Category Archives: Analysis

Patent Value Guide – Part I

By: Fernando Torres, MSc

In our intellectual property valuation practice, we are often asked by patentees how they can get a proverbial back-of-the-envelope assessment of the value of their patents. What at first blush sounds like a reasonable request, its proper answer is not as easy as most would like to think.

In this series of blog posts, I will strive to address the question from a practical perspective. In the end, I believe we shall see that not only is there no simple answer, but the question might not be the right one to begin with.

General Principle No. 1

“A patent has no intrinsic value independently of the value of a business”

At the risk of repeating what must have been replied myriad times by patent attorneys and IP professionals, a patent is only the temporary right to exclude others from a specific market delimited by a written description of an innovation [USPTO Patents Portal]. It does not represent the right to practice an invention, or title to a royalty income stream; several factors are co-determinants of the economic value of the opportunity the patent represents.

For example, if an inventor is issued a patent on an innovation which he/she cannot implement directly and no one else needs such invention to operate their business and satisfy actual consumer demands, then no actual market segment exists for the invention. That patent is not simply worthless, rather it represents a net cost to the patent holder as obtaining a patent in the first place requires one to cover drafting, drawings, filing fees, and other prosecution costs which, realistically, are no less than $1,500 and could be as high as ten times that amount [Current USPTO fees].

By contrast, consider a situation where there is market demand for, e.g., an accessory that props up touchscreen cell phones because: (a) a large number of such cell phones are in use; (b) the phones must be held at an angle for confortable viewing of videos; (c) the cost of manufacturing the accessory is low relative to the phone at the appropriate volume levels. In this case, the value of this limited accessory business would be proportional to the net profits of the venture.

The Glif
Phone Accessory (www.theGlif.com)

Then, a patent that claims that invention would likely have economic value because the patent holder can exclude others from making, importing, using, and offering for sale, or selling that invention throughout the US and sell the product at a monopoly price. This price would be greater than the competitive price and, thus, the patent holder would effectively be reaping an economic rent: the incremental profit at the monopoly price over the net profit at the competitive price. Only this portion of incremental profit would be attributable to the patent and would therefore be the value of the patent.

Patent Effects on Market Price - IPmetrics
Patent Effects on Market Price

Thus, it is because the phone accessory business has value that a patent on the device would have economic value and, furthermore, the value of the patent is different from the value of the underlying business (and always smaller if the business is profitable in a competitive environment).

Consequently, at this initial level of the inquiry, the right question would be closer to: What is the value of the underlying business, and how much can a patent contribute to that business value?

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We shall cover additional principles in the IPmetrics® Blog, and dig deeper into useful tools for estimating the elusive patent values.

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The 25% Rule is legally inadequate — CAFC

Yesterday, the Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential ruling to the effect that, among other issues in the Uniloc v. Microsoft case, as a matter of Federal Circuit law the 25 percent rule of thumb is a fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation. Evidence relying on the 25 percent rule of thumb is thus inadmissible under Daubert and the Federal Rules of Evidence, because it fails to tie a reasonable royalty base to the facts of the case at issue.

The appeals court was very explicit in stating that Uniloc’s damages expert Joseph Gemini’s starting point of a 25 percent royalty had no relation to the facts of the case, and as such, was arbitrary, unreliable, and irrelevant. The use of such a rule fails to pass muster under Daubert and taints the jury’s damages calculation.

Consequently, as the jury’s damages award was fundamentally tainted by the use of a legally inadequate methodology, the CAFC affirmed the grant of a new trial on damages.

A rule is found

In the late 1950s, Robert Goldscheider performed an empirical study of 18 commercial licenses involving the Swiss subsidiary of a large American company (see e.g.- R. Goldschider, “Litigation Backgrounder for Licensing,”Les Nouvelles, 29 (March 1994), p 20-25). Those licenses referred to the transfer of intellectual property rights to a portfolio of patents, the flow of know-how, trademarks, and copyrights to marketing materials (Goldscheider, Jaroz, and Mulhern, “Use of the 25% Rule in Valuing Intellectual Property”, Chapter 22 in G. Smith & R. Parr, Intellectual Property, Wiley & Sons, 2005). The licensees paid royalties of 5% of sales and typically generated operating profits of 20% of sales. Thus the 5/20 or 25% rule was “discovered.”

The Uniloc damages story

Uniloc’s patent (US5,490,216) covers a system for software registration which Microsoft is allegedly infringing by the way software activation works in Microsoft’s Product Activation feature that acts as a gatekeeper to Microsoft’s Word XP, Word 2003, and Windows XP software programs.

Uniloc’s damages expert arbitrarily picked out an unexplained value attribution of $10, at a minimum, for a Product Key in the context of Microsoft’s business. While it is clear that software piracy prevention measures are valuable, this initial approach completely ignored any specific analysis of the contribution of the software registration algorithm. Dr. Gemini then applied the 25% rule to this $10 amount and posited that $2.50 per activation was the proper royalty due to the patent holder. Multiplying this amount times the number of the accused Microsoft Office and Windows activations, 225,978,721 in all, generates the purported “reasonable royalty” of $564,946,803. The jury found Microsoft willfully infringed the ‘216 patent and awarded $388,000,000 in damages. (The expert then performed a “reality check” of this number by misapplying the Total Market Rule. This is an additional topic we shall touch on in a later post).

Why it is wrong

Over the years, the 25% Rule has been used without much attention being paid to its significance and applicability. From the outset, the “rule” reflected a post-fact measure of the contribution of a complete bundle of intellectual property rights which included all four major categories of IP (trade secrets, patents, copyrights, and trademarks) in a specific industry and economic environment. Based on our collective experience in valuation, licensing, and damages calculations, the specific facts and context of a transaction, license, or case are the arbiters of the value of intellectual property. To adequately reflect the fair market value of a patent, as in this situation, attention must center of what specific contributions are made from an economic perspective, e.g. does it reduce the cost of production, enable new applications, attract market demand? In fact, the determination of a reasonable royalty as the base measure of patent infringement damages has a well-established process that lists the multitude of factors to be considered (the Georgia-Pacific Factors). It is also well established that the 25% Rule of Thumb is not an appropriate guide line for the determination of a reasonable royalty rate under a Georgia-Pacific analysis. A proper patent infringement damages expert analysis must carefully tie the damages amount to the invention’s market significance and this cannot be accomplished with a rule of thumb.

Next

A new trial on the question of damages has been ordered by the CAFC and we shall expect a reconsideration of the economic analysis behind the reasonable royalty attributable to the ‘216 patent. But, more than that, this opinion raises the bar for all future intellectual property damages analyses that must determine a reasonable royalty; no longer can superficial applications of pre-determined percentages be passed-off as “expert testimony.”

(Simultaneously published on the IPmetrics Blog)

PETA accused of copyright infringement

The IPmetrics blog reports Victor Schonfeld has threatened to sue animal rights group PETA over the copyright infringement his copyrights in the film ‘The Animals Film’.

The film maker’s UK legal team has reportedly sent a letter to PETA informing them of his intention to sue them for the equivalent of US$760,000.  The dispute arises from the claim that the animal rights group used footage from ‘The Animals Film’ in various internet videos without Schonfeld’s permission or a licence.  Of interest is that the damages claimed are derived from a reasonable royalty calculation representing the hypothetical royalty fee the parties would have agreed upon on the eve of the infringement (see an explanation in terms of US copyright law), had they sought a legal way of using the film.

Read the full article at: Solicitors UK Blog.

Software Copyright Litigation Issues

Software commercialization began to accrue significance in the early 1960s and it presented a challenge to the U.S. Copyright office when the first registrations were submitted in 1964. Since that time, until the 1976 Copyright Act, the required registrations of software were accepted under the general assimilation of software as a “how to” book. The Act made it clear that Congress intended software to be copyrightable. Yet the very nature of software requires that copies be made in the ordinary course of using the software. First, the software is generally installed on the users’ computer system by copying it from a distribution medium (such as a computer disk, compact disk, or downloaded from the internet) on to a storage system (typically a hard drive). Secondly, another copy of the software is made to the computer’s memory in order to execute the software or, when viewing a page on a web site, a copy is transmitted (downloaded) to the computer’s memory and/or storage system.

Thus, in principle, the rightful possessor of software would generally be expected to be able to make copies, and Congress considered the need to set some limits to the exclusive right of copyright owners. Specifically, section 117 was added allowing, among other rights, the making of archival copies by the owner of a copy of a computer program. However, industry practice since the sixties had been to protect software through contractual means, i.e. by licensing instead of selling software. Thus, software copyright owners generally aim to limit copying by licensees, claiming they have not acquired the rights of an owner. One concern fueling this tendency is the principle of “first sale,” which generally limits the copyright owner’s rights to that first sale, but allows the buyer to resell the work without consideration being due to the author. Finally, the law does not distinguish between data and instructions when describing software only as instructions, where the former may well represent other types of information, including images.

Generally, when we think of copyright infringement, we think of somebody duplicating a work, either all of it or at least enough of it as to appropriate much of its value. Sometimes we even remember that a copyright can be infringed by publicly performing or displaying a work without permission, or by translating the work into another language or another form. But with software it is possible to infringe a copyright without copying all, or even a major part, of a work.

 

(1) Whelan v. Jaslow

The first appeals court to confront what copyright protects for a computer program beyond direct copying was the Third Circuit, in the case of Whelan Associates v. Jaslow Dental Laboratory. But the Third Circuit recognized that the dichotomy between idea and expression, codified in Section 102(b) of the Copyright Act of 1976, limits what might otherwise be found infringing. Jaslow argued that “the structure of a computer program is, by definition, the idea and not the expression of the idea, and therefore that the structure cannot be protected by the program copyright.” The mere idea or concept of a computerized program for operating a dental laboratory would not in and of itself be subject to copyright. Copyright law protects the manner in which the author expresses an idea or concept, but not the idea itself. Copyrights do not protect ideas – only expressions of ideas. There are many ways that the same data may be organized, assembled, held, retrieved and utilized by a computer. Different computer systems may functionally serve similar purposes without being copies of each other. There is evidence in the record that there are other software programs for the business management of dental laboratories in competition with plaintiff’s program. There is no contention that any of them infringe although they may incorporate many of the same ideas and functions. The ‘expression of the idea’ in a software computer program is the manner in which the program operates, controls and regulates the computer in receiving, assembling, calculating, retaining, correlating, and producing information either on a screen, print-out or by audio communication. The conclusion is thus inescapable that the detailed structure of the Dentalab program is part of the expression, not the idea, of that program.

(2) Kluge v Gentra

As we have seen in other cases, and other types of intellectual property, an important component or dimension of economic damages that can be recovered by plaintiffs are lost profits measured by a “reasonable royalty.” The determination of such royalty rate is not straight forward in most cases, and an expert’s experience is crucial to the determination of a suitable rate that does not fall into the trap of speculation.
An illustration of such a situation is the litigation involving Kluge Design, Inc. (“Kluge”), in relation to their intellectual property dispute with Gentra Systems, Inc. (“Gentra”) in 2003. In that case, the software involved was a specific type of embedded software, i.e., software incorporated into the circuitry of specific devices. The biggest challenge for the assessment of damages in this approach is to analyze a hypothetical situation without leading into speculation.
The analysis of a reasonable royalty typically begins by considering the range of royalty rates derived from a series of comparable arm’s length transactions in the marketplace. Naturally, however, few licensing agreements in intellectual property in general, and software in particular are perfectly comparable. Thus the appropriate comparable range can only be derived after an expert consideration of contextual factors such as the growth prospects of the device within which the software is used, in terms of the market dynamic and the competitive advantages the software may represent, exclusivity, scope of territory or application, among others. These additional factors allow the full range of royalty rate to be narrowed down to a more likely range where a hypothetical negotiation between willing buyer and seller would have taken place. In this case, the full spectrum of rates was found to range from a low of 2.5% of sales, to a high of 15.0% of sales. The more appropriate range for the case, however, was determined by the plaintiff’s experts to be 5.0% to 8.0%.

Furthermore, even a hypothetical negotiation has additional limits. The licensor cannot be assumed to be “willing” to enter into a transaction unless profitability meets the level of their full costs plus the prevailing market-driven profit. The licensee, on the other hand, must also find the license cost still allows for a reasonable profit. Within those limits, the negotiation ensues in the context outlined in the analysis of the royalty rates. Both aspects of the analysis are important to give a sound basis to the royalty rate conclusion, thus minimizing the risk of having the damages award dismissed on grounds of being speculative.


Thus book authors would not be entitled to the additional market value of first editions re-sold at higher prices some time after publication. This is not expected to translate directly to software.

Trademark Damages After Mattel v MGA

The recent opinion from the Ninth Circuit Court of Appeals in the long-running Mattel v MGA Entertainment [Bratz(R)] case reiterates an important, and often overlooked, aspect of trademark damages calculations: the apportionment of damages attributable to the specific item of Intellectual Property at issue.  This aspect of trademark infringement damages is susceptible of being overlooked by plaintiffs’ experts focused of strictly proving lost revenue, and is of prime importance to defendants’ experts proving suitable deductions from revenue to derive lost profits.

This important topic is one of the three main points made in the Appeal Court’s opinion, which is discussed further in the IPmetrics website .  Other lessons for business are highlighted on the IPmetrics Blog.

Top Three Lessons From The Woody Allen Lawsuit

Woody Allen wins the largest amount ever paid under the New York Right to Privacy Act from American Apparel. What lessons can be drawn from the $5 million settlement?

First Lesson: In a saturated advertising market, the need to stand out is extremely powerful. With the level of attention celebrities get in consumers’ minds, some advertisers succumb to the unauthorized use of celebrities, increasing the commercial gain. In this case, for the past two years, American Apparel brought significant attention to its brand, beyond the bounds of its target customer base, at a time when it became publicly traded and expanded publicity was welcome by investors. Even if an unauthorized campaign is “quickly” withdrawn, it will have reached the bulk of its potential audience. Legitimate brands pay top dollar for immediate recognition and attention-grabbing graphics.
Second Lesson: The fair market value of celebrity endorsements and advertising may be negotiable, but it is not getting any cheaper to use iconic celebrities. Few celebrities come to mind with greater iconic association as New York and Woody Allen. Despite its claims to the effect that Woody Allen’s negative publicity in the wake of his 1992 break-up would have reduced his commercial value, American Apparel ended up settling for a landmark amount rather than risk losing even more in a trial.
Third Lesson: Celebrity – Brand pairings work both ways. Associating any brand to a famous celebrity is not only commercial speech, but it also transfers the brand’s attributes and reputation to the celebrity. “A brand is much more than its products” is the mantra of marketing executives worldwide; it also includes attitudes and public reputation. The risk of tarnishing a celebrity’s image with unwanted associations will undoubtedly increase the fee, if not kill the deal.
The lawsuit was brought about because of the California-based clothing company’s unauthorized use of Woody Allen’s image and likeness for advertising purposes on billboards and the Internet. I had the opportunity of being asked to review the facts of the case and prepare a report quantifying the amount of damages due Woody Allen.
After performing an extensive value analysis of the celebrity advertising market, I was able to determine a fair market value range for the misappropriated advertising services. In most cases involving rights of publicity, a key challenge is defining the suitable market and obtaining relevant market data.
With the settlement, American Apparel avoided the risk of being found liable for punitive and other damages, in addition to the fair market value of the misappropriation. Given the characteristics of the market, I would expect Woody Allen’s fair valued fee to be no less than the third quartile of the market distribution, approximately $5 million, and may certainly be more considering the negative connotations of the unauthorized use.

Trademark Values in Corporate Restructuring

Abstract

In corporate restructuring under Chapter 11, an asset valuation is a central task for both legal and financial reasons. In the area of intangible assets, however, generally accepted accounting principles (GAAP) do not reflect internally-generated assets such as brands, trademarks, and other intellectual property. In practice, arbitrary rules of thumb are used to fill this gap, and closure, liquidation, financing, and restructuring decisions are made on this basis.

This paper reports the progress that has been made so far in developing theoretical and empirical bases to improve trademark valuation in corporate restructuring. The model and the applied results have been incorporated since 2006 in some of the most significant corporate restructuring cases in the U.S.

The econometric study of trademark values in liquidation and reorganization presented is based on new data being generated as a result of self-regulatory changes in financial accounting –specifically those brought about over the last six years by FASB’s statements 141 and 142 (as well as the international IFRS-3 standard).

The new accounting framework for business combinations requires acquiring entities to perform a detailed purchase price allocation that segregates the values attributable to trademarks and other IP from general Goodwill. Publicly traded companies generally disclose these itemized values in their SEC filings. Recently, we have begun building a database of pre-merger revenue information in combination with specific trademark value allocations from a variety of acquisitions occurring in both liquidation and going concern contexts. Our initial results are consistent with the severe reduction in value that has come to be expected, but reflect a statistically significant non-linearity that has substantial financial impact in large cases.

Presented at:
Western Economics Association International
82nd Annual Conference
, July 1, 2007
Session 94: Topics in Corporate Structure