Law Department As Profit Center Strategies for Going from Cost Center to Revenue Generator

Transcription

1 REUTERS / Jason Lee Law Department As Profit Center Strategies for Going from Cost Center to Revenue Generator Panelists Tom Sager, Partner, Ballard Spahr LLP Carl Bilicska, Partner, VP Licensing & Senior Counsel, TnT IP LLC Dolly Voorhees Davis, Assistant General Counsel, Office Depot ACC ANNUAL MEETING 2016 October 17, 2016 Moderator James Partridge, Senior Legal Editor, Practical Law Agenda Introduction Revenue-Generating Opportunities Office Depot Alcatel-Lucent DuPont Creating a Revenue-Generating Program Building the Business Case Designing and Implementing the Program Measuring and Communicating Success Q & A Key Takeaways 2 1

2 Revenue-Generating Opportunities 3 Revenue-Generating Opportunities Commercial contract enforcement Manufacturer makes product out-ofspecification Non-payment by customers Goods damaged in transit Anti-dumping and duty suspensions Bankruptcy claims Disputes resolved by future business Misrepresentation in advertisements made by competitors Insurance coverage Class action opt-outs Real estate agreements Intellectual property monetization Enforcement Licensing Disagreement for services in M&A transactions Audits of contractors or licensees reveal improper charges or underpayments 4 2

3 Dolly Voorhees Davis Assistant General Counsel Office Depot 5 Overview of Office Depot s Initiatives Class Action Opt-Outs Example: LCD litigation Insurance Coverage Litigation of patent infringement, class actions, and personal injury Large Contract Enforcement Real estate cases an eye to revenue generation 6 3

4 Results March 2012 November 2015 Total recovery of $44.9M estimated 400% improvement over class settlement 7 Edit presentation title on Slide Master using Insert > Header & Footer Carl Bilicska Partner, VP Licensing & Senior Counsel TnT IP LLC 8 4

5 Overview of Revenue-Generating Avenues in IP Defensive Value; Freedom to Operate Debt Financing Enforcement Programs Mergers, Acquisitions and Divestitures Licensing Programs Sales and Divestitures Traditional Royalty Bearing or Technology Licenses Special Purpose Vehicles (SPVs) Outsourcing to a Service Entity 10 IP Monetization Patent sale without any backend Monetization Value Patent sale with significant backend Creation of a patent trust Creation of a special purpose vehicle (SPV) Outsourcing to a servicing entity; and Traditional royalty bearing patent or technology licenses negotiated by the entity holding the patent(s) Risks, costs and Time to Money 5

6 Tom Sager Partner Ballard Spahr LLP 13 Overview of DuPont s Program Program started in 2004 Legal driven Collaboration with DuPont businesses & functions Strategy: Educate and inform Leverage resources Create data driven disciplined process Transform culture ( Developing Edge ) Celebrate successes 6

7 Results By the Numbers: Cumulative recoveries exceed $2.674 Billion Over $100MM in recoveries annually Number of 2013 recoveries: 98 Cultural: Visible leadership Increased collaboration Positive culture change Global impact Creating a Revenue-Generating Program 16 7

8 Building The Business Case Benefits to the business Risks to the business Costs and how the company will pay them Potential return on investment How long it will take to see the return 17 Designing the Program Define recovery Consider the types of matters that will be pursued Decide whether the program will be formal or informal Identify who will lead it Determine the proper role of the business Understand the role of outside counsel 18 8

9 Implementing the Program Determine the Key Elements for Success Identify stakeholders and determine who should be: Responsible Accountable Consulted Informed Manage Change Decide and Manage Pace Tone from the Top Matters Understand and Address Cultural Challenges Celebrate Successes 19 Measuring and Communicating Success 20 9

10 Measure and Communicate Success Understand the key benefits of measurement Determine what to measure Develop communication plan What information to provide How often to communicate Who should be informed What media should be used 21 Questions 22 10

11 Key Takeaways Not necessarily a litigation-driven program Though litigation is always an option Most revenue can be obtained with in-house resources at little or no cost Though outside counsel involvement is still very important Must be sensitive to existing customer/supplier relationships Any claims or litigation must be reviewed in advance with the business client Program succeeds best when driven from the top Process is evolutionary, not revolutionary iterate, iterate, iterate Provides legal with a great opportunity to contribute measurably to company s performance Opportunities are always present Keep an open mind Programs must be actively managed and promoted to drive alignment and buy-in 23 11