Licensing Executives Society (U.S.A. and Canada), Inc. LES Standards Focus Group Meeting Pilot #3: Patent Licensing Entities Julie Mar-Spinola Finjan Holdings,

Licensing Executives Society(U.S.A. and Canada), Inc.

LES Standards Focus Group MeetingPilot #3: Patent Licensing Entities

Julie Mar-SpinolaFinjan Holdings, Inc.Draft: 7/21/14

Pilot # 3: Patent Licensing Entities (PLE)

2July 22, 2014 DRAFT: confidential

• Rationale:

– System is not broken, needs changes based on behavior, not business model.

– Promote credibility of licensing as an efficient transfer of rights in an effort to self-regulate and avoid government intervention


• Objectives and Focus:– To identify and isolate the real problems created by

unethical or bad-faith licensing behavior.– To establish an industry-wide acceptable set of

Licensing Best Practices that forms the minimal acceptable requirements for ethical licensing practices.

– To generate a multi-lateral discussion among diverse participants with diverse and/or unique issues about responsible business practices re patents.

April 18, 2023 DRAFT - CONFIDENTIAL 3


• Scope of the Committee’s Work– Agree name calling is not good– Agree patent system is not broken– Agree there ARE bad behaviors– Agree we can do better as a community of action– Behaviors may be the key, consensus?

• Benefits– Maximize efficiencies in licensing and litigation– Potential Judicial recognition of efforts to streamline

disputes– Less oversight by legislators and reformists– Reputation increased



• Prioritization/Sequencing of Work– Build Consensus– Establish timelines

July 22, 2014 DRAFT - CONFIDENTIAL 5




• Who benefits from creating “containers” for patent owners such as NPE’s, Trolls, PLE’s?– Are there rational (something more than

superficial) benefits to creating the containers?– Undue prejudice against the patent office and not

enough focus on behavior (the system is not broken)

– Has oversimplification actually compounded the problem and the path to resolving the actual issues?



• Questions for Roundtable Discussions (cont.)

– What are the top 3 disincentives for troll litigation?

– How are patent litigations between “Operating Companies” different from litigation between a PLE and an Operating Company?

– Are “Operating Companies” more willing to negotiate a license with an ethical PLE who conducts its business under acceptable licensing best practices?


Pilot #3: Patent Licensing Entities (PLE)

• Questions for Roundtable Discussions (cont.)

– For ethical PLE’s, what is the biggest challenge in negotiating a patent license with an Operating Company or non-PLE?

– Is practicing Licensing Best Practices sufficient to get over the “Patent Troll” presumption?

– Should there be a “quid pro quo” by prospective licensees when negotiating with an ethical PLE?


Documents

Licensing Executives Society (U.S.A. and Canada), Inc. LES Standards Focus Group Meeting Pilot #3: Patent Licensing Entities Julie Mar-Spinola Finjan Holdings,