Collaborating and Making Money from your Data and IP - the Good, the Bad, and the Ugly

November 7, 2017

Panelists and Speakers

Henry Unger

President

Pulsiam, Inc.

Dr. Elvir Causevic

Managing Director & Co-Head of Tech+IP

Advisory Practice

Houlihan Lokey

Toni Y. Hickey

Deputy General Counsel & Chief IP

Counsel

Cummins Inc.

Beni Surpin

PartnerTechnology

Transactions & Outsourcing

Foley & Lardner LLP

Agenda

Ways to generate revenue from IP and Data

Trends towards more open IP strategies

Data monetization strategies

Data monetization regulatory issues

Best practices for generating revenue from IP and data—the good, the bad, and the ugly

Generating Revenue from IP Ordinary play

build IP portfolio surrounding the product, gain market share and prevent copycats

Offensive play

collect royalties from third parties

Defensive play

block competitors and create freedom-to-operate space, reduce IP litigation risks

Alternative play

create different fields of use for the IP, monetize non-core IP and data

Trends Towards More Open IP Strategies

What are the trends in IP and data monetization?

Trends Towards More Open IP Strategies

More collaboration in developing and using IP

Sharing technology and monetizing data

Board’s fiduciary duty to generate revenue from non-core IP

War Stories

What approaches has your company/industry taken to make money from IP or data?

Data Monetization Strategies

How can a company make money from its data?

Data Monetization Strategies

De-identification of data

Using the data to improve products, or other products in other industries

Run data analytics

Shared data pool among those who contributed data

Data Monetization Regulatory Issues

What are the regulatory issues regarding data monetization that you have encountered in your industry?

Data Monetization Regulatory Issues

Cybersecurity

Privacy

HIPPA

Consumer protection laws

Financial and credit card information

Best Practices

The Good, The Bad, And The Ugly…

GOOD

Do a “Strategic Alternatives Analysis”:

Identify Non-Core assets for sale, and Core assets that may be licensed outside core business

field

Examine options: Sell / Exclusive license / Non-exclusive license / Tech Transfer / JV

Get internal approvals to dispose, and be clear about expectations and risks

Create a package with critical mass (>100 patent families), be clear about any existing

licenses/encumbrances

Ask a reasonable price based on a solid financial valuation – with realistic assumptions based on

comparables

Demonstrate how patents are infringed by 3rd parties (Evidence of Use charts) – really helps defensive

buyers

Offer for sale or license to “friends and family” first, then open the bidding to the entire market

Collect and secure ownership/license to data for potential monetization

Conduct data analytics to improve product, create efficiency, enhance profitability, and design new

revenue models

The Good, The Bad, And The Ugly…

BAD

Try to monetize assets that were about to go the garbage bin

Start with an aggressive and assertive non-exclusive licensing campaign through litigation

shops

Ask an excessive price, force deals to happen quickly

Try to monetize data without complying with all the regulatory requirements

Do it yourself

UGLY

Privateering:

Take the assets related to the same underlying technology and split up into five separate

subgroups

Keep one and sell four subgroups to four different patent trolls

Approach targets directly yourself and send the four trolls after them as well

Sell off personal information and other customer data and make a real PR crisis

Questions/Comments

ATTORNEY ADVERTISEMENT. The contents of this document, current at the date of publication, are for reference purposes only and do not constitute legal advice. Where previous cases are included, prior results do not guarantee a similar outcome. Images of people may not be Foley personnel.© 2017 Foley & Lardner LLP

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2017 NATIONAL DIRECTORS INSTITUTE

Collaborating and Making Money from your Data and IP — the Good, the Bad, and the Ugly

November 7, 2017

Agenda:

I. Ways of generating revenue from IP and Data

a. Ordinary play

b. Offensive play

c. Defensive play

d. Alternative play

II. Trends towards more open IP strategies

a. Collaboration

b. Monetization of non-core IP

c. IP and data sharing

III. Data monetization strategies and regulatory issues

a. Data de-identification

b. Data analytics

c. Shared data pool

d. Regulations governing the use and monetization of data

IV. Best practices for generating revenue from the IP and data, the good, the bad,

and the ugly.