What to know if it is your first rodeo in patent monetization 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. What to Know if it is Your First Rodeo in Patent
Monetization
· Dr. Shilpi Banerjee, Deputy General Counsel, Nationwide Children’s Hospital
· Andrei Iancu, Partner, Irell Manella
· Dr. DJ Nag, President, Innovaito
· Prof. Christopher M. Turoski, University of Minnesota (moderator)

3. 3
Out of the Gate -- 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. Rodeo Events: 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?

5. Rodeo Timeline
Advisory firm

6. Standoff at the O.K. Corral – Litigation Timeline
DJ TO INSERT LITIGATION TIMELINE

7. Here Comes the (Other) Judge – IPR Timeline

8. Top Riders – Patent Damages Awards (All)
8

9. Top Riders – Patent Damages Awards (University)
9
University as Plaintiff Defendant(s) Award
Date Award
Granted
Caltech Apple; Broadcom $1.1 billion 29-Jan-20
Carnegie Mellon
University
Marvell Technology
Group
$750 million 17-Feb-16
Cornell University HP
$184 million
(verdict); unknown
30-May-2008, 9-
June-2010
Wisconsin Alumni
Research Foundation
(University of Wisconsin-
Madison)
Intel $110 million 5-Oct-09
Columbia NortonLifeLock $185,100,000 2-May-22
University of Pittsburgh
Varian Medical Systems,
Inc.
$100,000,000[3][4] 25-Apr-12
University of Chicago 10X Genomics $34.4 million 28-Aug-19
Washington University
Wisconsin Alumni
Research Foundation
$31,600,000 28-Oct-20
RPI Apple $24.9 million 19-Apr-16
Boston University
Everlight Electronics Co.,
Ltd; Epistar Corp.; Lite-
On Inc.
$4,000,000;
$9,300,000;
$465,000
26-Apr-16
University of Florida
Board of Trustees
Hartmann's Plant
Company
$1 million 21-Jul-17

10. Universities
are not
Patent Trolls
University Patents Are Best for Monetization
PwC litigation study, 2018

11. Thank you!

12. Dr. Shilpi Banerjee
Dr. Shilpi Banerjee is Deputy General Counsel at Nationwide Children’s Hospital – leading team
handling licensing, transactional matters and litigation related to NCH intellectual property and
the research enterprise.
Previously served as Chief Intellectual Property Counsel at Memorial Sloan Kettering Cancer
Center - directed the Office of Technology Development's Intellectual Property and Research
unit.
Previously served as Counsel and Chair, Research and Education Practice Group at the
Cleveland Clinic - counseling the Clinic’s technology commercialization and corporate
venturing arm; served on the Cleveland Clinic’s Institutional Review Board, the Conflict of
Interest Committee and the Research Compliance Committee.
Practiced at Fish and Neave, Ropes and Gray LLP and Sidley Austin LLP - prosecution of
biotechnology and pharmaceutical patents, biopharma patent litigation, Hatch-Waxman
litigation.
Education
Stanford Law School, J.D.
Muscular Dystrophy Association Research Fellow, California Institute of Technology
Tufts Graduate School of Biomedical Sciences, Ph.D., Molecular Biology and Microbiology
St. Xavier’s College, Bombay University, B.Sc., Life Sciences

13. Andrei Iancu
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 900as
Los Angeles, CA 90067 Avenue
of the Stars
Suite 900
Los Angeles, CA 90067
1800 Avenue of the
Stars
Suite 900
Los Angeles, CA 90067
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. Dr. DJ Nag
Dr. DJ Nag is President at Innovaito, LLC.
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

15. Christohper M. Turoski
Christopher M. Turoski is the Director and Assistant Professor,
Patent Law Programs at the University of Minnesota Law School.
Turoski authored the treatises "Patent Claims," "Assets & Finance:
Intellectual Property in Mergers and Acquisitions," and "The
America Invents Act: A Guide to Patent Litigation and Patent
Procedure," each published by Thomson Reuters.
Turoski currently serves as President of the National Association of
Patent Practitioners. Previously, Turoski held a series of executive-
level positions at Cargill Inc., the largest privately held corporation
in the United States.
Turoski can be reached at CTuroski@umn.edu

16. Learning Objectives
• What is patent monetization and how does it differ from a typical licensing deal?
• The process of due diligence for patent monetization - how do you choose patents which
would be great candidates for monetization?
• What are some of the intangibles at institutions that prevent patent monetization?
• How do you convince your institution about patent monetization?
• 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?
• Legal considerations for patent monetization. What are some of the risks?
• How long does it take? How do the recent policy changes and case law impact patent
monetization?
• Is patent monetization ethical?
• 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.

17. Howdy Partner(s)
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Advisory Firm brings together all
resources necessary for Universities to
maximize value from their IP portfolios:
1. The Advisory Firm and the Law Firm bring
the technical expertise and experience to
properly analyze and value intellectual
property portfolios
2. The Advisory Firm and the Law Firm
collaborate with TTO for complex patent
license
3. The Law Firm leads any legal patent
enforcement actions

18. Bridging the Canyon – to Maximize IP Value
An Advisory Firm partners with a University
to:
1. Analyze and find the value of your
existing intellectual property portfolio
2. License your intellectual property
3. Identify and enforce violations of your
intellectual property rights
18