Sam Zellner, AT&T’s point man for patent portfolio development and monetization, was caught in a bind. With 5,000 issued and pending wireless patents under his charge, Zellner’s job was first of all to make sure that AT&T’s wireless portfolio — rated No. 2 in patent quality in the telecom sector by the Patent Board — was aligned with its business goals and adequately protected the company’s products and services. But his job also included identifying which of his wireless patents were most valuable, and then directing these for use in one of four ways:
• Could the patent be mapped to a standard and submitted to a pool?
• Was the patent suitable for licensing?
• Was it a good candidate for sale?
• Or did the patent’s greatest value lie in protecting AT&T products?
Unfortunately, Zellner found that the resources available to him to do his job were severely constrained, even at a company as large as AT&T. Typically, he would call upon a handful of wireless engineers and subject matter experts within the company to evaluate patents according to the valuation criteria above. Zellner’s only other option was to retain outside consultants at technical or reverse engineering firms. But here Zellner faced the same twin problems of siloed expertise and limited scale, as well as a third problem: cost. Consultants are not cheap.
In several other cases, adds Zellner, multiple researchers mapped a patent to several different sections of the same standard. “That gave me a lot more confidence in the value of those patents,” he says. And in the case of still other patents, the research crowd discovered that other companies were utilizing the claimed technology. As Zellner observes: “This kind of evidence of use is extremely important in considering a patent’s licensing or sale value.”
Overall, Zellner says that crowdsourced research for patent quality and value proved its value for AT&T. “Patents are assets created by the company, so we need to run this unit as a business and get a return on them,” he explains. “And because crowdsourcing was so effective, we’ve incorporated AOP into our regular IP development and monetization process. I’ve also started using AOP’s private platform internally to crowdsource other IP solutions in-house.”
The emergence of on-demand crowdsourced IP networks like AOP’s is sparking a disruptive shift in the corporate IP function, and proponents such as AT&T’s Sam Zellner say it will yield significant benefits to IP professionals of all types. These include:
• Freeing IP leaders from the constraints of limited internal resources.
• Enabling the evaluation and monetization of portfolios at scale.
• Facilitating the development of higher-quality, higher-value patents.
• Expanding the IP leader’s monetization toolkit.
Just how much that IP toolkit can be expanded is revealed by Brian Hinman, Chief Intellectual Property Officer of the $30 billion technology leader Philips. “For several years now,” he explains, “the AOP crowd has provided Philips with prior art information to help us assess the relative strength of our patent rights compared to third-party patent rights. More recently, we expanded our engagement with the AOP crowd for other IP support services, including identification of manufacturing and distribution channels for certain goods, tracking potential copyright owners, and exploring trends in particular technology domains.”
Hinman believes the crowd has made a difference. “AOP’s network has produced actionable intelligence that enabled us to make informed decisions regarding litigation strategy, patent enforcement or acquisition, innovation focus, and invention generation,” he says. “IP landscapes obtained from the crowd have also helped our understanding of the competitive landscape faced by some of our business units.”
In the age when Alice validity concerns and post-grant IPR challenges has turned patent quality and value into matters of vital concern, minimalist or pro-forma prior art and evidence of use research can no longer represent the standard of care. With IP portfolios now accounting for a substantial portion of firm wealth, scalable on-demand networks of patent, technical, and IP monetization expertise could be the wave of the future.
