The top two monetization deals from universities have received more revenues than the combined revenues of technology transfer for all universities reporting to AUTM. Yet, patent monetization is often seen in a negative light. Corporate licensing relies heavily on patent monetization and a company like IBM produces close to two billion dollars in annual revenues year after year. There are certain nuances of patent monetization that a university should adopt, which can be regarded as ethical licensing. The cornerstone of ethical licensing is to ensure patents utilized in a monetization campaign are of the highest quality and that the university takes every precaution to preserve its reputation. If it is the first time that a university is considering patent monetization, certain best practices from the corporate side before launching a campaign. This panel of highly experienced patent monetization experts will discuss the financials, due diligence, public perceptions, and legal implications of carrying out a highly successful patent monetization program.

1. What to know if it is your first rodeo in patent monetization

2. Speakers: Dr. Shilpi Banerjee, Deputy General Counsel, Nationwide Children’s
Hon. Andrei Iancu, Partner, Irell Manella (Former Director USPTO)
Dr. DJ Nag, President, Innovaito
Moderator: Professor Chris Turoski, University of Minnesota
What to know if it is your first rodeo in patent monetization

3. 3
Who Starts the Rodeo?
Advisory Firm
Advisory firm analyzes
university patent portfolios
identifying patents that
possess significant commercial
value, conducts market
assessment, and prepares
evidence of use charts and
economic impact analysis.
Law Firm
Law firm fine tunes the
analysis on the most relevant
patents.
Law firm represents the
university in licensing and
enforcement actions.
Funder
Funder funds those efforts
enabling the university to realize
untapped value without
incurring any attorneys’ fees or
out-of-pocket costs.
Funder only recovers its
investment if the university is
successful.

4. Process of the Rodeo: Let’s GO!
Pre-diligence Diligence
Valuation
and market
size
Validation Negotiation License
Commence
enforcement
Sorting
through
patent to
find the
“nuggets” –
AI/ML
Is there
value in
licensing;
what is the
market size
Establish
relevant
product
and
licensees
Opening
the
discussion
with the
licensee
Legal
validation
of the
business
model
If licensee
refuses to
take a
license
proceed to
assertion
Will the
licensee
take a
license?
Advisory Firm Advisory Firm
Law Firm
Advisory Firm University
Law Firm
Funder
Advisory Firm
Law Firm
Advisory Firm
Law Firm

5. WHY MONETIZE NOW?
Funding
Legal
excellence
AI
Technology
• Advisory service from experienced
team - at no cost to the University
• Access to proprietary AI based
patent claim analysis platform
• Access to one of the largest funders
in the IP space
• Top law firms who are experienced
in licensing and litigation – at no
cost to the University
Project Timeline Template
Engagement with
Innovaito
Finalize the
business
structure with
University
Finalize
Infringement
analysis
Perform due
diligence and
prepare Rule 11
claims charts &
detailed
damages
analysis
Engagement
with Law Firm(s)
& Funder
Officially
engage with law
firm(s) & Fund.
Prepare
complaints (s) &
engage with
licensees
Prepare
complaints and
attempt to
negotiate with
licensees
File complaint
File complaint
and proceed to
litigation if
negotiation
unsuccessful
Trial
File complaint
and proceed to
litigation if
negotiation
unsuccessful
Advisory firm

6. Time to trial and Inter Partes Review

7. Stay the course in the Rodeo!
Our combined experience allows us to:
1. Analyze and find value of your
existing intellectual property portfolio
2. Assist to form entities to
commercialize your intellectual
property
3. License your intellectual property
4. Identify and enforce violations of your
intellectual property rights

8. Partnership of Advisory and Law Firm with the
University: Unlocking IP Value
The law firm and advisor partnership brings
together all resources necessary for universities
to get the maximum value from their IP
portfolios:
1. The law firm and advisor have the technical
expertise and experience to properly
analyze and value intellectual property
portfolios
2. Advisor, law firm collaborate with TTO for
difficult patent licenses
3. The law firm leads any patent enforcement
actions

9. Universities
are not
Patent Trolls
University Patents Are Best for Monetization
Reference: PwC litigation Study 2018

10. “TOP RIDERS”
DAMAGES
AWARDS

11. Top University awards
University as Plaintiff Defendant Award
Date Award Was
Granted
University of Florida Board of Trustees Hartmann's Plant Company $1 million 21-Jul-17
University of Chicago 10X Genomics $34.4 million 28-Aug-19
Carnegie Mellon University Marvell Technology Group $750 million 17-Feb-16
Wisconsin Alumni Research Foundation (University of
Wisconsin-Madison) Intel $110 million 5-Oct-09
RPI Apple $24.9 million 19-Apr-16
Caltech Apple; Broadcom $1.1 billion 29-Jan-20
Cornell University HP
$184 million (verdict);
unknown
May 30, 2008; June 9,
2010
University of Missouri Par Phamarceutical Inc. $100 million 22-Sep-14
University of Pittsburgh Varian Medical Systems Inc. $35 million 10-Apr-14
University of Texas
Nippon Telegraph and Telephone
Corp. $30 million 6-Oct-08
Regents of University of California ev3; Boston Scientific Corp., et al. $11.7 million 31-Oct-07

12. Thank you!

13. 13
EDUCATION
Focuses on IP litigation and counseling
Former director of the U.S. Patent and Trademark Office (2018-2021)
Former managing partner of Irell & Manella (2012-2018)
Recently co-founded the Renewing American Innovation Project at the
bipartisan Center for Strategic and International Studies (CSIS)
Widely recognized for his work, including earning the 2020 “Excellence
Award” from the American Intellectual Property Law Association, and the
2020 IEEE-USA “Award for Distinguished Public Service”
1800 Avenue of the Stars
Suite 900
Los Angeles, CA 90067
T: +1.310.203.7537
F: +1.310.203.7199
E: aiancu@irell.com
Andrei Iancu
Irell & Manella Partner
UCLA School of Law (J.D., 1996),
Order of the Coif; Melville B. Nimmer
Copyright Award
University of California, Los Angeles
(M.S., Mechanical Engineering, 1990),
Departmental Scholar; Hughes
Masters Fellow
University of California, Los Angeles
(B.S., Aerospace Engineering, 1989),
with honors

14. About InnovAito
Pre-eminent patent monetization advisory service
turning inactive patents into revenues
Think tank that provides consulting services creating
ROI for academic clients; worked with more than 80+
universities around the world
Leading technology commercialization and monetization
for startups
Currently managing IP monetization for over 10
portfolios that includes six active litigations from
different patent cases in U.S. federal court
14
Dr. DJ Nag
President
InnovAito, LLC

15. Backup Slides

16. Learning objectives
1.What is patent monetization and how does it differ from a typical licensing deal?
2.The process of due diligence for patent monetization - how do you choose patents which
would be great candidates for monetization?
3.What are some of the intangibles at institutions that prevent patent monetization?
4.How do you convince your institution about patent monetization?
5.The business model for patent monetization? Who pays for it? What's in it for me? What do
net revenues vs gross revenue really mean in the context of monetization?
6.Legal considerations for patent monetization. What are some of the risks?
7.How long does it take? How do the recent policy changes and case law impact patent
monetization?
8.Is patent monetization ethical?
9.These and many more topics will be covered in great detail with an opportunity to ask
questions to the panelists who are world-leading experts in business, legal, and policy matters.