B U I L D I N G D O M I N A N T I P S T R AT E G I E S MDB CAPITAL INTELLECTUAL PROPERTY DEVELOPMENT SERVICES
The IP Investment Bank
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IP Development Services (“IPDS”) Mission Build strategically positioned IP portfolios that protect competitive advantage and create licensing revenue streams Strategic IP Portfolios Provide Several Benefits Product Leadership
Sustain margin or volumes by protecting critical feature sets
Innovation Protection
Extract value from research investments, position future products
Partnership Enabling
Leverage technology expertise into one or more market verticals
IP Licensing
Generate revenue and protect market ecosystem
IP Asset Sales
Divest non-strategic IP separate from the business
Market Signaling
Grow portfolios to indicate innovation activity
Exit Opportunities
Entice strategic buyers with well positioned IP
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Case Study: Consumer Electronics TiVo Incorporated (NASDAQ: TIVO) • IP-based digital television recording innovator was unable to prevent fast followers from copying • IPO in 1999 with only 1 patent • 4.36 million subscribers in January 2006; 2.3 million by January 2012 Universal Display Corp (NASDAQ: PANL) • IP-based OLED innovator licenses its innovations to players such as Samsung, LG, and Konica Minolta • IPO in 1996 with 6 patents; 18 patents within a year; 162 patents today • Sales of $11.9 million in 2006; $61.2 million in 2011
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Characteristics of Dominant IP Portfolios A strategy for developing a dominant IP portfolio can grow a small business with disruptive technology into a $1 billion enterprise
Foundational
Integrate IP and business strategy development
Sufficiently Large
Prevent competitors from designing around small portfolios
Rapidly Scalable
Strike quickly while technology is truly disruptive
Never Ending
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Capture new innovation continuously
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Fully Integrated Service Offering MDB Capital Group Public Venture Banking Pre-IPO Financings IPOs Follow-On Financings
IP Development Services Invention Discovery IP Strategy Design Patent Filing Execution
Capital Markets Research Equity Sales & Trading Post-Financing Marketing
MDB Capital is Wall Street’s only IP-focused investment bank • 15 years of experience launching technology companies with strong IP portfolios • Many clients have achieved market valuations of $1 billion or more IPDS leverages MDB’s technology banking experience to provide a fully-integrated service • MDB’s banking heritage gives IPDS unique insight into aligning IP and business strategies • IPDS services are available to MDB banking and non-banking clients alike
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Current Disjointed Patent Development Process IP development requires cooperation from market, engineering, and patent experts, who may not work together well
Managers have market expertise, but may be distracted by managing day-to-day operations
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Inventors have expertise in engineering, but may be siloed off from the rest of the company
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IP counsel has patent expertise, but as a 3rd party may be removed from business goals and engineering realities
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Integrated IPDS Process Organizations can optimize their ability to innovate by integrating teams and prioritizing intellectual property development
Our investment banking background keeps business strategy at the forefront
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Our dedicated engineering team enables rapid scaling of patent application filing
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PatentVest,® our proprietary database, provides unique insights into IP landscapes
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Full-Spectrum Strategic IP Development IPDS combines front-end expertise in developing strategic IP portfolios with back-end infrastructure to execute filings
Discover
Design
Execute
MDB audit team interviews both internal and external stakeholders
Management reviews each invention for prioritization on business objectives
Draft patent applications with input from inventors, management & attorneys
Develop inventory of existing inventions and understand technological differentiators
Develop framework for IP evaluation on technical and competitive perspectives
Refine IP strategy continuously to generate new inventions and support business needs
Inform strategy via additional analysis and IP landscaping using MDB’s proprietary tools
Finalize IP strategy and innovation plan with inventors and management
Protect against commoditization and copying by fast followers
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MDB’s Proprietary PatentVest® Database Discover
Design
Execute
PatentVest® develops insightful IP landscapes to target high-ROI innovation • Measures, scores, and ranks US patents by company and portfolio • Parses data on over 4,000 public and private companies • Contains >4 million US patent grants, and >2 million US patent applications • Staffed by 10 highly-qualified technicians engineers; 75,000+ man-hours invested Company Company Reports Reports!
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PatentSearch! Search Patent
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Patent Filings! Filings Patent
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PatentVest® Illuminates an Industry’s IP Landscape Design
Discover
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Case Study: Client needed to understand energy grid storage IP landscape Energy Grid Storage Patent Filings by Technology Area and Energy Control TechnologiesAmple whitespace in these areas Many inventions in these areas -Power limited whitespace 180
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Apps
Modularity
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Onboard Electronics & Software
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Common DC Bus
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Intelligent Management Design & Algorithms
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Single Point of Grid Connection
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Simultaneous and Dynamic Support of Varied Load types
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Electronics Bridge Topologies and Control Algorithms
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Next Tech
Dyna Power
Xantrex (acquired by Group Schneider)
SMA
A123 Systems
Active Power
Satcon
Enersys
Cranfield University (UK)
Axion Power International
Ingeteam
Varentec
Danotek
Validus DC Power (acquired by ABB)
Green Charge Networks (part of Prosser Group)
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Universal Auto Tuning and Adjustment or SelfConfiguartion Schemes
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DC Bus Control (could include PIDE ramp control loops)
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Remote or PreDeployment or PreCommissioning Configuration
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IPDS Core Design Principles Discover
Design
Execute
IPDS leverages MDB Capital banking expertise to design a strategy that maximizes return on IP investment
Strengthen
Focus on interlocking and value driving portfolios over individual patents
Optimize
Provide best practice architecture solutions for quality, cost, and speed
Expand
Generate new innovation through detailed review with company experts
Prioritize
Create a framework and methodology for new invention assessment
Align
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Collaborate with all stakeholders to develop high-quality solutions
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Execute IP Filings with Maximum Efficiency Discover
Design
Execute
• IPDS’s dedicated engineering team extends clients’ core innovation capabilities and rapidly scales invention disclosure drafting • IPDS integrates with TeamPatent®, an intelligent patent drafting software application
– Secure online collaboration workspace with patent-specific word processor and validation system
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A turnkey solution for strategic IP portfolios IPDS is the only service that combines investment banking expertise with a dedicated team of patent drafting engineers
Discover
Design
Establish process to analyze and categorize IP in technical and competitive axes
Execute
Act as extension of company resources to eliminating conflicts and bottlenecks
Dedicated engineers leverage TeamPatent to streamline and scale the patent filing process
[IPDS has] clearly put a lot of resource, in terms of both time and money, into their work… [and] their approach was sober, level-headed and non-sensationalist (and, no, we do not have any kind of commercial relationship with them!). - Joff Wild, managing editor of Intellectual Asset Management, IAM blog, 21 Feb 2013
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IP Development Services Leadership Michael Chernoff, Chief Intellectual Property Officer. With over 20 years of IP experience, Michael Chernoff oversees patent portfolio development for the IP Development Services division of MDB Capital Group, Wall Street’s only intellectual property investment bank, as its Chief Intellectual Property Officer. Prior to MDB, Mr. Chernoff was the Director of Legal Services, Patent Operations, for Accenture, where he led the global patent legal team of the $28.6 billion, 280,000 employee company. He also served as an Associate Patent Counsel for WorldCom, where he managed patent prosecution for their Voice over IP (VoIP), SkyTel, and UUNET patent portfolios. Mr. Chernoff began his career as a Patent Examiner at the U.S. Patent and Trademark Office, examining mobile phone and hybrid video/communication patent applications. He is continuously sought after for high-profile IP speaking engagements, and is a Registered Patent Attorney. He has a J.D. from George Mason University and a B.S., Electrical Engineering from Carnegie Mellon University. Adam Holiber, Managing Director and Head of Business Development. Mr. Holiber came to MDB from Intellectual Ventures where he was responsible for raising fund capital of $5B for IP focused investments and subsequently worked as a licensing executive in their multi-faceted and innovative licensing organization. Mr. Holiber is a veteran of Wall Street with over 25 years of investment analysis, institutional sales, and portfolio management experience. Mr. Holiber graduated from Cornell University with a B.A. in Physics and subsequently earned an MBA in Finance from UCLA’s Anderson School of Management. His early career involved service as a U.S. Air Force Captain where he worked on development of technical integration standards for the Space Shuttle program. He is a Chartered Financial Analyst. S E E I N G
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IP Development Services Leadership John Wootress, Director of Intellectual Property Development. Leveraging over 15 years of intellectual property experience, John manages the IP strategy research, prior art searching, patent drafting, training, and tracking and reporting efforts of MDB’s engineering staff for the IPDS division of the firm. Prior to MDB, Mr. Wootress was Deputy General Counsel and managed all areas of intellectual property at Belkin International, Inc. He also served as an Associate General Counsel for Aristocrat Technologies, Inc. and as an Associate at Merchant & Gould, P.C. where he drafted and prosecuted patent applications for software, analog electronics, touch screen systems, and semi-conductor processing on behalf of clients including Microsoft, National Semiconductor, and 3M. Previous to completing engineering school, John served as a commissioned officer and non-commissioned officer in the Infantry and Special Operations branches of the United States Army Reserve. John holds a Master of Laws in Intellectual Property from The John Marshall Law School in Chicago, and a J.D. from Gonzaga University School of Law, where he also earned a B.S. in Electrical Engineering. John has several Bar admissions including: Washington State Bar Association, U. S. District Court for the Western District of Washington, United States Patent Bar, and California In-house Admission.
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MDB Team: IP Development Services Michael B. Chernoff
Adam Holiber
John Wootress
Chief Intellectual Property Officer
Director of Business Dev, IPDS
Director of IP Development
Jose Algaba
Oscar Chow
Project Supervisor
Project Supervisor
Milton Gomez
Manuel Castro
Yessica Morales
Intellectual Property Analyst
Intellectual Property Analyst
Intellectual Property Analyst
Alejandro Delgadillo
Alejandro Delgadillo
Apolinar Picado, Ph.D
Intellectual Property Analyst
Intellectual Property Analyst
Intellectual Property Analyst
Alenka Bendana
Ramon Eyzaguirre
Karen Perez
Intellectual Property Analyst
Intellectual Property Analyst
Intellectual Property Analyst
Alejandro Borge
Horacio Lovo
Maria Alejandra Ramos
Intellectual Property Analyst
Intellectual Property Analyst
Intellectual Property Analyst
Enrique Blandon
Ivan Montero
Vilmaurora Castillo
Intellectual Property Analyst
Intellectual Property Analyst
Intellectual Property Analyst
Marco A. Cajina, PE Intellectual Property Analyst S E E I N G
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Headquarters - Dallas
Santa Monica
New York
Managua
2425 Cedar Springs Road
401 Wilshire Boulevard
1350 Avenue of the Americas
Embajada de Mexico,
Dallas, Texas 75201
Suite 1020
2nd Floor
una cuadra arriba,
310.526.5000
Santa Monica, CA 90401
New York, NY 10019
a la esquina, casa #100
310.526.5000
310.526.5000
Managua, Nicaragua 310.526.5000
The IP Investment Bank
Member FINRA/SIPC
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O T C R E A TC IR NE A G T IVNAG L VU AE L UOE T O H TE HRE SR S C CA ANN NN O T ..
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