Segment 1 Making Patents Work for Strategic Business Advantage Presentation at KAIST October 2010 Bruce D. Sunstein Sunstein Kann Murphy & Timbers LLP Boston www.sunsteinlaw.com ©2010 Sunstein Kann Murphy & Timbers LLP

Archimedes: “If you give me a lever of sufficient length and a fulcrum in the right place, I can move the world.”

Was Archimedes a Patent Lawyer? “If you give me a lever of sufficient length and a fulcrum in the right place, I can move the world.”

Knowing where to apply the leverage of patents— is critical to successful patent portfolio building cannot be done without awareness of business goals and knowledge of the competitive landscape

Patent Leverage

Our setting: Our company has a growing portfolio of technology With pending and issued patents How do we know What to file? When to file? When to license?

We should develop a patent portfolio on purpose! Not based on accident Not based on blind guessing Instead, based on a planned strategy, aimed at supporting defined business objectives

How to develop a patent portfolio on purpose Develop patent and business strategies that are aligned with each other, and Make the patent and business strategies appropriate to the competitive environment

Making the patent strategy fit business strategy Patent strategy must be aimed to protect existing and potential markets of the company Patent strategy and business strategy must inform each other Existing and potential markets that can be protected may depend on how well the company can develop technology in a particular area

What will the business look like five years from now? An application filed today defines what protection the business has five years from now What products and processes will the business be selling (and using)? What products and processes can we expect the competition to be selling and using? The answers to these questions go to the heart of the company’s business plan

What technology should we target to get our new products and services to market? The targeted technology defines our patent filing strategy We craft a filing strategy to cover our planned products and services as well as potential work-arounds by competitors

Patent filing strategy can inform the business plan Steer product development in directions that are ripe for patenting and technologically feasible Coordinate product development and introductions with patent filings

Patent strategy and business strategy can inform one another But only when the masterminds of each meet with one another Required are regular meetings of patent counsel and general counsel with heads of business development, marketing, and technology development

IP Portfolio Meetings Use a patent portfolio listing Place new inventions on it, and indicate timing for filing Place existing filings on it, with filing data, pertinent product lines, and status Review and update the listing in meetings, so the listing also becomes an agenda Have patent counsel update the listing between meetings

IP Portfolio Meetings (cont’d) Items on the portfolio listing can be adjusted in relation to the business strategy The business strategy can be adjusted in relation to items on the portfolio listing The adjustments must take into account competition, developments in the market, the technology, legal proceedings involving the portfolio and the company, and the budget

Patent Licensing and Litigation Can be addressed in the IP Portfolio meetings Licensing-in may be used expand the reach of the company’s portfolio, and may be needed for clearance purposes Licensing-out, a potential source of revenue from the portfolio Litigation, both patent assertion and defense, can be evaluated in the business and technology context

Strategic planning considerations: I

Strategic planning considerations: II

Strategic planning considerations: III

Making your patent strategy deal with the competition Learn what the competition is doing Develop an integrated view of the competition and the prior art Use the integrated view to inform the patent strategy

Learn about the competition SEC filings (esp. Form10-K): EDGAR filings on SEC website and e.g. www.secinfo.com (also Lexis, Westlaw) Competitor web sites & WWW generally Newspapers, trade journals Licensing authorities; e.g., FDA Orange Book, www.fda.gov/cder

Learn about the competition— Patent and Technology Searching www.uspto.gov, http://ep.espacenet.com (EPO website) Dialog (www.dialog.com), STN database of American Chemical Society (http://stnweb.cas.org), Micropatent (www.micropat.com), NIH: National Center for Biotechnology Information (www.ncbi.nlm.nih.gov)

Making your patent strategy deal with the competition Learn what the competition is doing √ Develop an integrated view of the competition and the prior art Use the integrated view to inform the patent strategy

Developing an integrated view Patent mapping can help Example: IPVision (www.ipvisioninc.com and http://see-the-forest.com) Specific map: base patent to Cipro® (ciprofloxacin) of Bayer Aktiengesellschaft Found in the Orange book, 4,670,444

The Patent Landscape Map Shows the Patent Landscape

The Patent Landscape Map Shows the Patent Landscape Patent Time Scale

Patent Time Scale

The Patent Landscape Map Shows the Patent Landscape Starting Patent

The Starting Patent

The Starting Patent Citation Lines

The Patent Landscape Map Shows the Patent Landscape Each patent to left of yellow starting patent is cited prior art

The Patent Landscape Map Shows the Patent Landscape Each patent to right of the yellow starting patent cites the starting patent as prior art

The Patent Landscape Map Shows the Patent Landscape Each blue tail to the left of each patent box indicates when the application for the patent was filed

The Patent Landscape Map Shows the Patent Landscape The map colors the patent boxes according to the name of the owner (assignee) of the patent

Patent Owners (Assignees)

The Patent Landscape Map Shows the Patent Landscape The map also lists all owners of the patents on the map

All patent owners (assignees and co-assignees)

The Patent Landscape Map Shows the Patent Landscape The map lists inventors shown on the patents in order of frequency of appearance

The Inventors

The Patent Landscape Map Shows the Patent Landscape The map lists classifications into which the mapped patents have been placed by the USPTO

Classifications into which the mapped patents have been placed by the USPTO

The Patent Landscape Map Shows the Patent Landscape Who (patent owners, inventors) obtained patent coverage When they filed When they obtained patent coverage But not a substitute for reading! Data can be developed manually, too

The Patent Landscape Map shows particular things in relation to the starting patent(s): Patents cited as prior art to the starting patent(s)—located to the left of the yellow starting patent

The Patent Landscape Map Shows the Patent Landscape Each patent to left of yellow starting patent is cited prior art

The Patent Landscape Map shows particular things in relation to the starting patent(s): Patents citing the starting patent(s) as prior art—located to the right of the yellow starting patent

The Patent Landscape Map Shows the Patent Landscape Each patent to right of the yellow starting patent cites the starting patent as prior art

The Patent Landscape Map shows particular things in relation to the starting patent(s): Patents cited as prior art to the starting patent(s)—located to the left of the yellow starting patent Patents citing the starting patent(s) as prior art—located to the right of the yellow starting patent

The Patent Landscape Map shows particular things in relation to the starting patent(s) Patents cited as prior art to the starting patent(s)—located to the left of the yellow starting patent Patents citing the starting patent(s) as prior art—located to the right of the yellow starting patent This map often serves as an excellent introduction to the subject area, and can give a feeling for the scope of the starting patents based on patents citing them and cited by them.

The Co-Citation Map Same starting patent Find all patents (“forward references”) that cite this patent Find all references cited by the forward references Some of these might be pertinent prior art, particularly if cited by a number of forward references

Map 2A Starting patent

One patent in the map cites much of the prior art to the starting patent and a lot more as well

What patent is this?

Patent 6261601 Assigned to Ranbaxy Laboratories Limited Licensed in by Bayer Indian publication Economic Times (August 15, 2002)

Patent mapping example 2: 3D imaging You want to learn about the state of the art relating to 3D imaging without special glasses You perform a search in the USPTO database for “autostereoscopic display” You get 331 patents

USPTO search results: 331 patents

Patent mapping example 2: 3D imaging What are you going to do with 331 patents? You do not want to look at all of these now, so you select the most recent 50 of them With those 50 you access IPVision on the web where you have an account and put them on a patent map

Patent mapping example 2: 3D imaging In the patent map, lines connect any patent that cites another patent When you have selected patents and put them on a map with these lines, you have what IPVision calls an “interconnection map”

Patent interconnection map for 50 3D imaging patents

The map shows 10 patents to Philips NV, 3 to Philips US, 6 to Samsung, etc.

Each patent box on the map (and on a pdf that can be generated from it) is live, and can give me patent information Mouse click on a box accesses that patent’s text, images, history, patent family

I can click to select patent information of interest for each patent on the map

Patent mapping example 2: 3D imaging I do not have to stop with an interconnection map I can look forward and backwards as well: Patents that cite these patents Patents that are cited by these patents (If map both forward and backwards citations, I have a landscape map, like our first example)

Patent mapping example 2: 3D imaging But we started with recent patents, and looking for forward citations may not yield much. So let’s look only for backwards citations For example, 47 of the recent patents and 63 recent patents cited by these patents

Patent map of 47 recent patents relating to “autostereoscopic display” and 63 recent prior art references cited by them

Of these 114 autostereoscopic display patents, who are the major patent owners?

I can find and click on the blue boxes to read the patents owned by Samsung

Licensing Opportunity Analysis Map for Company A Company A’s Patents Company 3

Uses of patent maps To assess quickly a large patent portfolio To understand relative patent positions of a number of companies in a technological area of interest To identify prior art that might be invalidating

So when might I use patent maps? Evaluation of one or more competitors In relation to developing and managing my own company’s portfolio and product development In relation to defensive strategies for my company Evaluation of a company targeted for acquisition Evaluation of prior art before filing a new patent application Finding and evaluating patents to be licensed in and identifying companies to take licenses out Defending against patents asserted in negotiations or litigation

Making your patent strategy deal with the competition Learn what the competition is doing √ Develop an integrated view of the competition and the prior art √ Use the integrated view to inform the patent strategy

Using the integrated view to inform the patent strategy Must reflect the technical and market position and goals of the company Use regular, joint meetings to tune the IP Portfolio: Patent counsel General Counsel Marketing head Technology head Business development head

IP Strategy Sessions Share information and insights Develop and refine goals Review position of company in relation to competition and company goals Agree on filings and budget consistent with these goals and the competitive context

Your patent strategy serves your business strategy and provides business leverage You know what the competition is doing You have an integrated view of the competition and the prior art The integrated view informs the patent strategy and the business strategy

Thank you.