TechIPm Research

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Patents with Monetizing DNA: An Example of Case Studies
I. Introduction
On April 7, 2015, the USPTO issued U.S. Patent No. 9,000,000. Even if there were so many patents that were issued up to now,
however, the number of patents that were commercially exploited and monetized successfully was very small. This is similar to the
situation that, even if there were so many innovators and entrepreneurs, only small numbers achieved commercial success from their
ideas.
In “The Innovator's DNA”, the authors identified the code of successful innovators that distinguishes them from others based on the
case study of well known successful innovators such as Steve Jobses and Jeff Bezoses. The key lesson from the research of the
innovator’s DNA was that the successful innovators’ DNA is not simply genetic traits endowed, but that they can be developed. Then,
by the analogy, one can ask similar questions for patent: What make the monetizing patents different?; Can we find the code of the
monetizing patents?; Can we identify and develop the monetizing patents?
Monetizing patents protect the market for commercially successful products/services from competitors. Monetizing patents can be
exploited as financial/investment assets or through licensing to other parties for additional cash flow. Followings are the monetizing
patent’s DNA uncovered from the case study of carefully selected monetizing patents through the integrated technology, legal and
business analysis.

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• Monetizing patents solve the right technological problem: the right technological problem is a problem in great needs of
improved/innovative solution; the right technological problem is recognized well in an industry; the right technological
problem leads to a solution that has great business impacts; the solution of the right technological problem follows the correct
evolutionally pass for emerging technology.
• Monetizing patents practice value innovation: monetizing patents provide unique value proposition with maximum market
protection; monetizing patents provide values to customers without additional cost/pain or infrastructure/process change
requirements.
• Monetizing patents actively participate in the business ecosystem: monetizing patents can be a platform or integrated into a
platform; monetizing patents form a dominant design or industry standard; monetizing patents form diverse value chains;
monetizing patents derive the value for M&A.
• Monetizing patents are legal savvy: monetizing patents are created following the case laws and statutes to obtain maximum
legal rights; monetizing patents are the litigation-proof patents; monetizing patents adapt to the dynamic changes of legal
environment.
II. TiVo Case Study

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TiVo patent US6233389 is an invention regarding the digital video recorder (DVR). Today, many digital set-top boxes include the key
functionality of US6233389. TiVo monetized US6233389 through licensing and litigation including $500 million settlement with
EchoStar and $490 million settlement with Google and Cisco.
Monetizing DNA of US6233389
Monetizing DNA Details
solve the right
technological
problem
The viewer stores TV programs onto magnetic tape using the VCR. The VCR can pause the
program playback whenever he desires, fast forward through unwanted program material or
commercials, and to replay favorite scenes. However, a VCR cannot both capture and play
back information at the same time. The invention provides an easily manipulated, low cost
multimedia storage and display system that allows the user to view a television broadcast
program with the option of instantly reviewing previous scenes within the program. In
addition, the invention allows the user to store selected television broadcast programs while
the user is simultaneously watching or reviewing another program: solve a problem in
great needs of improved/innovative and recognized well in an industry
An embodiment of the invention accepts television (TV) input streams in a multitude of
forms including digital forms such as Digital Satellite System (DSS), Digital Broadcast

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Services (DBS), or Advanced Television Standards Committee (ATSC): leads to a solution
that has great business impacts (with the development of digital TV and broadband
internet access)
The invention can be used in the detection of gambling casino crime. The input section of
the invention is connected to the casino's video surveillance system. Recorded video is
cached and simultaneously output to external VCRs: follows the correct evolutionally pass
for emerging technology (e.g. applications in smart home/building security system)
practice value
innovation
An embodiment of the invention accepts television (TV) input streams in a multitude of
forms including digital forms such as Digital Satellite System (DSS), Digital Broadcast
Services (DBS), or Advanced Television Standards Committee (ATSC): provide values to
customers without additional cost/pain or infrastructure/process change requirements
by being included in the current digital systems
Although a VCR is specifically mentioned, any multimedia recording device (e.g., a Digital
Video Disk-Random Access Memory (DVD-RAM) recorder) is easily substituted in its
place: provide unique value proposition with maximum market protection; The invention

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can be used in the detection of gambling casino crime. The input section of the invention is
connected to the casino's video surveillance system. Recorded video is cached and
simultaneously output to external VCRs: provide unique value proposition with
maximum market protection
actively participate
in the business
ecosystem
HBS Professor Iansiti, the author of “The Keystone Advantage,” suggested technological
assimilation as a new engine for technological innovations in his article “Creative
Construction.” In the technological assimilation frameworks, a core innovation that once
provided stand-alone products or services for a specific market can be the building blocks
for mass market generating innovations through assimilation to broader platforms that were
not existed at the time of innovations. A good example may be the GPS technology
providing LBS (location based services) applications for smartphones and automobiles.
Another good example may be the DVR technology of TiVo that was integrated into digital
set-top box and smart home platforms: can be a platform or integrated into a platform
legally savvy 4 US Families/ Total of 16 independent claims/High in different kind of statutory claim
types: protection against invalidation
Exploited in 9 litigations and won the cases: litigation-proof

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For more information regarding the methodology for identifying and developing monetizing patents, please contact
Alex Lee at alexglee@techipm.com .