Rockstar Consortium US LP et al v. Google Inc

Filing 33

RESPONSE to Motion re 18 MOTION to Change Venue filed by NetStar Technologies LLC, Rockstar Consortium US LP. (Attachments: # 1 Declaration of Donald Powers, # 2 Declaration of Mark Hearn, # 3 Declaration of Kristin Malone, # 4 Exhibit 1 to Decl. of K. Malone, # 5 Exhibit 2 to Decl. of K. Malone, # 6 Exhibit 3 to Decl. of K. Malone, # 7 Exhibit 4 to Decl. of K. Malone, # 8 Exhibit 5 to Decl. of K. Malone, # 9 Exhibit 6 to Decl. of K. Malone, # 10 Exhibit 7 to Decl. of K. Malone, # 11 Exhibit 8 to Decl. of K. Malone, # 12 Exhibit 9 to Decl. of K. Malone, # 13 Exhibit 10 to Decl. of K. Malone, # 14 Exhibit 11 to Decl. of K. Malone, # 15 Exhibit 12 to Decl. of K. Malone, # 16 Exhibit 13 to Decl. of K. Malone, # 17 Exhibit 14 to Decl. of K. Malone, # 18 Exhibit 15 to Decl. of K. Malone, # 19 Text of Proposed Order)(Nelson, Justin)

EXHIBIT 2

IAM 50 Cover_print_Update 3 23/09/2011 17:05 Page 2

Issue 50 November/December 2011

Intellectual Asset Management Magazine
www.iam-magazine.com

Reputation blunders that damaged HP and Yahoo!
How the Nortel auction changed everything
The obstacles on the path to IP’s promised land
Why your business suffers when women walk out
Patent opportunities for savvy VCs identified

The players
As we hit 50, we name the individuals, companies
and institutions that have framed the IAM years

IAM_50 Paginated - 1 23/09/2011 18:41 Page 29

Market makers

50 for 50

1
6

7

11

12

15
20

3

4

5

8

2

9

10

As IAM celebrates its 50th issue, we
name 50 of the people, companies
and institutions, as well as a few
other things, that have helped form
the market on which we have been
reporting for the last eight years

19

By Jane Denny, Jack Ellis and Joff Wild

13

14

16
21

17

22

23

18

24

Cover index
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
11.
12.
13.
14.
15.
16.
17.
18.
19.
20.
21.
22.
23.
24.

Dan McCurdy, AST and PatentFreedom
David Kappos, Director, USPTO
Tux, the Linux penguin
Béatrix de Russé, Technicolor
Tian Lipu, Commissioner, Chinese State IP Office
John Desmarais, Round Rock Research
Damon Matteo, Palo Alto Research Center
Steve Jobs, Apple
Irwin Jacobs, Qualcomm
Carl Horton, GE
Kevin Rivette, 3LP
Kasim Alfalahi, Ericsson
Ian Harvey, IP Institute
Todd Dickinson, AIPLA
Joe Beyers, Ambature, ex-HP
Marshall Phelps, ex-Microsoft and IBM
Michelle Lee, Google
Richard Lutton, ex-Apple.
Photo courtesy of The IP Owners Association
Florian Mueller
Sherry Knowles, Knowles IP Strategies, ex-GSK
Scott Frank, AT&T
James Malackowski, OceanTomo
Peter Holden, Coller Capital
Tim Crean, SAP

www.iam-magazine.com

Issue one of IAM magazine was published in
July 2003. Our cover story focused on the
commercialisation of university intellectual
property and we were fortunate enough to
secure an exclusive interview with Sir
Richard Sykes. He had recently stepped down
as chairman of GlaxoSmithKline to become
the full-time rector of Imperial College,
London, one of the world’s leading science
and engineering universities. As well as
talking about his plans for Imperial, Sykes
told us: “We must get away from the myth
that all universities in the US are top at
technology transfer. There are a few who
have established excellent track records and
many others that have not.” They are words
that still ring true today.
That first issue of IAM was just 36 pages
long and was distributed to around 200
people who had expressed an interest in
seeing it. Back then, issue 50 seemed a long
way off. Thankfully, however, many of those
200 liked what they read enough to take out
a subscription. More were attracted by issue
two, which featured another exclusive – this
time an interview with Marshall Phelps, who
had just joined Microsoft as vice president of
IP. “If you had asked me 90 days ago about
the places I was least likely to be, this would
have been in the top 10. But here I am,” he
told us, before going on to outline his plans.
“I see Microsoft trying to be much more
outward facing and mature. I would say that
Microsoft recognises it needs to play better
with others – and we’re working very hard
towards that,” he said. “It’s a sceptical world

out there, and that is OK. But this change is
going to take place. At this stage of my life,
there’s no point in me banging my head
against a wall and trying to make something
out of nothing. I am here because I know the
people who run this business see the world
as I do.” We now know, of course, that Phelps
delivered on his promise.
The positive reaction and the
subscription revenue we received from our
opening issues allowed us to carry on and
build a business. Over the last eight years,
the magazine that was created because we
believed that intellectual property was in
the process of becoming a major corporate
asset and no one else was reporting this fact
has grown into a publication with over
2,000 subscribers, a range of spin-off
publications and one rather large event –
the IP Business Congress. We were lucky
enough to launch at exactly the right time:
Phelps had moved to Microsoft; Intellectual
Ventures was getting busy and nonpractising entities (NPEs) were generally on
the rise in the United States; the chief IP
officer (CIPO) role was grabbing attention;
intellectual property was becoming a
political hot potato in Europe; while over in
China, the first rumblings were being heard
from what was about to become a patent
superpower. All this and more we have
covered in the magazine and on the IAM
blog, which was launched in 2006.
Since 2003, many individuals,
companies, institutions and assorted ideas
and entities have helped to shape the world
that IAM has reported on. To celebrate our
50th issue, over the following pages we
profile 50 of them. It’s not a ranking; it’s
not an objective list; the aim is to provide a
series of snapshots of what we are all about.
Finally, a word of thanks: without the
loyalty of our subscribers IAM would not be
where it is today. You truly are the lifeblood of all that we do and we are so
grateful for your support. Here’s to the next
50 issues; and here’s that list.

Intellectual Asset Management November/December 2011 29

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Market makers

Front cover of the first ever issue of IAM
published in July 2003

IP strategy that it lacked for so long –  a fact
that contributed towards the company
having to spend billions of dollars in
licensing fees. During his tenure as
Samsung’s head of IP, Ahn has sought to
regularise the company’s IP position and has
overseen major agreements with the likes of
Nanosys, Spansion, Intellectual Ventures
and, most notably, IBM in what has been
described as the biggest cross-licensing deal
of all time. In addition, the company is now
the number two recipient of US patent grants
behind Big Blue. Ahn continues to face major
challenges, however, not least of which are
the smartphone patent wars and Samsung’s
involvement in them.

Acacia
In the autumn of 2008 Acacia – one of the
few NPEs whose shares are publicly traded –
had a NASDAQ market capitalisation of
around US$90 million. Today, the figure
stands at close to US$2 billion. In February
2010, when the NPE had a valuation of
US$280 million, CEO Paul Ryan announced
that growing “interest from technology
companies, universities and research centres
wanting to partner with us” as well as a slew
,
of deals with larger businesses, meant that
collaboration with IP owners would form the
bedrock of Acacia’s future, as they left it to
the firm to do their licensing work for them.
There were also opportunities, he said, in

working closely with defensive patent
aggregators. Ryan and Acacia have
subsequently delivered on these words and,
in so doing, have demonstrated that far from
being bitter enemies, NPEs and operating
companies can and do work together
frequently to their mutual benefit.
Seung-Ho Ahn
Executive vice president and head of
corporate IP centre at Samsung
With overall responsibility for handling
patent prosecution and litigation at
Samsung, as well as technology licensing,
Seung-Ho Ahn is always busy. Under Ahn,
Samsung has begun to develop the effective

30 Intellectual Asset Management November/December 2011

Kasim Alfalahi
Chief IP officer and vice president at
Ericsson
Kasim Alfalahi is something of a rarity
among CIPOs; he is not a lawyer. Some
might see this as a hindrance, but Alfalahi’s
success since he took over Ericsson’s IP
department in 2005 would suggest
otherwise. He created an IP board, made up
of Ericsson’s chief technology officer and
business unit leaders, which he reports to
and, in turn, board members report to
Ericsson’s CEO. By restructuring the IP
department in this way, Alfalahi has been
able to put intellectual property at the centre
of Ericsson’s business, turning it into a
revenue generator. Ericsson is now a major IP
deal-making force, as evidenced by its recent
success at the Nortel patent auction. How
did he do it? As IAM noted in Issue 46:
“Alfalahi’s business background… means that
he’s not deficient in one of the skills that IP
professionals are often accused of lacking: he
speaks the language of the C-suite.”
Association of University
Technology Managers
University technology licensing offices have
often been accused of being bound in red
tape, unrealistic in negotiations and
generally stuck in a stubborn academic
mindset. In the years since it was
established, the Association of University
Technology Managers (AUTM) has done
much to educate universities in how to
understand the potential commercial value
www.iam-magazine.com

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Market makers

Issue 10 of the magazine, the first with an
illustrated front cover

of their intellectual property, how to engage
effectively with the business world and how
to maximise the return they get from their
intellectual property. It has also served as a
highly effective advocate of the value of
university technology transfer in the wider
world, especially in its defence of the BayhDole Act. Consequently, in only a few years
AUTM’s membership has grown, so that it
is now generally regarded as the world’s
foremost organisation for university IP
managers. It will continue to play a vital
educational and advocacy role in the years
to come.
Joe Beyers
Former vice president of IP licensing at
Hewlett Packard
CIPOs with a non-legal background are often
cited as the new breed. Joe Beyers is one of
the primary examples. An engineer by
training, he rose up through the IP ranks at
Hewlett Packard (HP) via its technology and
business units, rather than its legal
department. Beyers was at the heart of the
decision-making process at HP and showed
that you do not need to know the law
backwards to create value from intellectual
property by increasing IP-related revenues
tenfold. Interviewed in 2007, Beyers
explained that, in his role at HP, he had
reviewed 5,000 pending transactions. He said
that 50% of them were revised because the IP
angle had not been properly thought through:
the rights concerned, he stated, had been
undervalued, neglected or otherwise
improperly construed. Now CEO and
president of Ambature, a green-tech start-up,
Beyers continues to put intellectual property
at the centre of his business thinking.
Centre for Intellectual Property,
Gothenburg
If IP and other intellectual assets are ever to
play a central role in strategic decision
making at a senior corporate level, there
must be more widespread recognition that
such assets are important. One of the ways
that this will happen is for intellectual
property to be taught in tertiary education
outside of the law schools. The Centre for
Intellectual Property (CIP) based in
Gothenburg, Sweden, has been blazing a trail
www.iam-magazine.com

in this area for a number of years.
Postgraduate students from all kinds of
discipline can study IP creation and
management and how it links into
intellectual capital and intellectual asset
management and the innovation process, and
can gain experience through industry
placements. Those that take CIP’s courses
come out the other end with a wide range of
highly marketable skill sets. In addition, the
CIP Forums, held every two years, have
become must-attend events for all those
interested in the nexus between innovation,
intellectual property and intellectual capital,
and economic growth. It’s not often that
Europe can claim IP thought-leadership

status; CIP is a shining exception.
Competition Directorate General,
European Commission
EU member states have been trying and
failing for well over a decade now to create a
single patent right and litigation system.
Elsewhere, there has been more success: the
Office for Harmonisation in the Internal
Market, for example, has been granting
Community trademarks since the 1990s. But
perhaps the European Union’s most
significant contribution has been in
competition law. Over the years, the
commission’s Competition Directorate
General has regularly sought to intervene in

Intellectual Asset Management November/December 2011 31

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Market makers

Issue 2, exclusive interview with new Microsoft VP of IP, Marshall Phelps

the way that companies use their intellectual
property. Microsoft was one high-profile
victim, while the pharmaceutical industry’s
use of patents is regularly monitored. In
2007 the Financial Times referred to the
European Commission as the world’s “global
technology watchdog” It continued: “It has
.
taken a more combative approach than US
regulators in recent years. The European
market is so important – technology
companies clearly have to do business there.
And the global nature of the industry means
decisions in Europe have ramifications for
products around the world.”
Covenants not to sue
After acquiring the OceanTomo auctions
business in June 2009, ICAP very quickly
learned that the appetite for them was not
what it had been. A series of sales generated
little in the way of income and some even
questioned their ongoing viability. However,
Dean Becker – who came over to ICAP as
part of the deal with OceanTomo – was not
deterred. Instead, he hit on an idea: rather
than offer intellectual property for sale, why
not offer covenants not to sue? For an
auction in New York in March, he persuaded
NPE Round Rock to put up a number of
covenants not to sue covering patents in the
portfolio it had recently acquired from
Micron. Many attracted high bids; one of
them went for US$35 million. A new and
potentially game-changing transaction
option was born.

Tim Crean
CIPO at SAP AG
Head of the IP arm of one of the world’s
largest independent software providers,
Crean has practised his “integration of IP
strategy, business strategy and financial
resources” mantra there since 2006. He is
responsible for SAP’s public policy,
procurement and licensing, as well as its
litigation in IP matters. Crean reports
directly to SAP’s German-based CEO and in
the past has described his CIPO role as one
that has four main elements: defending
existing market positions; accelerating new
products into the market; creating new
relationships; and helping to ensure that
industry standards are set in way that
benefits SAP. In addition, Crean plays a
prominent IP policy role and was recently
closely involved in the lobbying efforts
around patent reform in the United States.
Béatrix de Russé
Executive vice president of intellectual
property and licensing at Technicolor
Béatrix de Russé always understood the
strategic importance of Technicolor’s IP
portfolio. The issue was helping her bosses
to understand it too. After the company, then
called Thomson Multimedia, went public in
1999, its financial results became subject to
much wider and more in-depth scrutiny. The
executive board began to realise that
licensing revenues were key to those results.
De Russé secured their backing to develop an

32 Intellectual Asset Management November/December 2011

Joe Beyers, HP’s director of licensing, on
the front cover of issue 13

IP strategy. To achieve this, she engaged with
the C-suite and all business units
throughout the organisation. As she puts it:
“I had to be the IP advocate at all levels of the
company – and still am.” Today, Technicolor
makes around €400 million in licensing
revenues each year and de Russé is one of the
few CIPOs who is actually a member of her
company’s executive committee. This allows
her to report directly to the CEO and
chairman, and has kept IP awareness right at
the heart of the business.
John Desmarais
President of Round Rock Research
and partner at Desmarais LLP
In 2009 renowned IP litigator John
Desmarais set up patent holding company
Round Rock Research. It subsequently
purchased around 4,500 patents from his
former client Micron. Desmarais and Round
Rock embarked on an assertion campaign,
resulting in numerous big-money licensing
deals. In so doing, Round Rock established
itself as one of a new breed of NPE: the
patent privateers, organisations which take
ownership or a licence on intellectual
property owned by another party and
essentially litigate it on its behalf.
Desmarais later confirmed that it had been
Micron’s idea to monetise its patents by
selling them, and that the company had
persuaded him to take them off its hands.
The details of the deal remain known only
to those directly involved in it. Up to now,
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Market makers

IV’s Detkin and Myhrvold take the cover for
issue 19

Issue 26 looked at IP securitisation in the 10 years since the issue of the Bowie Bond

Micron has not formally informed its
shareholders of the deal’s existence or how
much money it has generated for the
company, but rumour has it that the sums
run into the hundreds of millions.

William Elkington
Senior director of strategic technology
at Rockwell Collins
When Bill Elkington became head of
intellectual property at Rockwell Collins in
2003, the company was already a prolific
licensor with an IP strategy focused on doing
deals with parties outside of the market it
served. But Elkington felt that Rockwell
Collins was missing a trick by neglecting
thorough IP diligence on deals and failing to
notice the untapped value of out-licensing
within its market. Elkington set up the IP
value capture team to assess IP awareness
throughout the selling and deal-making
units of the company. It discovered much
room for improvement and, having
convinced the executive board of the need
for a revised strategy, overhauled the
company’s IP function. By working closely
with the business units to manage and
evaluate the company’s intellectual property,
Elkington and his team have made the
structuring of complex licence agreements
part of Rockwell Collins’ everyday business.

Q Todd Dickinson
Former US Patent and Trademark Office
director, partner of Howrey, CIPO and
vice president of General Electric and
current executive director of the
American Intellectual Property Law
Association
Todd Dickinson may just be unique in the
world of intellectual property. It’s difficult
to think of anyone else who has run one of
the trilateral patent authorities, been
managing partner of the IP practice of a
major international law firm, been in charge
of intellectual property at a Fortune 100
company and then moved to the senior
management position in one of the world’s
most important representative IP
organisations. For that reason alone,
Dickinson qualified for the 50. But he has
also made a significant difference in the
jobs he has held. Most recently, as executive
director of the American Intellectual
Property Law Association, Dickinson has
been a powerful advocate for US IP
professionals in both Congress and the
federal government. His political nous
and contacts served the association well
as patent reform was debated in the
legislature.
www.iam-magazine.com

Scott Frank
President and CEO at AT&T
Intellectual Property
During his eight years as head of intellectual
property at Bell South, Scott Frank helped to
turn the company into an IP powerhouse,
building its licensing programme to the
extent that by the time the company’s
acquisition by AT&T was announced, his

team had done hundreds of transactional
deals covering all types of intellectual
property, adding hundreds of millions of
dollars to Bell South’s bottom line. In fact
Frank, who started his professional life as an
electrical engineer and a computer systems
analyst before retraining as a lawyer, was so
successful that following the merger, he was
made president of AT&T Intellectual
Property. Among other things, these days he
is responsible for managing the telecom
company’s portfolio of 9,000 patents and
handling IP licensing and sales operations.
Frank is one of the new breed of CIPOs
whose role is to look beyond risk
management and into value creation.
Horacio Gutierrez
Corporate vice president of IP and
deputy general counsel at Microsoft
Stepping into the shoes of Marshall Phelps at
Microsoft and continuing the game-changing
strategy he put in place was never going to be
easy. And it fell to Horacio Gutierrez to do it
when he became head of intellectual property
at the company. As his colleague Tom Rubin
put it: “Marshall came in and tore down the
old building and poured a new foundation.
Horacio is the guy who rolled up his sleeves
and built a very successful IP programme
on… that foundation.” Devoted to turning
Microsoft’s new IP vision into ever more
tangible returns, Gutierrez has led the
corporation into some of its most significant
licensing deals and IP acquisitions. The

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Market makers

The world’s 50 most valuable brands in 2009 revealed by BrandFinance in an article in issue 35

importance of communication to IP success,
both inside and outside of his organisation,
is not lost on Gutierrez either. He has set up
teams within Microsoft’s IP department to
engage in key debates and promote crossindustry cooperation for the sake of
innovation –  and for the sake of Microsoft,
of course.
Ian Harvey
Chairman of the Intellectual
Property Institute
Ian Harvey was the CEO of BTG plc for
almost 20 years until 2004. During that
time, he was a pivotal figure in the 1992
privatisation of the-then British Technology
Group, which had originally been formed in
1981 as a result of the merger of two stateowned organisations –  the National
Research and Development Council and the
National Enterprise Board. Following
privatisation, BTG subsequently floated on

the London Stock Exchange and, under
Harvey’s leadership, expanded its IP-based
operations internationally. Throughout his
time at BTG, Harvey was a vocal advocate of
the importance of integrating intellectual
property into mainstream business strategy
–  something that, regrettably, made him
unusual, to say the least, among UK and
European CEOs. Since leaving BTG, Harvey
has continued his IP advocacy work at the
London-based IP Institute. He has also been
heavily involved in the developing IP
infrastructure within China. “I am struck in
China by how much further they have
progressed in being aware and respectful of
Intellectual property than is commonly
realised,” he says.
Peter Holden
Head of the IP investment group at
Coller Capital Inc
Patents are now beginning to attract the

34 Intellectual Asset Management November/December 2011

attention of the financial world, but it was
not always like that. At a time when most in
the capital markets would run a mile from
intellectual property, Peter Holden was
doing deals. He spent time at Panasonic in
Japan and IP Value in Silicon Valley before
establishing IP-based venture fund Invisible
Hand. He joined Coller Capital in 2006 and
now runs the firm’s IP practice. During all
that time he has been involved in
transactions that have generated income of
over US$1 billion. Holden continues to
explore and implement new investment
models and structures for leveraging
intellectual property as a financial asset.
“The secondary marketplace for patent
sales (uncorrelated) will reach US$2.4
billion in 2011… and is likely to grow at a
compounded rate of 20% to 30% or more
a year for the next few years,” he wrote
in an article for IAM magazine earlier
this year.
www.iam-magazine.com

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Market makers

The results of the first IAM/Thomson Reuters IP benchmarking survey were published in issue 42

Carl Horton
Chief IP counsel at GE
Carl B Horton has served GE’s IP interests
almost from boy to man, so his appointment
to the role of chief IP counsel in 2007 was
probably written in the stars. What may not
have been so obvious was how he would
champion the IP agenda in the lead-up to
the United Nations’ 2009 summit on
climate change in Copenhagen. In fact, no
company was more prominent in making the
pro-IP case than GE; and Horton was at the
forefront of its efforts. Prior to the summit,
Horton warned: “If the IP community
doesn’t want [this] meeting to result in
compulsory licensing of green technologies,
it’s time that it took a stand. Innovation is
what will drive down the price point of
green-tech –  something that is critical if we
are to achieve widespread adoption of
climate-saving technologies. And without
IP, where’s the incentive to innovate?”
www.iam-magazine.com

Horton is a forceful IP advocate both in and
outside his company, and is yet another
example of how the CIPO role has had to
change over recent years.
IBM
Everyone knows the story of how IBM
discovered the latent value in its patent
portfolio and became a licensing superpower.
What Big Blue achieved alerted many others
as to what can be done with intellectual
property and so set us on the path to where
we are today. Although the company
continues to have a strong IP transactions
focus, it does not generate the income it
once did. But patents and other forms of
intellectual property remain profoundly
important. IBM continues to rank as the
number one recipient of US patent grants
each year and now sees its portfolio as a
source of protection for open source –  not
least because it has embraced it as a

significant profit point. The company was
also a prime mover in the development of
peer-to-patent, the patent quality initiative
that started at the US Patent and Trademark
Office (USPTO) and continues to expand
internationally.
Intellectual Ventures
Develop an extensive portfolio of patents and
license it out to operating companies: that is
the business model that underpins
Intellectual Ventures (IV), the seminal NPE
and one with a huge portfolio of US patents.
IV bills itself as a protector of small-time
inventors and a leading sponsor of
innovation. Others view it as a troll,
amassing patents with the intent not to use
them productively, but instead to assert
them for financial gain. However, this
ignores the fact that IV has invested a
significant proportion of the US$2 billion it
has raised since it started in 2000 on

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Market makers

BellSouth’s IP team on the cover of issue 21,
featuring Scott Frank (right)

importance. These days, they are managing
partners of 3LP, which they founded with
Kevin Rivette.
Irwin Jacobs
Former CEO and chairman at Qualcomm
As an electrical engineer, Irwin Jacobs knows
a useful (and therefore valuable) piece of
technology when he sees it. Code division
multiple access technologies developed by
Qualcomm, the company he founded in 1985
and headed until 2005, form the basis of the
current generation of 3G wireless devices.
Licensing streams from these key patents
now account for around one-third of
Qualcomm’s revenue. That income has been
a significant source of funding for
Qualcomm’s research and development
activities. As a CEO who knew the value of
his company’s IP, Jacobs strategised
accordingly and, through a series of
longsighted acquisitions and licensing deals,
ensured Qualcomm’s commanding spot in
the marketplace today. Qualcomm is in many
ways a blueprint for more recent players on
the high-tech scene to follow; it is a
company which put IP strategy at the very
core of its business alongside research and
development, with truly impressive results.

research activities that have started to win
recognition, as well as generating further
patents. But whether you like or loathe IV –
and everyone seems to have an opinion –
there is no denying that it has been a major
catalyst in changing the market for patent
rights forever.
The Invisible Edge, by Mark Blaxill
and Ralph Eckardt
At a time when the efficacy of patents and
other forms of IP as levers of business
success and growth was being questioned,
Mark Blaxill and Ralph Eckardt produced a
tour de force of a book that took the

detractors head-on. Published in 2009, The
Invisible Edge: Taking Your Strategy to the Next
Level Using Intellectual Property, remains a
compelling defence of patents and a call to
arms for the political and corporate world to
embrace the potential that they offer.
Anyone who cares about intellectual
property as a business asset should read it.
What makes the book all the more
significant is that Blaxill and Eckardt were
not from the IP world when they wrote it.
Instead, they had worked in mainstream
business consultancy for many years. It was
their experiences during this time that
convinced them of intellectual property’s

36 Intellectual Asset Management November/December 2011

Steve Jobs
Apple founder and former CEO
Equally revered and feared as a mercurial,
egomaniacal micromanager, the simplest
thing to say about Steve Jobs is that he
performed the job of Apple CEO so well that
the company emerged as one of the world’s
most valuable. Jobs integrated intellectual
property into every aspect of the Apple
business and in many ways acted as the
company’s CIPO himself. He is that great
corporate rarity – a CEO who gets
intellectual property and understands how it
can be used to create corporate value.
Without Jobs’ IP vision, Apple would not be
the company it is today. Competitors – large
and small – may not have liked his methods,
but they were extraordinarily effective.
Creating Apple once would have been
regarded as revolutionary, but to have created
the company twice marks Jobs out as an icon.
His inclusion among the inventors listed for
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Market makers

The first Laurie and Sterne CIPO article
appeared in issue 25 of the magazine

more than 300 Apple patents stands
testament to his attention to detail and
engineer’s vision.
David Kappos
USPTO director and former vice
president/assistant general counsel for
intellectual property at IBM
David Kappos ushered in a new era of
cooperation and collaboration between the
USPTO and its user community when he
took over the helm of the agency in 2009.
After a difficult period under two directors
who had no real background in intellectual
property, Kappos marked a return to the old
practice of appointing individuals with deep
IP experience to the role. As former head of
intellectual property at IBM, Kappos already
knew the challenges that the USPTO faced,
both at home and internationally, while also
understanding the frustrations of applicants
who deal with it. In the two years since his
appointment, and despite severe budgetary
constraints, Kappos has begun to tackle the
USPTO’s huge patent backlog, as well as the
issue of the quality of patents issued. He has
also found time to champion legislative
patent reform – although, unlike his other
initiatives, this has proved contentious, to
say the least.
Sherry Knowles
Former chief patent counsel and senior
vice president at GlaxoSmithKline,
current principal at Knowles Intellectual
Property Strategies
Now running her own IP consultancy, when
Sherry Knowles was at GlaxoSmithKline
(GSK) she won friends across the US patent
community when she successfully
spearheaded a legal challenge to the USPTO’s
plans to revise its claims and continuations
rules. In a federal court case, GSK obtained
an injunction to halt the implementation of
the rules, which were subsequently
withdrawn by new USPTO Director David
Kappos. The following year, Knowles was
battling the EU Competition Directorate
General, which had been preparing a report
attacking patent use in the pharmaceutical
industry. She led efforts to get the watchdog
to recognise the central role of IP rights
www.iam-magazine.com

ownership to innovation – which it duly did
when it released its report. Now back in
private practice, Knowles has a compelling
strategic overview of IP in the life sciences
industries and how the sector needs to adapt
to new realities.
Laurie and Sterne
Champions of the CIPO role
Ron Laurie, who runs IP investment bank
Inflexion Point Strategy, and Rob Sterne, a
founding partner of IP boutique Sterne
Kessler Goldstein Fox, are both major figures
in their respective fields. Together they have
worked tirelessly to champion the role of the
CIPO –  a senior position that they believe is

integral to maximising corporate IP value. In
a series of papers and conference
presentations, Laurie and Sterne were among
the first to explain that the CIPO role is far
removed from that of the traditional inhouse IP counsel; instead, it involves overall
responsibility for how IP assets are created,
managed and exploited in all areas –  from
prosecution through licensing and other
forms of monetisation to compliance, tax
and M&A. As intellectual property is a vital
business asset, they argue, it needs to be
overseen by someone who understands how
it works and how it fits into overall corporate
strategy to create lasting benefits. A growing
number of people agree with them.

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Market makers

Ruud Peters, CEO of Philips IP & Standards,
issue 28

bottom line and how intellectual property
can be used to enhance it. Although licensing
is at the heart of what the society does, and
licensing best practices are its major concern,
its members have also led the way in
discussing and promulgating other forms of
value creation. IAM attended its first LES
USA and Canada annual get-together in San
Diego in 2003 and immediately felt at home.
We’ll be back in the southern Californian
city again this October for 2011’s meeting,
and we will proudly be there as the LES’s
official strategic media partner.
Life sciences industries
Patents and brands are at the very heart of
what the pharmaceutical and biotechnology
industries are all about. It’s virtually
impossible to get to the top in any company
that operates in these sectors without a
thorough understanding of intellectual
property. In many ways, therefore, the life
sciences were ahead of the IP curve.
However, this is not to say that they have
always got everything right. Controversies
over access to medicine in the developing
world and competition investigations in the
developed world have often put businesses
on the back foot. The expense of R&D,
meanwhile, has led to the development of
new collaborative models of discovery,
development and roll-out. As patent cliffs
grow higher and more dangerous to fall off,
more IP-related creative thinking will be
needed in the future.
Michelle Lee
Head of patents and patent strategy and
deputy general counsel at Google
As Google’s head of patent strategy since
2006, Michelle Lee has often faced an uphill
battle to convince senior management at the
company to understand the importance of
developing and then implementing a fully
integrated, long-term patent plan. Now, it
seems, reality has hit home in Mountain
View, as the patent problems facing the
Android platform across the world have
become increasingly clear. As a result, Lee’s
team is growing in size and is getting busy.
Although Google was unsuccessful in its
attempts to buy the Nortel patent portfolio,

it made a string of acquisitions both before
and after that auction took place. The
proposed purchase of Motorola Mobility will
see the portfolio of US patents available to
Google rise to over 20,000. Just 12 months
ago, that figure stood at under 1,000. Lee has
done a great job of keeping Google in the
game. Now she and her team may just have a
few more tools at their disposal.
Licensing Executives Society
While most other IP representative
organisations have focused on the law, the
Licensing Executives Society (LES) – and its
USA and Canada operation in particular –
has been much more concerned about the

38 Intellectual Asset Management November/December 2011

Richard Lutton
Former chief patent counsel at
Apple Computer Inc
The 563 patents granted to Apple last year
will undoubtedly fuel Cupertino’s ambition
to define 21st century technology while
strengthening its litigation muscle to protect
it. For the past decade its chief patent
counsel, Richard Lutton, was pivotal to that
key process by managing and protecting the
portfolio of 15,000 patents that, among
other things, underpin the iPod, iPhone and
iPad; as well as helping to negotiate the deals
providing Apple access to the patents that it
does not control. Lutton was a central figure
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Market makers

Patent Failure, by James Bessen and Michael
Meurer, was debated in issue 32 (left); Horacio
Gutierrez and his Microsoft IP team were
profiled in issue 36

in much of Apple’s most recent patentrelated activity, which included the groundbreaking Nortel patent grab and various
high-profile smartphone and tablet-related
litigations in various parts of the world. In
July, and to a great deal of surprise, Lutton
announced that he was standing down from
his role. In 2009 he told IAM: “Patents are
the currency of innovation that permit
innovators to validate, exploit, deploy and
exchange their ideas in commerce.” The IP
community awaits news of his next
engagement.
James Malackowski
CEO of OceanTomo
The driving force behind OceanTomo and a
pivotal figure in IP’s move towards the
business and financial mainstream,
Malackowski may have fallen out with some
of his erstwhile senior colleagues, but his
drive, passion and vision are unsurpassed.
With a background in economics,
Malackowski has a formidable track record as
an expert witness; however, he has always
operated well beyond that area of
specialisation and continues to position
OceanTomo on the cutting edge of
developments –  IPXI, a proposed IP rights
trading exchange, being the latest example of
this. Look out too for the Global Technology
Impact Forum, which Malackowski is
spearheading in his role as the current
president of the LES International. Due to be
held next January, it is being described as the
“largest gathering of the world’s leading nongovernmental organisations addressing the
promotion of intellectual property licensing
and technology transfer for the betterment
of mankind”
.
Damon Matteo
Vice president and chief intellectual
property officer at the Palo Alto
Research Center
A strategic thinker and risk taker, Damon
Matteo joined the Palo Alto Research Center
(PARC) as vice president and CIPO just as
the company was spun out of Xerox. Today,
PARC is a beacon of both IP
commercialisation and technological
www.iam-magazine.com

innovation, thanks to what Matteo described
in a recent IAM interview as its IP hub’s
“cradle to grave” approach to development.
“We help lay the groundwork,” he said. “We
identify where there is a crowded space and
where there is an opportunity.” For Matteo,
who reports direct to PARC’s CEO, these
opportunities include creating new
companies based on PARC-developed
intellectual property, doing licensing deals
and conducting sales. He has done, he says,
many deals in excess of US$100 million. “I
can’t overemphasise the fact that experience
with all the people who you are going to be
metaphorically sitting across the table from,
knowing them from the inside, is an
invaluable strategic tool, because it helps
identify the opportunities and realise them,
as well as spot the obstacles and avoid them,”
Matteo told this magazine in June.
Dan McCurdy
Chairman of PatentFreedom and CEO
of Allied Security Trust
After senior in-house IP management roles
at IBM and Lucent, Dan McCurdy helped to
establish ThinkFire, a consultancy that,
among other things, provides strategic IP
management device, brokering services and
damages opinions. McCurdy was the firm’s
CEO from 2001 to 2007. He left to found
online NPE information service
PatentFreedom and subsequently became the
CEO of Allied Security Trust, the defensive
patent aggregator which counts Ericsson,
IBM, Philips and Intel among its members.
His roles at PatentFreedom and AST mean
that he is on the frontline in the struggle

between operating companies and NPEs; this
may explain his frequent criticisms of the
NPE business model, which he believes is
highly damaging.
Microsoft
There is a strong case for saying that, pound
for pound, Microsoft has the world’s most
valuable IP portfolio. It possesses a brand
that has been estimated at US$40 billion;
while on the patent front it has concluded
hundreds of licensing deals over recent years
that have generated income for the company
as well as freedom to operate. On top of this,
the company is now a permanent feature in
the top five of annual US patent recipients
and has built a portfolio which is
consistently rated as among the best in class.
There are no rankings when it comes to
copyrights, but it goes without saying that
these underpin Microsoft’s very existence.
Intellectual property is integrated into
everything that the company does and, most
important of all, everyone at Microsoft
understands the role that intellectual
property plays in the company’s success. It is
an example to follow.
Florian Mueller
Former anti-patent activist, now
patent commentator
Florian Mueller was the highly eloquent
public face of the campaign which fought
tirelessly, passionately, often disingenuously
and ultimately successfully against the
proposed EU Computer Implemented
Inventions Directive (CII). Mueller’s ability
to frame accessible and comprehensible

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Market makers

BP’s reputational disaster after the gulf oil spill
was the front cover news for issue 43

arrangements to such entities, even taking
stakes in companies in lieu of direct
payment. It has made him a very rich man
and won him any number of enemies. While
Niro may not be to everyone’s taste, he
blazed what has become a well-trodden trail
and in so doing helped to change the way
that patents are viewed and used –  no small
achievement.
NPEs in Europe
Think NPEs and you think of the United
States. The costs of litigation, plus the
potential for high awards, make it fertile
territory. However, there are aspects of the
litigation system in some European countries
that also make it possible for a certain type
of NPE to function, and there are a few that
do – such as the likes of IPCom, Papst
Licensing and Sisvel. Laws concerning the
seizure of allegedly infringing goods have
been used to leverage licensing agreements,
as has the availability of injunctions. As
opposed to US practice after the eBay
decision, in Germany, for example, courts
will almost always issue an injunction to the
winning plaintiff in a patent suit, regardless
of whether it practises on the patents
concerned. The proposed creation of an EUwide patent right, and a court in which it can
be litigated, could make the NPE business
model in Europe more attractive in the
future.

arguments contrasted sharply with the
leaden-footed approach of his opponents,
who realised too late that they had a fight
on their hands and then failed utterly to
make their case. Mueller was a key figure in
the politicisation of intellectual property in
Europe, but after the CII Directive was
voted down by the European Parliament,
he disappeared from public view only to
re-emerge a few years later as an eloquent
commentator on patent matters, especially
those affecting the high-tech industries.
On his FOSS patents blog, he surprised
many last year by writing: “Software
patents are a fact of life. Their abolition
isn’t achievable.”

Ray Niro
Senior partner at Niro Haller & Niro
Disregarding for a moment the controversy
surrounding patent trolls (a term apparently
coined for him), it would be tough for anyone
to deny that patent plaintiffs litigator Ray
Niro has made a significant impact in the IP
world. He has done this by giving many big
businesses something to fear. Before Niro
arrived on the scene, all too often large
corporations had been able to infringe
patents without the fear of any comeback, as
the small companies and individuals whose
rights they infringed lacked the financial
clout to do anything about it. Niro was one
of the first lawyers to offer alternative fee

40 Intellectual Asset Management November/December 2011

Nortel
A bankrupt Canadian company put its
patents up for a sale at a time when the
major players in the smartphone industry
were engaged in a no-holds-barred patent
litigation war. The rest is history. There is
little else to say, except that the Nortel
auction has changed the way in which
patents are viewed in boardrooms across the
world. If the Nortel board had realised what
it had on its hands, perhaps this story might
have had a different ending.
OceanTomo
While other IP-based businesses were happy
to talk the talk, OceanTomo got on with
walking the walk. This self-styled IP
merchant banc has always sought to set the
pace when it comes to building IP-based
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Market makers

The results of our first survey of US firms
securing the highest quality patents were
featured in issue 40

business propositions. Although originally
rooted in traditional expert witness work and
patent analytics, at various times it has set
up a breakthrough IP auction business,
established an index based on the value of
listed companies’ intellectual property and,
most recently, sought to build an IP
exchange: IPXI. Not everything works, but
that does not deter the firm from trying and,
as a result, at times it has achieved
spectacular success. Although its auction
business was ultimately sold to ICAP, for two
years it generated headlines across the world
and a level of profitability. There is nothing
else like OceanTomo in the world of
intellectual property; it is a risk taker and for
that we should all be grateful.
Open source/Linux
Linux challenges traditional perceptions of
intellectual property because it demonstrates
that exclusive patent rights are not a
prerequisite for market success. Rather,
Linux’s popularity and ubiquity are due to
the culture of innovation and collaboration
that the open source ethos encourages.
Opening source code up to a whole world of
potential programmers has enabled Linux to
be modified for a vast number of purposes.
Initially dismissed by the traditional IP
world, over recent years Linux and other
forms of open source have entered the
mainstream and forced everyone to change
the way in which they look at intellectual
property. Today, collaboration and open
innovation, rather than exclusion and
exclusivity, are intellectual property’s
watchwords; and in no small part that is
down to the open source movement. The
irony, of course, is that without strong IP
rights, none of it would have been possible.
Patent Failure, by James Bessen
and Michael Meurer
Books and studies written by academics and
economists criticising the patent system are
10-a-penny; but sometimes they get noticed.
Patent Failure: How Judges, Bureaucrats, and
Lawyers Put Innovators at Risk, published in
2008, was one such book. Bessen and Meurer
eschewed the dry language, algorithms and
endless citations so beloved by their
colleagues and instead produced something
www.iam-magazine.com

that was well written and based on accessible
analysis. It may have been deeply flawed, but
research that seemed to show that publicly
quoted US companies spend more on patents
than they get back from them certainly
grabbed attention and helped to frame the
debate about the future of the patent system
in the United States and beyond. It continues
to do so to this day. Bessen and Meurer have
forced IP advocates to do more than just say
that patents make a positive contribution to
innovation and growth; now they have to
prove it. And that is a very good thing.
Reputation
Is there really anything more important to a

business that its reputation – that is, the way
it is perceived and how those perceptions
affect the attitudes and decisions not only of
consumers, actual and potential, but also the
financial markets, the media and even
governments? You can have all the patents
you want, but if consumers will not buy your
products because they do not
like/recognise/trust/rate your brand, then you
do not have a business. All of which means
that reputation is the most important
intangible that an organisation possesses. A
string of bad news reputational stories have
woken many companies up to this fact and
these days a growing number of them have
reputation management policies in place.

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Market makers

The new patent privateer phenomenon was the
cover story for issue 45

Marshall Phelps
Former corporate vice president of IP and
deputy general counsel at Microsoft and
head of IP at IBM
“The single biggest challenge to succeeding
in [the CIPO] role… is garnering the respect
and support of the company’s senior
management.” That is the maxim
expounded by Marshall Phelps, whose
approach to IP management and strategy
has helped to define the IAM era. Phelps
twice took corporations sitting on untapped
IP goldmines and put them among the top
IP earners in the world. When he took over
IBM’s IP department in the 1980s, the
company seemed to be on its last legs.
Within 10 years, its IP portfolio was
bringing in US$2 billion in revenues per
year. This success is what brought
Microsoft to call him out of semiretirement to head its IP efforts in 2003.
Phelps did it again, this time helping to turn
Microsoft from an aggressive guardian of its
intellectual property into a leading
collaborator and licensor. Although
notionally retired, Phelps sits on numerous
company boards and teaches oversubscribed courses at Duke University. He
remains a genuine IP superstar.

What an opportunity for ambitious CIPOs to
make a land grab that is. After all, who knows
intangibles better than they do?
Ruud Peters
CEO of Intellectual Property &
Standards, Philips
Just before the dawn of the new millennium,
Ruud Peters secured a two-hour audience
with the Philips board to outline a strategy
to boost the company’s IP value. They liked
what he said so much that they told him to
go out and do it. A dozen years on and
Peters remains in the role that his visionary
pitch created –  CEO of Intellectual Property
& Standards at the Dutch multinational.

Heading a team of 450 staff, Peters is
responsible for a portfolio of around
90,000 patents and trademarks, plus an
almost equal amount of design rights and
domain names. During an IAM magazine
interview in 2008, he described his career
as “challenging and exciting” He continued:
.
“This job could not have existed 30 years
ago, so I have been very fortunate that my
career has coincided with this dynamic
environment.” As a CIPO who has delivered
results year in and year out, Peters is one of
the major players in the global IP
community and a powerful advocate of the
importance of IP within business. He was
voted into the IP Hall of Fame in 2010.

42 Intellectual Asset Management November/December 2011

Rambus
The Rambus share price may wax and
wane, but the company’s business model
remains the same. Based on the creation,
acquisition and exploitation of patents,
Rambus has been operating for 21 years
now, making it one of the oldest NPEs
around. The Californian company, which
focuses on semi-conductors and more
recently lighting technology, has been
involved in any number of high-profile
litigations. Moreover, it boasts a whole
host of big name high-tech licensees on
its roster, including at one time or
another the world’s top 10 DRAM
companies. Rambus has produced a string
of high-profile IP strategists who have
influenced the way in which many view
the IP/business interface. They look
set to continue to do so for many years
to come.
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Market makers

Andrew Ramer
CEO of Marqera and former head
of transactions at OceanTomo
Few IP events have caught the imagination of
the wider world more than the OceanTomo IP
auctions that were held between 2006 and
2008. They were (and are) something that a
non-specialist could understand and, as a
result, they attracted a great deal of attention.
Most important, however, is that they worked:
intellectual property was sold and money was
made. The man who ran them was Andrew
Ramer, who led the OceanTomo transactions
team during that time. Ramer, with a contact
list as long as your arm, developed processes
that made selling and buying at auction a
viable option –  from bringing in the right
intellectual property through putting in place
effective pre-event due diligence to attracting
deep-pocket bidders. Ramer left OceanTomo
in the spring of 2009. Shortly afterwards, the
firm’s transactions business – including the
auctions – was sold to ICAP. Ramer is now
CEO of Marqera LLC and continues to do
big deals.
Kevin Rivette
Co-author of Rembrandts in the Attic and
currently managing partner at 3LP
Kevin Rivette is a man with no shortage of IP
management experience. He founded IP
analysts Aurigin Systems, held a senior
strategic IP role at IBM, headed Boston
Consulting Group’s IP team and chaired the
USPTO’s Patent Public Advisory Committee
before helping to set up 3LP, the blue-chip
Boston-based IP consultancy firm. Described
by The New York Times as the “textbook” of
IP strategy, Rivette’s Rembrandts in the Attic
(co-authored with David Kline) put
intellectual property into the boardroom by
showing how corporations could leverage
their rights to create value and bottom-line
returns. Rembrandts laid much of the
groundwork for current IP strategic thought
and, despite being published in the late
1990s, has continued to have a profound
influence. Rivette keeps a lower profile than
he once did, but at 3LP he is still helping
companies to develop strategies to maximise
IP value. No one knows how to do it better.
RPX Corporation
Founded in 2008, RPX is the brainchild of
ex-IV operator John Amster and Eran Zur,
former head of licensing at the Lemelson
Foundation. Defensive patent aggregation
was nothing new in itself, but RPX’s unique
approach was to offer a shield against NPE
aggression and at the same time turn a
profit. By attracting investment from venture
capital and charging clients a subscription
www.iam-magazine.com

fee (differentiated according to company
size), RPX raises money to secure patents
that could otherwise fall into the hands of
litigious NPEs. In return, subscribers receive
licences to the RPX portfolio. It is a business
model that has struck a chord, as RPX’s rapid
rise shows. Within three years, the firm has
built a client base of close to 100, while
spending over US$300 million on patent
acquisitions. Following its May 2011 initial
public offering, RPX has a market
capitalisation of around US$1 billion. And all
within three years –  that’s not bad going.
The US courts
Courts around the world hand down decisions
in IP cases every day, but those issued in the
United States by the likes of the Supreme
Court, the Court of Appeals for the Federal
Circuit (CAFC) and the International Trade
Commission (not to mention the Eastern
District of Texas) can and do change
industries. Supreme Court judgments in cases
such as eBay v MercExchange, KSR v Teleflex
and MedImmune v Genentech have had a major
effect on the way in which patent owners can
exercise their rights, and have had a particular
impact on NPEs and how they operate in the
United States. The court’s willingness to
change established CAFC practice has been a
feature of recent years; while the number of
International Trade Commission cases has
ballooned and looks set to get bigger still.
Tian Lipu
Commissioner at the Chinese State
Intellectual Property Office
Under Tian Lipu, China’s State Intellectual
Property Office has become one of the
world’s great patent-issuing authorities.
Given China’s growing economic importance
this was always likely to have been the case
regardless of who was in charge,; but the
relatively smooth way in which it has
happened and the growing assertiveness of
the State Intellectual Property Office on the
international stage is down to Tian himself.
Since taking over as commissioner in 2005,
Tian has recruited thousands more
examiners and placed an emphasis on quality
– something that has been recognised in
annual IAM/Thomson Reuters
benchmarking studies. He has also been a key
figure as the Chinese government has placed
increasing emphasis on the importance of
patents as levers of sustainable growth, both
inside and outside the country. His election
into the IP Hall of Fame earlier this year was
well deserved.

Intellectual Asset Management November/December 2011 43