Individual Patents that Built Empires

Whether addressed from a strategic or tactical perspective, few topics in IP receive more attention than the patent portfolio. Yet, for all the conference sessions and chatter about managing the aggregate, much of the value of any portfolio often resides in a few key individual patents, something Workday’s Head of IP Lisa McFall refers to as “gems.”

In this post, we’re looking at a handful of patents so valuable that they’re not simply gems; they’re the IP world’s equivalent of the Hope or Cullinan Diamonds. While our previous look at patents that launched billion-dollar empires focussed almost exclusively on Silicon Valley portfolios, we’ve cast a wider net beyond just the Apples and Facebooks to find individual patents that built empires for enterprising inventors who could execute or partner with someone who could. The first one is the origin of something you use every day

1. Improvement in Telegraphy

Granted: March 7, 1876; Patent Number: US 174465; Inventors: Alexander Graham Bell, Thomas Watson

The patent for the telephone is often considered to be the most valuable patent in history. By restricting competition during a time of massive economic growth, geographic expansion and adoption of technology, it provided the monopolistic foundation for the rise of Bell, one of the most dominant brands in American business. That Alexander Graham Bell was even granted the patent is the result of a long series of serendipitous events, much-litigated decisions, and chance. (Telephone Patent Follies is a detailed account).

Rapid expansion of the telegraph in the 1870s drove inventors to address the common problem of scalability – how to send multiple signals across one wire. Bell’s solution for sending multiple tones via a wire ultimately evolved into human voice transmission. Submitted on February 14, 1876, the patent was granted just three weeks later. Within a year, the patented invention was transformed into a business when seven shareholders incorporated the Bell Telephone Company. In 1878, the first telephone exchange opened in New Haven, CT. In 1899, the Bell Telephone Company was acquired by its subsidiary AT&T, which continued as a veritable monopoly until its forced breakup in 1982.

Bell the inventor could certainly see the future. In 1878, he wrote: “I believe in the future, wires will unite the head offices of telephone companies in different cities, and a man in one part of the country may communicate by word of mouth with another in a distant place.”


Alexander Graham Bell’s Telephone Patent Drawing. Records of the Patent and Trademark Office, National Archives and Records Administration

Additional Reading:

Understanding how phones work 

Inventing the telephone

Chronological list of telephone and telegraph patents


2. Two-cone drill bit

Patent Number: US 930758, Granted: Aug. 10, 1909, Inventor: Howard R. Hughes

To a large degree, dozens of movies, the building of large portions of Las Vegas, the building of the world’s largest airplane, and, most importantly, oil drilling as we know it today, were made possible because of Hughes Tool’s revolutionary drill bit – and the creative mind that spud the idea.”

Hughes two-cone drill bit  is an invention whose profound effect transformed oil exploration, enabling companies to drill through bedrock and drop holes thousands of feet into the Earth. A century after the patent grant, the invention was designated a Historic Mechanical Engineering Landmark by The American Society of Mechanical Engineers.

Until Hughes revolutionized the industry, the history of drilling into the earth had not changed much since the advent of the spring pole method. The discovery of commercial quantities of oil in 1859, however, launched an industry. New methods for searching for oil were needed and the next 50 years saw the gradual development of steam-powered rotary rigs. Cable-tool drilling using fishtail bits worked in soft and sandy soil, but was only marginally useful when encountering bedrock.

Enter Hughes, a Harvard dropout drilling for oil in Texas. In 1908, he paid $150 to acquire a roll bit patent that inventor Granville Humason had been unable to commercialize. Hughes and partner Walter Sharp improved the design and demonstrated the new dual-cone rotary drill bit in 1909. In front of astonished oilmen, they were able to drill down through 14-feet of hard rock in Galveston Bay, which no prior equipment had been able to penetrate at all.

The bit’s ability to crush and powder medium and hard rock ten times faster than any previous bit revolutionized the oil and gas drilling industry. Hughes and Sharp immediately launched the Sharp-Hughes Tool Company, which was inherited by Howard Hughes Jr. in 1924. For much of the 20th century, he was considered one of the richest men in the world. Roller-cone drill bits used worldwide still rely on the design principles introduced by the Hughes two-cone drill bit.

drill bit

Additional Reading:

Hughes Two-Cone Drill Bit: Designated a Historic Mechanical Engineering Landmark by The American Society of Mechanical Engineers

The History of Oil climaxed when the salt dome gusher, known as Spindletop, spewed Black Gold 150′ in the air!

Texas Primer: The Hughes Drill Bit (This is the invention that found most of the oil in Texas)


3. Method for node ranking in a linked database

Patent Number: US 6285999, Granted: Sept. 4, 2001, Inventor: Lawrence Page

Long before AdWords, Google Glass, Android and self-driving cars, Google’s original vision was to improve the quality of search results. PageRank was developed in 1996 by Stanford grad students Larry Page and Sergey Brin based on the idea of citations. The basic idea was that information on the World Wide Web could be catalogued or ordered in a hierarchy by “link popularity”; the more links a page had, the more popular it was, and thus should be ranked higher. US 6285999 is Google’s famous PageRank patent.

An early prototype of the Google search engine was then unveiled in 1998, after which Google Inc. was founded. The greater relevance or “accuracy” of search results soon convinced then-dominant Yahoo! to use Google to provide its search results, and people became habituated to the search results. Google was able to leverage when it launched its own self-branded search engine.

While it’s one of many factors that determine the ranking of Google search results, PageRank continues to provide the basis for all of Google’s web search tools. The patent is assigned to Stanford University but exclusively licensed to Google. Stanford received 1.8 million shares of Google in licensing fees, which were sold in 2005 for $336 million. Interestingly, a similar site scoring and page ranking method was patented in 1999 by Robin Li, founder of China’s dominant search engine Baidu.



Additional Reading:

1997 abstract of in-development PageRank research paper

A very short history of Google’s origins


4. Safety razor

Patent Number: US 775134; Granted: Nov 15, 1904; Inventor: King Gillette

The future of shaving changed forever on December 3, 1901 when a salesman from Brookline, MA filed a patent based on a claim that he had “invented certain new and useful Improvements in Razors.”

The patent application detailed a revolutionary way of shaving:

“in which the necessity of honing or stropping the blade is done away with, thus saving the annoyance and expense involved therein……I am able to produce and sell my blades so cheaply that the user may buy them in quantities and throw them away when dull without making the expense thus, incurred as great as that of keeping the prior blades sharp.”

The first Gillette razors and blades were ready for sale in 1903. A Gillette Safety Razor Co. razor and one blade cost $5, and 20 replacement blades cost $1. An aggressive advertising campaign and retail distribution model were implemented, which put the razors into local drugstores throughout the country. Sales steadily grew until the company arranged with the United States military to provide every enlisted World War One soldier with a Gillette shaving kit. Sales immediately tripled. In 1918, 3.5 million razors and 32 million blades were sold.

Gillette’s patent enabled the company, to which he had assigned it and several later patents, to prosecute patent infringement cases against competitors. By the time of is expiration in 1924, Gillette was ready – much like pharmaceutical companies today whose blockbusters drugs are coming off patent – to leverage traction and brand affinity to pursue successful product and pricing tiers, in addition to introducing new category products.


Additional Reading:

When King Camp Gillette introduced the first disposable safety razor

Gillette sues Dollar Shave Club for patent infringement

Gillette’s strange history with the razor and blade strategy


5. Squirt gun

Patent Number: US 4591071; Granted: May 27, 1986; Inventor: Lonnie Johnson

“There are maybe three inventions I have that I rank as my top inventions that I’m most proud of. The robot I built in high school, the memory-protected circuitry for the Galileo and the Super Soaker.”

  • Popular Mechanics

“A toy squirt gun which shoots a continuous high velocity stream of water.” A Super Soaker is so much more than this. It’s been the weapon of choice for kids on hot summer days and nights since it was introduced in 1990 with its original Power Drencher name. (The Super Soaker brand replaced it in 1991).

The story of the Super Soaker begins in the mind of its inventor Lonnie Johnson. A lifelong tinkerer, Johnson invented a 4 foot tall, remote-controlled robot in 1968 while in high school, He later worked on the Stealth Bomber program as a US Air Force (USAF) officer, then as a systems engineer at NASA’s Jet Propulsion Laboratory on the Galileo and Cassini missions. By 1982, he was back at the USAF and tinkering on the side at night. While working on the design of an environmentally friendly heat pump using xwater instead of freon, he realised the propulsive applications of his design.

Commercializing it was a much longer journey. Without the means to produce and distribute it, Johnson pursued licensing. Between 1985 and 1987, Johnson worked unsuccessfully with Daisy to develop a product line. He then signed a licensing deal with Entertech, which lasted until it declared bankruptcy two years later. Despite these false starts, he was able to improve the design-for-manufacture of his prototypes by incorporating blow-molding. Finally,  he signed an agreement with Larami Corporation in March 1989 to manufacture and distribute his invention.

In its first two years on the market, the Super Soaker generated over $200 million in retail sales, and became the number one selling toy in America. In 1995, Hasbro Corp., the second largest toy manufacturer in the world, acquired Larami Corporation. TIME later ranked the Super Soaker 91 out of 100 on its list of all-time great toys. Overall Super Soaker sales have totaled close to one billion dollars. Lonnie Johnson earned over $100M royalties.



Additional Reading:

7 Questions for Super Soaker Inventor Lonnie Johnson

Alvin Davis, 78, businessman behind the Super Soaker

Super Soaker creator awarded $72.9M from Hasbro


6. A pantyhose undergarment and method for manufacturing

Patent Number: WO 2001076398; Granted: Feb. 14, 2002; Inventor: Sara Blakely

“Spanx founder Sara Blakely was getting ready for a party when she realized she didn’t have the right undergarment to provide a smooth look under white pants. Armed with scissors and sheer genius, she cut the feet off her control top pantyhose and the Spanx revolution began.”

The world of shapewear hasn’t been the same since a young sales rep who was then selling  fax machines door to door in Florida wanted to look better for a social evening. Inspired, she started working with $5,000 in seed capital on the project as a side gig, researching patents and visiting clothing manufacturers on weekends.

Two years after the “Spanx revolution began,” she landed Neiman Marcus and Saks Fifth Avenue. The she sent some samples to TV host Oprah Winfrey. Oprah was smitten, loving them so much that she proclaimed Spanx as her product of the year for her popular “Favorite Things” episode. Why did Oprah, and why do millions of women love this brand? As the patent describes, “the overall design provides the user with a smooth, tight appearance when worn under clothing, without causing discomfort.”

Blakely couldn’t afford the full services of a patent lawyer so she visited the Georgia Tech library to learn all she could about patenting and IP. Although she hired a lawyer to write the monopoly claims, she handled the rest herself. Her mother created the patent drawing, and she filed for other IP protections including trademarks and copyright (she even registered her own name).

The first patent and early publicity from Oprah created one of the fastest growing clothing brands this century. With an adoring customer base, and total ownership of the company, Sara Blakely was named the youngest self-made woman on Forbes’ 2012 Billionaires List.


Additional Reading:

Sara Blakely and her Spanx® underwear invention

Spanx v. Yummie Tummie – Design Patent Lawsuit Takes the Fashion World by Storm

An ode to the Spanx design patent duel

Video: Sara Blakely: How She Started Spanx

How IP Leaders Can Win C-Suite Support – Interview with Bruce Elder of IDT – Part II

Continuing the latest installment of IP Answers, IDT’s Legal Director of Intellectual Property and Licensing Bruce Elder explains how in-house counsel can get attention and budget from the C-suite for their IP program.

In Part One, Bruce began by explaining how to position IP in the context of overall priorities, speak the language of the boardroom, and demonstrate an understanding of risk management and insurance. In PART TWO, he describes how to ascend the levels of the IP value pyramid, the interdependencies of asset groups, and recommends how IP heads can conclusively prove the value and contribution of their programs.

IPfolio: What is the IP value pyramid in the context of the larger business discussion?

I think of IP strategy alignment in some simple, perhaps overly simple, levels of alignment. The higher you are, the more aligned the IP strategy is to the business, meaning the more value the business can extract from the investment in IP.

Bruce Elder pyramid slide for blog post cropped


As I suggested earlier, a fundamental layer of any IP strategy is to think about your competition, and identify how you are going to create defensive protection around your company. If you don’t do this, you don’t have a foundation. This is where you have to start.


If you go up a layer, I think you need to start talking about operational excellence. Yes, this is a business school buzzword, but what it really means is that you are constantly thinking of how to do things better. It’s an ongoing and constant evolution, challenging assumptions and asking questions like: Am I spending my time and budget where it will have the most impact for the business, not just now but some years from now? This is also where actively managing the portfolio through activities like directed invention mining and active pruning come into play, and where the workflows and the supporting technology and software can be critical.


Success comes down to maintaining alignment with your differentiation and market strategy, then anticipating the future. What will you need from your portfolio and when? You make sure you have a plan to get it when you need it. Even better, you figure out how to do this ahead of time.

IPfolio: What comes next?

I would argue that turning the IP strategy into part of your company’s net income and profit center is the next step up.


Conceptually, you need to be thinking about how you are contributing to the value of your business. You can create value in a lot of ways; it’s not just going out and suing someone for license revenue, although this may be an option for some. Rather, I mean activities like identifying and selling non-core assets as a beneficial good so you can leverage your portfolio, or proactively helping your business secure a partnership or win a sale because you can show that working with you instead of a competitor gives them the comfort of superior patent coverage, or demonstrating that you’re the thought leader in an area.


The requirement to efficiently execute at this level is to know your IP inventory and appropriately categorize it.  This is where that prerequisite of deep portfolio knowledge really can pay off.  This is how you rise to the top of the IP Strategy pyramid. Yes, it is certainly rare and hard to do, but this is the point at which you become part of the fully integrated business plan of your company.


When you get to this level, the CEO isn’t reviewing the business fundamentals, the annual plans, or the three-year strategy plans without you participating at least to some degree. The Board of Directors is unlikely to talk strategy without you in the room or without, at minimum, having consulted you before. In truth, though, it is rare in my experience to achieve this.


Instead, you can too easily be the focus of reactive expectations. “My friend Joe at another company’s board said they are making a lot of money on their patents. I wonder why we aren’t doing the same thing.” The next day, someone might visit your office with a “there has to be value here; the board insists there is” sort of message. The truth may be that three years ago, there was indeed value, but some of it has since been lost. I know many IP professionals have had this kind of conversation, and it is never fun to be an “IP guy” who is suddenly and unexpectedly given a revenue target.

IPfolio: Where does IP find common ground with C-level leaders?

By creating value from the business assets – and critically – by communicating how IP is doing so. Here’s a great question to ask IP heads: Have you spoken with your C-suite about how you are helping to create value from the assets you control in the business? Have you had this conversation using their language? Sometimes, it can be even more preliminary. Do you even have the opportunity to have that conversation? I put it to you that the more IP leaders think and talk in the language of business value, the more likely they will get to this level of conversation and maybe even get more budget support.

IPfolio: How does IP talk about creating value from the assets they manage?

Drawing from my business background, I recommend understanding how assets fit together in the big picture. This is regardless of whether your company is a 60-person startup or a billion-dollar public company.


You have three legs of the stool that the organization is balanced upon. Start with capital, which is your cash, working capital, and fixed assets. Consider these your planting materials. Next, you have human capital, the great people who build relationship webs. They execute on all your wonderful ideas, which is the third leg. Every business has these three assets or legs.

IPfolio: Are the asset groups interdependent?

Absolutely. Most business school folks will tell you that there are three sorts of interdependencies that come together when creating value.


The first interdependency should be fairly obvious; this is leveraging and exploiting your assets to create recurring net income. You are in business to make a profit after all, or even if not-for-profit, you need to sustain and survive long-term. Think of this as the part of the business typically reflected on the income statement and cash flow statement.  If you are an early-stage start up, this really isn’t your immediate priority, however. In that case, you are burning cash and know you are likely not going to be generating net income any time soon. While you are dreaming about getting there sooner or later, you have other immediate priorities.


The second interdependent priority is to increase the value of your assets. How can I get more value from what I have or bring in more assets? Think of this as the balance sheet part of the business.


The third one is ‘How do I secure my income and my business assets?’ How do I keep someone from encroaching and taking away my net income and the value of my business assets? All these things work together, This is what your CEO thinks about. This is the language he or she uses. You should talk about IP in this context. Here’s a quick mental exercise: Which one is most critical to you today?

IPfolio: Any suggestions to answer the question?

Your priorities depend on your business’s maturity. It’s that simple.


Consider a private venture-backed startup or small company. If you are a startup, you are probably not profitable yet. Your priorities  are probably thinking more about increasing the value of your assets and setting yourself up for the next stage. The next stage could be X amount of funding, an exit strategy, or perhaps an acquisition. Maybe it’s going public. Profit is probably not the number one motive. Growing overall value perception of your business assets, increasing your valuation to get a better round next time, or justifying an offering are probably more important right now.


Will this remain unchanged in three to five years? Probably not. Hopefully by then, you will have reached some plateau where growing net income is important. Contrast this with Google, Facebook or Apple. Take Apple; it’s had a bit of an interesting time after the last earnings announcement. Apple had such an amazing and long stretch of rapid growth over many years, but there’s a limit to exponential growth of anything, even Apple. Now, it’s starting to become as much about securing the income and long-term value of the business and ensuring profitability that has already been achieved.

IPfolio: How does IP conclusively prove the value of what it does?

IP can seem really vague to some people in the executive suite. It’s sometime seen largely as an insurance type of cost, which they can measure fairly easily. Your department budget is clearly visible.


But how do the CXOs measure your value, not just cost? Short of going out and suing people and getting license revenue at the extreme, how do you prove IP value and what are you measuring? Is it just sheer numbers of IP assets? Yes, that’s one strategy. It’s an easily calculated and understood metric, but as I mentioned earlier, it’s a very inefficient one to show the value of an asset or portfolio to the business.


You have probably heard this before – ‘if you can’t measure it, you can’t manage it.’ This is a critical principle because every executive will ask you for proof. Their line of inquiry will be something like this: ‘How do I know that you are doing what you are saying? and What are the metrics? and What is the value?


I try to focus on expressing the degree of IP alignment to business priorities. For example, how IP prosecution is focused on directed invention mining in the high-growth or high-revenue parts of the business, while divesting or cutting non-contributing assets and efforts, and expressly pointing out why that helps secure net income or grow the value of the assets to the business. I also have used comparisons to illustrate where competitors and threats are active or may emerge, and try to show how the IP portfolio is being proactively adapted numerically and qualitatively to match those perceived threats.


I try to identify areas where IP can be, or has been, leveraged to secure a partnership or help in sales or marketing campaign. As much as possible, I try to do this using metrics and visuals or dashboards that make sense in a language and lexicon they are used to dealing with. Starting with a baseline, if you can show positive change over time, and positive business results that leverage the IP portfolio, then the executive team is going to be much more inclined to listen. When they start listening, you’ll have their attention and a better opportunity to lobby for the funding your contribution to the overall organization merits.

We’d like to thank Bruce for his perspective and time. In an IPforward Conference presentation that captivated attendees followed by this expansive Q&A, Bruce has definitely provided Heads of IP with a roadmap to produce a closer relationship with their company leadership. We look forward to presenting more of Bruce’s expertise in future IP Answers.

How IP Leaders Can Win C-Suite Support – Interview with Bruce Elder of IDT – Part I

No company – not even Google or Microsoft- has an unlimited Intellectual Property (IP) budget. It’s an ongoing challenge of fine-tuning strategy and prioritizing tactics, each  balanced against a financial reality that there’s never enough money to do everything you want. The opportunity, however, to do more of what you want often rests with your ability to solicit and secure the blessing of senior management.

In this installment of IP Answers, we’re talking with Bruce Elder, in-house counsel for Integrated Device Technology (IDT), one of Silicon Valley’s oldest semiconductor companies. We were very fortunate that he was available to speak at our recent IPforward 2016 conference as it’s rare to find someone whose biography covers so many lines on a company’s org chart. He’s ready to provide tips and recommendations to get attention and budget from the C-suite so you can fund your IP program.

bruce elder 5

In Part One, Bruce explains how to position IP in the context of overall priorities, speak the language of the boardroom, and demonstrate an understanding of the importance of risk management and insurance.

A candidate for Most Interesting Person in IP

IP attracts individuals who typically combine a mix of academic and professional experiences. Bruce’s background, though, is so diverse that he would certainly contend for any “Most Interesting Person in IP” prize.

With an academic background in aerospace engineering and early work launching and flying satellites in orbit, he can talk shop with engineers. He can chat knowledgeably about market development, product launches and cash flow priorities by virtue of a decade in sales and marketing roles at Sun Microsystems, followed by leadership positions at three VC-funded startups. He spent the early years of his IP law career at Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, PC and Perkins Coie LLP, then went in-house as IP counsel at Silicon Graphics International Corp and MobileIron. An English Solicitor, a California Attorney, and admitted to the USPTO, his formal IDT title is Legal Director of Intellectual Property and Licensing.

IPfolio: First things first, Bruce, what’s your current role?

I’ve been at IDT since December 2014, creating and running global programs in IP, licensing, M&A transactions, and providing counsel related to company product and technology make/buy/license decisions. My role reduces fundamentally to helping the company devise and execute programs that can increase the business value of IDT’s technical designs and related IP. It’s something that uses a lot of my background. While I am admitted to practice as a patent lawyer, I have never actually prosecuted patents for a living, although I have litigated them several times. I have also raised venture capital and started small companies, and been the executive running sales and business development in both large and small companies.


I think what I really bring to the IP table is a very business-centric approach. While my work on our small in-house legal team does, at times, take on elements of a more traditional legal role focused on risk management, compliance or even day-to-day transactions, I spend most of my time working with the management teams here to support technology development and business growth initiatives. It is really fun, too! It is impossible to be bored when you’re lucky enough – sometimes in a single day – to be involved in such diverse areas as corporate development, overseas M&A transactions, advanced technology strategy planning, and even global tax strategy. Not always what you might expect someone with my title to do.

IPfolio: Your resume clearly differs from most in-house counsel.

I’ve sometimes thought perhaps I do things a bit backwards. When I went to law school, many of my younger new lawyer friends were hoping to evolve their new law practice from junior associate to someday perhaps become a VP of business development. My last job before law school was VP of business development, which I left to become a junior associate. A result is that my IP perspective starts from the point of view of someone who has run P&Ls, a business, worried about payroll, and tried to figure out how and where to grow sales. It’s generally not starting from the legal ‘IP Guy’ perspective.


The reason I was so happy to speak at IPforward is because this IP-business intersection is critical for every in-house counsel to understand as deeply as they can. They need to understand the priorities and challenges of the CXOs to win them over. It’s vital for counsel to understand this simple imperative – if you want to grow your portfolio, you have to get alignment with your C-suite and you need to get a budget. That’s the bottom line.

IPfolio: How do you do this effectively?

Aligning IP and business strategies is the key, of course. Irrespective of whether they’re actually meeting this goal, everyone at least understands its importance. This said, so much time and effort is spent in the IP field today – especially patenting – on operational aspects. I call this “Doing Things Better.”  Not as much time is spent on the strategic alignment, or “Doing Better Things.” Every business needs both to thrive.


There are two critical prerequisites to achieving this alignment;  the first is awareness and vocabulary, and second is actionable knowledge.  I can’t emphasize enough the importance of vocabulary; the way we as humans put concepts into words frames and structures our thinking to an amazing extent.


Does your way of talking align with the way your CEO thinks? If you speak about patents, for example, in the language of risk management – warding off competitive assertions, leveraging cross-licenses or defending differentiation – then you’ve already framed the discussion in an “insurance” context. Insurance is a necessary item for the C-suite, but always a cost and burden to be minimized and mostly forgotten.


Then, once we master speaking – and conceptualizing – IP more strategically as a valuable business asset, the next critically important tool to achieve alignment is gaining deep knowledge about the business strategy, and about your IP portfolio, especially. If I could add a third point, it’s also critical to understand that nothing is fixed; IP strategy evolves over time as your company does.

IPfolio: Can you elaborate on the last point?

I have been at a 60-person early stage startup, and I have been at an $18 billion public technology company. I helped take a mid-size company public. Today, I work at a 36-year-old, very established mid-cap public company employing 2000. The IP needs of each require radically different initiatives and strategies. The ability to make the transitions and adjust your IP strategy at the right time is a really important and valuable skill for in-house counsel to nurture.


Early stage startups should be all about focus on that one competitive differentiation that will compel an early customer to take a chance – and protecting it with IP so a VC will fund them.  Pre-IPO companies are about amassing enough of a portfolio in their core market-disruptive areas so they can survive the leap to profitability, without being crushed by established players trying to halt the new guys taking market share. More established companies with evolving products lines are likely more concerned about keeping in sync with changing product lines, active portfolio pruning, and so forth.

IPfolio: So where do you begin to frame IP  in the context of the larger business discussion?

The essential prerequisite is this: gain deep knowledge of your IP portfolio, and the business strategy.  


Without deep knowledge, you really are left to play the numbers game for strategy, and instead spend your energy primarily focused on the operational aspects of getting the most for your IP dollar.  For example, you might try to patent enough. You can then be ready when a time comes that you must rely on your portfolio for some critical business situation like defending against an aggressive competitor, and by sheer volume may have a couple gems that can survive litigation and read on your likely competitor.  That’s expensive and inefficient, obviously, so you’ll certainly need to be constantly budget-conscious.


In this scenario, you’ll be defending the IP budget regularly because this is really an “insurance” model, writ large. You should also be ready to go to the C-suite for a patent acquisition budget if facing key litigation and you didn’t get lucky enough to have the gem you needed organically in the portfolio.  I don’t mean to minimize defensive patenting or budget management, obviously these are key fundamentals, but I think IP can be more valuable to the business if it is taken to the next level.

IPfolio: Are there alternatives?

Certainly. You can invest budget and effort now. It is not an easy task to do well with a portfolio of any size or complexity. To  really understand your patent portfolio, you have the ability to develop it more strategically. Look at each asset, and map critical metadata to the assets or asset families.  I try to anticipate the questions I might need to answer about our patents in support of business goals, such as technology area or concept coverage, competitor reads, standards essential patents, or product instantiations.  


For example, can you quickly pull from your portfolio a list of patents that read on a particular high-threat competitor? This obviously implies other questions. Do you know who your high threat competitors are now and likely to be in a few years’ time? Do you know what features drive significant revenue for their products that your patents might read against, and therefore be potentially valuable against them?


In parallel, of course, you need to be gaining a similar understanding of the business strategy.  The most fundamental concern of any CEO should be how to create value from the assets of the business.  Every successful CXO has an immediate, near-term and longer-term strategy to achieve this, As an effective IP leader in an organization, you’ll need to understand it in some depth.


If you’ve done the homework, then you can start to progress up the IP value pyramid, aligning your IP strategy more to the business strategy, and delivering greater business value as a result.

Thank you Bruce for your time. We will be back with Part Two in a couple of days.

IPfolio’s 2nd IPforward Conference Welcomes IP Experts from Around the World

“There are lots of creative options for leveraging Intellectual Property that aren’t obvious.”

This is one of the many thoughtful takeaways from last Thursday when a Who’s Who of IP professionals gathered in San Mateo, CA for IPforward 2016, our second annual conference.

Attendee feedback from the inaugural half-day event in 2015 was so enthusiastic that we expanded IPforward to a full day this year to encompass a wider agenda of IP strategy, tactics and operations topics.


The expanded agenda, which featured speakers from IDT, SolarCity, Verily (formerly Google Life Sciences), Workday, and Zynga, attracted more than 75 IP professionals from Silicon Valley, across the USA and Canada, and several European countries. It was a great learning and networking event with IP experts – primarily in-house counsel and operations staff – from some of the most innovative organizations in the world, including Apple, Facebook, Fairchild Semiconductor, Google, GoPro, Palantir, Samsung, SAP, Stanford University, SunPower, Tessera, and Visa, among many others.

IPforward Conference Session Recap: Actionable Expertise

A returning 2015 speaker, Workday’s Deputy General Counsel for IP, Lisa McFall distilled her “Scenario-Based IP Strategy: How to Plan for the Best and Prepare for the Worst” session into a detailed roadmap for both offensive and defensive prosecution and litigation. She encouraged attendees to “understand the role that every patent plays in your portfolio because you can do a lot with a little bit of money if you are thinking strategically.”

Brett Alten, Head of IP at SolarCity

In a fascinating session entitled “Alternative IP Strategies: Why We Need them and How We Got Here,” SolarCity’s Deputy General Counsel Brett Alten (pictured above) discussed a variety of less conventional approaches to leveraging intellectual property assets. Brett also covered the benefits of patent communities to counter trolls, and provided an extensive list of examples such as LOT Network, of which he is a director.

Bruce Elder spent 15 years in sales and marketing before becoming a lawyer. The Legal Director of IP & Licensing at semiconductor developer IDT, he addressed “How to Scale and Grow your Patent Portfolio” as both a legal expert and former business executive. He provided numerous examples of how to translate IP considerations into business and financial priorities so in-house counsel can secure the support they need to be effective. According to Bruce, every IP counsel needs to be able to answer, “How am I contributing to the value of my business?”

Lisa, Brett and Bruce then wrapped up the morning session with a wide-ranging fireside chat about IP strategy. Their advice on how to determine whether you’re going to get sued and when was a highlight for many in the audience.

Nigel Hsu managed an international team of technical experts supporting the development of Google’s patent portfolio, leaving to become Verily’s Head of Patent Operations in October 2015. “Achieving and Measuring Operational Excellence in IP” was his detailed review of how he has spent seven months identifying priorities and creating detailed IP management processes as he has developed Verily’s IP department. We were thrilled to hear him describe how IPfolio is making this work so much easier.

Bruce and Teddy Joe, Senior Patent Counsel at Zynga (the “Mayor of Patentville”) joined Nigel on stage for a “Managing a Lean IP Operation” roundtable. Their experience working with external vendors enabled them to speak convincingly about general outsourcing issues, as well as specific patent writing, reporting, dashboard management and billing challenges and solutions.

Looking Ahead: IP Product Roadmap Unveiled

The day closed with an overview by CEO Rupert Mayer of IPfolio’s product roadmap, an exciting future for us that emphasizes Automation, Collaboration and Connected Services. We were also delighted to welcome two of our newest partners, Lumen IP and ipan. Lumen Co-Founder Greg Daines and ipan CEO Phil Henderson spoke about the benefits of delivering their docketing, patent annuity, and trademark renewal services through the IPfolio ecosystem.

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100 Customers and Growing Fast

Our second IPforward Conference was not only an opportunity to mix with customers, prospective customers and partners, it was also an opportunity to celebrate our 100th customer – in fact by the time the conference ended, IPfolio had 106 customers. It’s a great milestone for Rupert, who identified an opportunity in the legal tech market and launched IPfolio back in 2012:

“IPforward was once again a big day for us. It was amazing to see everyone so engaged, and such a vibrant community full of positive energy and enthusiasm developing around IPfolio. Great feedback has been pouring in since then, and I can’t agree more with one of our attendees who summarized it with these words: ‘The industry needs more of this.’”

You’re Invited! To Learn, Contribute and Attend

We look forward to providing more of “this” through events, content and expertise. We also extend a very early invitation to attend IPforward 3.0 next year. Finally, we must recognize the entire IPfolio team as well as the staff and management of the San Mateo Marriott, who did an exemplary job hosting our event. Thank you to everyone!

Creating an IP Strategy and Acquiring Support from Your Executive Team: an Interview with Lisa McFall, Head of IP at Workday

Lisa McFall is an IP star in Silicon Valley.  After litigating patent, copyright, trademark and trade secret matters at Wilson Sonsini Goodrich & Rosati for a decade, she went in house at Yahoo! and ran its IP litigation and conflict management program for five years. She left in 2009 to co-found Ovidian Group, an IP strategy consultancy later acquired by Pendrell. In 2014, she became the Head of IP at Workday, a ground-breaking provider of enterprise cloud applications for finance and human resources.

Lisa McFall Blog 1

Her comments are her personal views, and not necessarily representative of Workday. (Disclosure: Workday is an IPfolio customer). We were very happy to speak with her about the process of creating an IP strategy and obtaining executive team support.

We’ve spoken with several IPfolio customers about the process of creating an IP strategy. Each spoke about how IP strategy must support the overall business strategy.

I certainly agree, and think it is important to distinguish between IP strategy and an IP program.


Many companies have IP programs, characterized by annual patent filing targets, patent review committees and patent incentive programs.  A company can maintain an IP program for a very long time without ever asking if it is filing the right number of patents on the right technologies in the right places, or whether the inventions it is harvesting are strategic and serving a specific business purpose.


In many companies I’ve seen over the years, IP teams are somewhat separate, and interface primarily with engineers and technologists.  They don’t necessarily interact with business leaders or the executive team.


When companies operate in this mode, their IP portfolio can become disjointed from the business. When the business then turns to the IP team and asks: “do we have patents that cover xyz competitor, abc technology, or that we can use in 123 licensing discussions?,” the answer may not be what the business expected.

So what’s clear is that an effective IP strategy must be integrally connected with the company’s business and technical strategy?

It’s definitely clear, but not always easy to achieve. To help IP practitioners think about IP strategy, I always start with Carl von Clausewitz, a military theorist who believed strongly that the role of the military is to achieve specific political objectives.


His most famous quote is:  “War is simply the continuation of political intercourse with the addition of other means. We deliberately use the phrase ‘with the addition of other means’ because we also want to make it clear that war in itself does not suspend political intercourse or change it into something entirely different.  In essentials that intercourse continues, irrespective of the means it employs. The main lines along which military events progress, and to which they are restricted, are political lines that continue throughout the war into the subsequent peace.”


What Clausewitz is saying is that politics is always the driving force.  The military may be called upon, but if so, it is simply an extension of the political action.  The waging of war is not an end in and of itself.


Applying this to IP, a company’s IP portfolio exists to protect and serve that company’s specific business objectives. When a company decides to leverage its patent portfolio, it does so for a specific business reason.  Understanding what those business objectives or reasons might be, anticipating what patents a company might need to advance them, and how to leverage those patents to achieve the desired result is the core of a thoughtful and effective IP strategy.

I’ve often heard that the definition or measure of an ideal IP strategy is an expression of a quantitative reality with a large amount of qualitative nuance.

Everyone’s IP strategy should be nuanced depending on the nature of their company and its position and role in their competitive ecosystem. My articulation of the ideal IP strategy is:

In a perfect world, a company will have the right number of patents available to leverage in the right country against the right party at the right time.


Reaching this “perfect world” is almost impossible, and it’s why many companies choose to build huge patent portfolios.  If you have thousands of patents, chances are you’ll have a number of patents available for whatever situation arises. Its a blunt instrument.  However, for most companies, building a massive patent portfolio isn’t practical or rational.


Instead, companies can increase the odds of having the assets they need available by basing their IP strategy on a careful study of their competitive ecosystem, anticipating the most likely sources of business friction and considering the best way to create or obtain patent assets that will be relevant in that situation.

How do you start defining your path?

You start by thoroughly understanding your competitive landscape. Who are your direct and indirect competitors?  Who are your most important suppliers and partners?


You also have to think about which competitors are up and coming. If you think you are a disrupter and the rising star of your industry, you might not always be in that position.  If you are successful, eventually you will be the incumbent. There will be new players that are going to compete with you for your market share.


Additionally you must understand your competitive advantage.  How do you distinguish your products and services from those of your competitors? You might want to patent as much of that as you can.

The amount of information that IP strategists must collect and evaluate when drafting a strategy they can present to the board is considerable. In your experience, what can a Head of IP do to increase the chances of obtaining executive support?

It really depends on your executives’ personalities and experience with IP.  Knowing the learning curve they may be facing is important. In my experience, executives who understand the value and power of IP really like to engage in strategy discussions. They understand that the Chief Intellectual Property Offier (CIPO) is the General whose weapons will protect their business strategy.


It’s also helpful to think about the cost of your IP strategy from a high level business perspective. Consider how your company is doing overall financially. Do you need a large increase immediately, or can you ramp your IP spend gradually?  You can achieve a lot with a modest budget if you know how you are spending every dollar, and know that every dollar spent is creating a valuable asset.  On the flip side, under investing now may cost the company a lot more money in the future.


Consider presenting alternative budgets to your business leadership, laying out some different scenarios for how IP may be leveraged in the future.  For example:  “If all goes as planned, we require $X so we can achieve Y, but if one of our assumptions is wrong, and we get an unexpected attack, we will likely have to spend $Z to address the problem.”

Articulating the assumptions underpinning your strategy is key to engaging your executives and other stakeholders.

How do you present your IP strategy? What’s the format?

It’s a plan, so present your IP strategy as a business plan. You have specific objectives and a roadmap.


You might say: “Here is the current size and composition of our portfolio. We have these gaps. We can fill these gaps by buying this many assets, in this time frame. Here are the resources we need and here is the cost.” And you must have data to support this plan.

Lisa I am sure there is so much more to say, but we thank you very much for your valuable time and we look forward to perhaps exploring some of these subjects again with you.

Lisa will be speaking at IPforward 2016, April 14 at San Mateo Marriott San Francisco Airport. Tickets are free for in-house IP counsel, managers and operations professionals but only a few spaces are left.