PIUG 2021 - Wednesday

12

PIUG 2021  WEDNESDAY  Virtual Meeting

 W E D N E S D A Y A F T E R N O O N 12 : 4 5 P M – 4 : 0 0 P M

Finding Needles in the Haystack: Identifying Valuable Assets Using Citation Analyses Kevin J. Hess (HTS LLC) 1:45 – 2:20 pm

 ABSTRACT Many factors, both intrinsic and extrinsic, have been reviewed as predictors for patent value, including claim length, family size, prosecution length, citations, etc. Citation analysis considers patent documents that are cited by or citing to a subject patent – typically referred to as backward and forward cites, respectively. Citation counts may suggest whether the subject patent is foundational or derivative. However, more information can be derived from cites to a subject patent made in later rejection arguments by Patent Examiners, frequently termed “rejection analysis”. In this presentation, an overview of the field citation analyses is provided. A case study is developed to demonstrate how rejection analysis can be used to identify patents of value. A portfolio is analyzed to identify the patents cited in Examiner arguments. In conjunction with other comparative metrics, rejection‐cited patents are ranked and used to identify competitors with interest in the same markets. Company revenue data and portfolio size are used to map potential engagements for licensing, acquisition, or divestiture. The priority of these “rejecting” patents relative to the maturation of the subject technology can be used to determine how fundamental the assets are to the field, providing additional guidance as to how to determine which engagement scenario to pursue.  BIOGRAPHY Kevin Hess is patent analyst and programmanager at HTS LLC (HighTech‐Solutions), a technology firm focusing on intellectual property consulting for the wireless, video, telecommunications, semiconductor, battery, and consumer electronics markets. Kevin is also a subject matter expert and founder at Patent Technics LLC which specializes in patent technical analysis for the semiconductor, LED lighting and display, and additive manufacturing (3D printing) markets. Kevin’s IP experience has spanned many stages of the IP lifecycle, including: inventing, prosecution support, market analysis and valuation, reverse engineering, claim charting, and licensing/litigation. His areas of interest are patent analytics, IP landscaping and taxonomy development. His industry experience includes R&D and product development positions at Tyrex Corporation, Freescale Semiconductor, Motorola, Huntsman Corporation, Phillips‐Sumika, ConocoPhillips, and JemPac, a semiconductor startup. Kevin is a named inventor on over 50 US and foreign patents granted in semiconductors, electronics, and materials. He has published on patent search strategy, semiconductor device design and reliability, and polymer materials formulation. Kevin holds a Ph.D. in Chemical Engineering from the University of Texas at Austin. His interests include music and guitar collecting.