTLE protocol stack for processing. US8451858 (Collision avoidance in multiple protocol communication networks using a shared communication medium ): A method for collision avoidance in multiple protocol networks using a shared communication medium begins by determining a first protocol probable active time period. The method continues by determining a first protocol probable inactive time period. The method continues by generating a transmit blocking indication based on the first protocol probable active time period and the first protocol probable inactive time period.
  • 56. 56 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Qualcomm AllPlay Smart Media Platform allows simple wireless connectivity to individual speakers or an entire home audio system over the user's existing home WiFi network (https://www.qualcom m.com/products/allplay /platform). WiFi (802.11 b/g/n) and Bluetooth connectivity US8594056 (Method and apparatus for dynamic and dual antenna bluetooth (BT)/WLAN coexistence): An apparatus and method are disclosed for effectively and efficiently arbitrating concurrent usage between WLAN and Bluetooth access technologies for co-located wireless devices. A state level arbiter determines state and relevant parameters of a WLAN module and of a Bluetooth module of a wireless transceiver unit. The state level arbiter uses the state and relevant parameters to determine which access technology (WLAN or Bluetooth) or combination of the access technologies (WLAN or Bluetooth) will provide the best concurrent performance for wireless transmissions at a given time for specific Bluetooth states and WLAN states.
  • 57. 57 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Google will unveil IoT platform in May. The platform will help developers create connected home environment (http://timesofindia.indi atimes.com/tech/tech- news/Googles-IoT- platform-to-launch- this- month/articleshow/471 15137.cms). WiFi (802.11 b/g/n) connectivity for the smart home applications Method and apparatus using sounding PPDUs to provide range extension to IEEE 802.11n signals: A wireless transmitter includes a stream parser for generating a plurality of spatial streams from a digital signal and a space time block coder (STBC) for mapping each of the spatial streams to a plurality of space-time streams that each include data and a preamble for estimating a channel transfer function. The transmitter also includes a spatial mapper for spatially expanding each of the space- time streams by applying a spatial expansion matrix to data and to first training symbols used in the preamble to probe a channel experienced by the data and by applying an extension matrix to second training symbols used in
  • 58. 58 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ the preamble to probe at least one additional dimension of the channel to enable use of beamforming to achieve range extension The spatial expansion matrix and the extension matrix form an overall matrix that has at least two orthogonal columns with different norms. The wireless transmitter also includes an analog front end for modulating the spatially expanded space-time streams onto a wireless carrier. MediaTek LinkIT One platform provides module-based reference WiFi (802.11 b/g/n), Bluetooth, and Bluetooth Low Energy (BLE) US8335577 (Method of generating advanced audio distribution profile (A2DP) source code and chipset using the same): A chipset for an audio player supporting
  • 59. 59 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ design and feature rich capabilities to software development, prototyping and final hardware design of Wearables and IoT devices (http://labs.mediatek.co m/site/global/home/p_h ome.gsp). connectivity Bluetooth advanced audio distribution profile (A2DP). The chipset comprises first and second processors. The first processor reads audio source data from a storage device and performs a first part of advanced audio distribution profile (A2DP) source encoding. The second processor is coupled to the first processor and performs a second part of the advanced audio distribution profile (A2DP) source encoding. The first and second processors collectively act as a Bluetooth host. Vodafone global M2M platform provides a network access layer 4G LTE based M2M connectivity US8838806 (Connection management for M2M device in a mobile communication network): There is provided a method that relates to the setting up and/or maintaining
  • 60. 60 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ specifically designed for low power Internet of Things applications, which gives greater visibility and control over all connected devices (http://www.m2m.voda fone.com/) * LTE based M2M (LTE-M) standard will be included in 3GPP’s LTE release 13 specifications, expected to be finalized in early 2016. of a connection between a machine-to-machine (M2M) device and a mobile communication network. In order to be able to adapt the connection management to the requirements of the M2M device, the M2M device may transmit an indication that it is an M2M device to the mobile communication network. At least one network node of the mobile communication network controls the setting up and/or the maintaining of the connection based on the indication. The network node may route a request for setting up the connection to a further network node based on the indication.
  • 61. 61 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Potential Patent Litigation Risk Assessment for the IoT (Internet of things) Wireless Connectivity Standards Many market researchers expect that the interconnected IoT devices will create a new market that will result in more than $1 trillion in value added to the global economy within 10 years. Wireless connectivity is the key enabler for the mass deployment of the IoT devices. To assess the potential patent litigation risk for the IoT wireless connectivity, patents that are related to the key wireless standards for the IoT connectivity (LTE, Wireless LAN, Zigbee, Bluetooth, NFC, UHF RFID) are analyzed to evaluate the technology innovation leadership. More than 10,000 issued patents in the US as of May 15, 2015 are reviewed. Patent disclosures in claims and detail description for each patent are analyzed as to whether the contents are within the scope of key technologies for the relevant standard specifications (3GPP, IEEE, ISO, NFC Forum, Bluetooth SIG). For details about the analysis, please refer “Wireless Patents for Standards & Applications 1Q 2015” (http://www.slideshare.net/alexglee/wireless-patents-for-standards-applications-1q-2015). More than 3,000 patents hold by more than 160 assignees are identified as the key wireless standard patents for the IoT connectivity. To assess the potential patent litigation risk, the identified wireless standard patents for the IoT connectivity are further analyzed to figure out the patents that might be exploited for litigation: Patents owned by a NPE (NPE Passive) that may be transferred to other entities that might exploit them for litigation; Patents owned by a NPE (NPE Active) will enforce them; Patents owned by a NPE (NPE PAE) will enforce them for monetization purpose; Patents owned by a PE (Privateer) that may be transferred to other entities that will enforce
  • 62. 62 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ them for monetization purpose; and Patents owned by a PE that are transferred to other entities for the unknown purpose (Suspected Assignment). More than 700 patents hold by more than 30 assignees are identified as the patents that might be exploited for litigation. PE PAEs, NPE PAEs, Privateers, NPE Actives, NPE Passives hold 44%, 31%, 9%, 8% and 7% of the total patents with the potential litigation risk respectively. The IPR share of patents for the Suspected Assignment is 1%.
  • 63. 63 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/
  • 64. 64 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Ericsson v. Nokia Patents for IoT(Internet of Things) Connectivity Standards Attribute Ericsson Nokia No of Patents Analyzed 142 145 Connectivity Standards 3GPP CDMA/LTE, IEEE 802.11 WiFi, IEEE 802.15.1/Bluetooth SIG Core 2 - 4 3GPP CDMA/LTE, IEEE 802.11 WiFi, IEEE 802.15.1/Bluetooth SIG Core 2 – 4, IEEE 802.15.4 Zigbee, ISO 18092/NFC Forum Related IoT Platform Samsung Artik, Apple HomeKit, Broadcom WICED™, Qualcomm AllPlay, Google Connected Home, MediaTek LinkIT One, Vodafone global M2M platform Samsung Artik, Apple HomeKit, Broadcom WICED™, Qualcomm AllPlay, Google Connected Home, MediaTek LinkIT One, Vodafone global M2M platform Average Forward Citations/No of Patents with more than 100 Forward Citations 27/7 13/2 Most Cited Patent US6445917 (Mobile station measurements with event-based reporting): The present invention provides event-based or driven reporting of mobile station measurements. A mobile station measures one or more radio-related parameters for one or more cells in a radio access network. The mobile US6031827 (Method for radio resource control): In order to control the use of physical radio resources, the physical radio resources are divided into chronologically consecutive frames (14), so that a frame contains slots (16, 17, 18) of various sizes, which slots represent a given share of the
  • 65. 65 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ station evaluates the measured radio-related parameter with respect to a predetermined condition or event and determines that the predetermined condition is satisfied or that the event has occurred. Based on that evaluation, the mobile radio sends a report to the radio access network. Accordingly, the occurrence of an event and/or the satisfaction of a condition triggers the sending of the report to the network. That way, the network receives the information so that it can take timely and appropriate action without sending outdated or redundant measurement reports that do not convey relevant or new information. physical radio resources contained in the frame and can be individually allocated to different radio connections. The first dimension of a frame is time and the second dimension can be time, frequency or code. In the direction of the second dimension the slots represent various sizes, and a given first integral number of slots of the first size can be modularly replaced by another integral number of slots of another size. A certain number of consecutive frames form a superframe (19), in which case frames with corresponding locations in consecutive superframes are equal in slot division and allocations, if the data transmission demands do not change. Changes in the state of occupancy of the slots are possible at each superframe. In order to form an uplink connection, the mobile station sends a capacity request, where it indicates the type of requested connection and the demand of resources. In order to form a downlink connection, the base station subsystem sends a paging call, where it indicates the location in the superframe of the slots allocated to the connection. In order to indicate the state of occupancy, the base station subsystem
  • 66. 66 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ maintains a superframe-size parametrized reservation table. Priority Year No of Patents Transferred/Party 32/BlackBerry, CE Nuclear Power, Cluster LLC, InterDigital, UPIP 22/Acacia, Google, Qualcomm, Sisvel, Vringo, WiLAN 0 5 10 15 20 25 30 Ericsson Nokia
  • 67. 67 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ No of Patents Litigated/Party 9/Apple, Samsung, D-Link, Acer, Dell, Gateway, NETGEAR, Toshiba 4/Apple, Alcatel-Lucent, Ericsson, HTC, LG, ZTE, Verizon, AT&T, T-Mobile, Sprint References IoT (Internet of things) Wireless Connectivity Standards Innovation Leadership Link: http://techipm-innovationfrontline.blogspot.com/2015/05/iot-internet-of-things-wireless.html TechIPm IoT (Internet of Things) Intellectual Property (Patent) Strategy Consulting Services Link:http://www.techipm.com/alexdb/TechIPm%20IoT%20(Internet%20of%20Things)%20Intellectual%2 0Property%20(Patent)%20Strategy%20Consulting%20Services.pdf
  • 68. 68 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Increasing Litigation Risk with Increasing NPE Activities Exploiting the IoT (Internet of things) Wireless Connectivity Patents Many market researchers expect that the interconnected IoT devices will create a new market that will result in more than $1 trillion in value added to the global economy within 10 years. Wireless connectivity is the key enabler for the mass deployment of the IoT devices. To assess the potential patent litigation risk for the IoT wireless connectivity, patents that are related to the key wireless standards for the IoT connectivity (LTE, Wireless LAN, Zigbee, Bluetooth, NFC, UHF RFID) are analyzed to evaluate the technology innovation leadership. More than 10,000 issued patents in the US as of 2Q 2015 are reviewed. Patent disclosures in claims and detail description for each patent are analyzed as to whether the contents are within the scope of key technologies for the relevant standard specifications (3GPP, IEEE, ISO, NFC Forum, Bluetooth SIG). For details about the analysis, please refer “Wireless Patents for Standards & Applications 1Q 2015” (http://www.slideshare.net/alexglee/wireless-patents-for-standards-applications-1q-2015). More than 3,000 patents hold by more than 160 assignees are identified as the key wireless standard patents for the IoT connectivity. To assess the potential patent litigation risk, the identified wireless standard patents for the IoT connectivity are further analyzed to figure out the patents that might be exploited for litigation: Patents owned by a NPE (NPE Passive) that may be transferred to other entities that might exploit them for litigation; Patents owned by a NPE (NPE Active) will enforce them; Patents owned by a NPE (NPE PAE) will enforce them for
  • 69. 69 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ monetization purpose; Patents owned by a PE (Privateer) that may be transferred to other entities that will enforce them for monetization purpose; and Patents owned by a PE that are transferred to other entities for the unknown purpose (Suspected Assignment). More than 700 patents hold by more than 30 assignees are identified as the patents that might be exploited for litigation. PE PAEs, NPE PAEs, Privateers, NPE Actives, NPE Passives hold 44%, 31%, 9%, 8% and 7% of the total patents with the potential litigation risk respectively. The IPR share of patents for the Suspected Assignment is 1%. To find a specific patent litigation risk, individual patent with high litigation potential is further researched. One interesting fact is that there were the increasing ownership transfers of patents with high litigation potential to several NPEs for the purpose of monetization. For example, US6519223 (Ericsson: System and method for implementing a semi reliable retransmission protocol) that is a patent used in litigation (Case 6:10-cv-00473, Texas Eastern District Court) transferred to WI-FI ONE, LLC. Other examples are: US8457022 (Nokia: Method and apparatus for providing signaling of redundancy versions) that was transferred to Cellular Communications Equipment LLC is exploited in litigation (Case 2:15-cv- 00581, Texas Eastern District Court); US8411557 (Panasonic: Mobile station apparatus and random access method) that was transferred to Optis Cellular Technology, LLC is exploited in litigation (Case 2:15-cv-00300, Texas
  • 70. 70 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Eastern District Court); US8935587 (LG Electronics: Method for effectively transmitting control signal in wireless communication system) that is identified as the LTE SEP (Standard Essential Patent) was transferred to Optis Cellular Technology, LLC. Another interesting NPE activity involving high patent litigation potential is the assignment to and from Cluster LLC. Cluster LLC involved in 45 assignment activities as an assignor (assignee: UPIP, WI-FI ONE, Optis Cellular Technology) and as an assignee (assignor: Ericsson, UPIP) as of 2Q 2015.
  • 71. ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Quality Assessment of Qualcomm Patents for No of Patents Analyzed Connectivity Standards Related IoT Platform Portfolios Average Forward Citations/No of Patents with more than 50 Forward Citations Most Cited Patent http://www.techipm.com/ Patents for the IoT(Internet of Things) Connectivity Standards 273 3GPP CDMA/LTE, IEEE 802.11 WiFi, IEEE 802.15.1/Bluetooth SIG Core 2 – 4, IEEE 802.15.4 Zigbee, ISO 18092/NFC Forum Samsung Artik, Apple HomeKit, Broadcom WICED™, AllPlay, Google Connected Home, MediaTek LinkIT One, Vodafone global M2M platform Average Forward Citations/No of Patents 15/15 US6473467 (Method and apparatus for measuring reporting channel state information in a high efficiency, high performance communications system): Channel state information (CSI) can be Mobile WiFi 23% WPAN 6% NFC/RFID 2% 71 IoT(Internet of Things) Connectivity Standards 3GPP CDMA/LTE, IEEE 802.11 WiFi, IEEE 802.15.1/Bluetooth 4, IEEE 802.15.4 Zigbee, ISO 18092/NFC Forum , Broadcom WICED™, Qualcomm Google Connected Home, MediaTek LinkIT One, US6473467 (Method and apparatus for measuring reporting channel state information in a high efficiency, high performance Channel state information (CSI) can be Mobile 69%
  • 72. 72 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ used by a communications system to precondition transmissions between transmitter units and receiver units. In one aspect of the invention, disjoint sub-channel sets are assigned to transmit antennas located at a transmitter unit. Pilot symbols are generated and transmitted on a subset of the disjoint sub-channels. Upon receipt of the transmitted pilot symbols, the receiver units determine the CSI for the disjoint sub-channels that carried pilot symbols. These CSI values are reported to the transmitter unit, which will use these CSI values to generate CSI estimates for the disjoint sub-channels that did not carry pilot symbols. The amount of information necessary to report CSI on the reverse link can be further minimized through compression techniques and resource allocation techniques. Priority Year No of Patents Acquired/Party 61/3Com, Airgo Networks, Atheros, Flarion, HP, Lear Co., Nokia, Palm, Silicon Wave, Snaptrack 0 5 10 15 20 25 30 35 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 Qualcomm
  • 73. ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Claim Mix: Degree to which different kind of statutory claim types are used in a patent H(igh) in Claim Mix means higher protection against invalidation Claim Diversity: Degree to which different kind of claim formats, terminology, arrangement in a given statutory claim type are used in a patent H(igh) in Claim Diversity means higher avoiding potential infringement loophole http://www.techipm.com/ Claim Mix: Degree to which different kind of statutory claim types are used in a patent H(igh) in Claim Mix means higher protection Claim Diversity: Degree to which different in a given statutory claim type H(igh) in Claim Diversity means higher in loophole M 33% L 10% L 30% H 16% 73 H 57% M 54%
  • 74. ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Claim Setting: Degree to which different kind of commercially significant settings are used in a patent H(igh) in Claim Setting means higher in patent value realization http://www.techipm.com/ Claim Setting: Degree to which different kind of commercially significant settings H(igh) in Claim Setting means higher in H 27% L 27% 74 M 46%
  • 75. ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Characteristics of Litigated Patents for No of Patents Analyzed Connectivity Standards Related IoT Platform Portfolios No of Litigations/District Court/ITC/PTAB http://www.techipm.com/ Patents for the IoT(Internet of Things) Connectivity Standards 29 3GPP CDMA/LTE, IEEE 802.11 WiFi, IEEE 802.15.1/Bluetooth SIG Core 2 – 4, IEEE 802.15.4 Zigbee, ISO 18092/NFC Forum Samsung Artik, Apple HomeKit, Broadcom WICED™, AllPlay, Google Connected Home, MediaTek LinkIT One, Vodafone global M2M platform No of Litigations/District Court/ITC/PTAB 247/225/9/13 NFC/RFID 24% WiFi 17% WPAN 7% 75 Things) Connectivity Standards 3GPP CDMA/LTE, IEEE 802.11 WiFi, IEEE 802.15.1/Bluetooth 4, IEEE 802.15.4 Zigbee, ISO 18092/NFC Forum , Broadcom WICED™, Qualcomm Google Connected Home, MediaTek LinkIT One, Mobile 52%
  • 76. 76 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Major Litigated District Court Texas Eastern District Court, Delaware District Court, California Northern District Court, Illinois Northern District Court, Washington Western District Court Major Defendants Apple, Samsung, LG, Sony, HTC, Nokia, Ericsson, Alcatel-Lucent, ZTE, Huawei, HP, Marvell, Cisco, Dell, Sharp, Toshiba, Acer, Panasonic, Netgear, D-Link, MediaTek, Texas Instruments, TSMC, Motorola Solutions, AT&T, T-Mobile, Verizon, Sprint, Microsoft, Google, Amazon Most Litigated Patent US6665536 (Local area network having multiple channel wireless access): A communication network having at least one access point supports wireless communication among a plurality of wireless roaming devices via a first and a second wireless channel. The access point comprises a first and a second transceiver. The first and second transceivers operate on the first and second wireless channels, respectively. Each of the plurality of wireless roaming devices are capable of communicating on the first and second wireless channel. In one embodiment, the first wireless channel is used to exchange data, while the second channel is used to manage such exchanges as well as access to the first channel. In an alternate embodiment, both channels are used to support communication flow, however the first channel supports a protocol that is more deterministic than that of the second channel. Allocation of ones of the plurality of wireless roaming devices from one channel to the next may occur per direction from the access point. It may also result from decisions made by each of the wireless roaming devices made independent of the access point. For example, a decision may
  • 77. 77 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ be made based on the data type being transferred or based on the current channel load. Such factors may also be used by the access point for allocation determinations. In addition, allocation may be based on the type of roaming device involved, such as allocating peripherals to a slower channel. No of Patents Owned by NPE 17 No of Patents Assigned/Assignor/Assignee/ 18/ Ericsson, Adaptix, Micron Technology, Panasonic, Inside Secure, Ipwireless, Broadcom, Nokia/ Wi-Fi One, SDR Holdings, Round Rock, Optis Cellular Technology, NFC Technology, Innovatio IP Ventures, France Brevets, Cellular Communications Equipment, Avago Technologies Average No of US Family Patents 3 Average Forward Citations/No of Patents with more than 50 Forward Citations 33/8 Average Backward Citations/No of Patents with more than 50 Backward Citations 47/8
  • 78. 78 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Priority Year 0 5 10 15 20 25 30 35 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 Litigated Patents
  • 79. ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Wisdomain Valuation Grade AA: Above top 1% in Value relative to the relevant technical fields A+: Top 1~3% in Value relative to the relevant technical fields A0: Top 3~5% in Value relative to the relevant technical fields A-: Top 5~10% in Value relative to the relevant technical fields B+: Top 10~20% in Value relative to the relevant technical fields B0: Top 20~50% in Value relative to the relevant technical fields B-: Top 50~60% in Value relative to the relevant technical fields C: Below top 60% in Value relative to the relevant technical fields http://www.techipm.com/ AA: Above top 1% in Value relative to the B+: Top 10~20% in Value relative to the B0: Top 20~50% in Value relative to the : Top 50~60% in Value relative to the ow top 60% in Value relative to the A- 21% AA 17% B0 14% A+ 10% B- 10% C 7% 79 B+ 21%
  • 80. ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Claim Mix: Degree to which different kind of statutory claim types are used in a patent H(igh) in Claim Mix means higher protection against invalidation Claim Diversity: Degree to which different kind of claim formats, terminology, arrangement in a given statutory claim type are used in a patent H(igh) in Claim Diversity means higher avoiding potential infringement loophole http://www.techipm.com/ Claim Mix: Degree to which different kind of statutory claim types are used in a patent H(igh) in Claim Mix means higher protection Claim Diversity: Degree to which different in a given statutory claim type H(igh) in Claim Diversity means higher in loophole L 24% H 10% M 35% H 17% 80 M 66% L 48%
  • 81. ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Claim Setting: Degree to which different kind of commercially significant settings are used in a patent H(igh) in Claim Setting means higher in patent value realization http://www.techipm.com/ Claim Setting: Degree to which different kind of commercially significant settings H(igh) in Claim Setting means higher in M 31% L 7% 81 H 62%
  • 82. 82 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Evaluation of Monetized Patents for the IoT(Internet of Things) Connectivity Standards No of Patents Analyzed/Assignee 115 No of Patents Monetized Through Acquisition/Assignor 109 Optis Cellular Technology 15% Qualcomm 12% Intel 9% Intellectual Ventures 9% France Brevets 6% Round Rock 6% ZIH (Zebra) 5% Acacia 3% Avaya Technology 3% BlackBerry 3% Callahan Cellular LLC 3% Innovatio IP Ventures 3% Nvidia 3% Sisvel 3% UPIP 3% Google 2% Lenovo 2% Wavelink 2% Wi- Fi One 2% WiLAN 2% Agere System 1% Avago Technologies 1% Avaya Holdings 1%InterDigital 1%Inventergy 1%SDR Holdings 1%Spectralink 1% Thomson Licensing 1% Vringo 1% Other 10%
  • 83. 83 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ No of Patents Monetized Through IP Financing/Bank 39 Ericsson 22% Nokia 16% Micron Technology 6% Supersensor 6% Snaptrack 4% Panasonic 4% NXP 4% Ipwireless 4% Intersil 4% Inside Secure 4% Gigabit Wireless 4% LG Electronics 3% Broadcom 3% Arraycomm 3% Airgo Networks 3% Conexant 2% Silicon Wave 1% Palm 1% Omnipoint 1% Nortel 1%NCR Co. 1%Lear Co. 1%InterDigital 1%Harris Co. 1%BlackBerry 1%Aware 1%Agere System 1%Adaptix 1%3Com 1% Other 9%
  • 84. ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Connectivity Standards Related IoT Platform http://www.techipm.com/ 3GPP CDMA/LTE, IEEE 802.11 WiFi, IEEE 802.15.1/Bluetooth SIG Core 2 – 4, IEEE 802.15.4 Zigbee, ISO 18092/NFC Forum Samsung Artik, Apple HomeKit, Broadcom WICED™, AllPlay, Google Connected Home, MediaTek LinkIT One, Vodafone global M2M platform Bank of New York 20% Morgan Stanley 15% Jeffries Finance 5% Bank of Montreal 2% Banker Communications Fund 3% CBD Credit Funding 3% Deutsch Bank 3% Iroquois Master Fund 3% 84 3GPP CDMA/LTE, IEEE 802.11 WiFi, IEEE 802.15.1/Bluetooth 4, IEEE 802.15.4 Zigbee, ISO 18092/NFC Forum , Broadcom WICED™, Qualcomm Google Connected Home, MediaTek LinkIT One, Wilmington Trust 46%
  • 85. ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Portfolios Value Proposition http://www.techipm.com/ WiFi 24% NFC/RFID 17% WPAN 3% Increase Data Throughput 15% Wireless Identification 10% QoS 8% Low Power Consumption 6% Mobile Transaction 5% Location Finding 4% Power Control 4% Optimize Communication 3% Security 3% Multimode Modulation 2% Synchronisation 2% Carrier Aggretion 1% Decrease Interference 1% Mulimode Operation 1% 85 Mobile 56% Increase Connection Reliability 35% Increase Data Throughput Mulimode Smart Antenna 1%
  • 86. 86 ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ No of Patents Litigated 20 Average Forward Citations/No of Patents with more than 50 Forward Citations 32/22 Priority Year 0 2 4 6 8 10 12 14 1991 1993 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 Monetized Patents
  • 87. ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Wisdomain Valuation Grade AA: Above top 1% in Value relative to the relevant technical fields A+: Top 1~3% in Value relative to the relevant technical fields A0: Top 3~5% in Value relative to the relevant technical fields A-: Top 5~10% in Value relative to the relevant technical fields B+: Top 10~20% in Value relative to the relevant technical fields B0: Top 20~50% in Value relative to the relevant technical fields B-: Top 50~60% in Value relative to the relevant technical fields C: Below top 60% in Value relative to the relevant technical fields http://www.techipm.com/ AA: Above top 1% in Value relative to the B+: Top 10~20% in Value relative to the B0: Top 20~50% in Value relative to the : Top 50~60% in Value relative to the C: Below top 60% in Value relative to the B+ 27% B0 27% A- 13% C 9% AA 9% A+ 6% B- 6% A0 3% 87
  • 88. ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Claim Mix: Degree to which different kind of statutory claim types are used in a patent H(igh) in Claim Mix means higher protection against invalidation Claim Diversity: Degree to which different kind of claim formats, terminology, arrangement in a given statutory claim type are used in a patent H(igh) in Claim Diversity means higher avoiding potential infringement loophole http://www.techipm.com/ Claim Mix: Degree to which different kind of statutory claim types are used in a patent H(igh) in Claim Mix means higher protection Claim Diversity: Degree to which different in a given statutory claim type H(igh) in Claim Diversity means higher in loophole L 23% H 15% M 42% H 3% 88 M 62% L 55%
  • 89. ©2015 TechIPm, LLC All Rights Reserved http://www.techipm.com/ Claim Setting: Degree to which different kind of commercially significant settings are used in a patent H(igh) in Claim Setting means higher in patent value realization References IoT (Internet of things) Wireless Connectivity Standards Innovation Leadership Link: http://techipm-innovationfrontline.blogspot.com/2015/05/iot TechIPm IoT (Internet of Things) Intellectual Property (Patent) Strategy Consulting Services Link:http://www.techipm.com/alexdb/TechIPm%20IoT%20(Internet%20of%20Things)%20Intellectual%2 0Property%20(Patent)%20Strategy%20Consulting%20Services.pdf For more information, please contact Alex G. Lee at http://www.techipm.com/ Claim Setting: Degree to which different kind of commercially significant settings H(igh) in Claim Setting means higher in IoT (Internet of things) Wireless Connectivity Standards Innovation Leadership innovationfrontline.blogspot.com/2015/05/iot-internet-of-things-wireless.html TechIPm IoT (Internet of Things) Intellectual Property (Patent) Strategy Consulting Services http://www.techipm.com/alexdb/TechIPm%20IoT%20(Internet%20of%20Things)%20Intellectual%2 0Property%20(Patent)%20Strategy%20Consulting%20Services.pdf Alex G. Lee at alexglee@techipm.com H 25% L 24% 89 wireless.html TechIPm IoT (Internet of Things) Intellectual Property (Patent) Strategy Consulting Services http://www.techipm.com/alexdb/TechIPm%20IoT%20(Internet%20of%20Things)%20Intellectual%2 M 51%