Valuation and Dealmaking of Technology-Based Intellectual Property: Principles, Methods and Tools

Table of Contents

Title Page

Dedication

Copyright Page

Preface

Disclaimer

About the Author

Acknowledgements

CHAPTER 1 - Introduction to Opportunity Discovery, Valuation, and Dealmaking

Introduction: Technology D-V-D

Taxonomy of Technology Licensing

High Significance, High Ambiguity Contexts

Licensing D-V-D and Innovation

Going Forward

Notes

CHAPTER 2 - Risk and Reward

Uncertainty

Phronesis (Judgment)

Technology Uncertainty

More on Risk

Value and Price

Two Final Points on Buying and Selling

Notes

APPROACH I - Opportunity Discovery

CHAPTER 3 - Identifying and Prioritizing Technology Opportunities

Seller Opportunity Space

The Technology Box

Buy-Side Expressions of Value: The Wheelbarrow

Overview of Valuation Methods

The Six Valuation Methods

Conclusion

Notes

APPROACH II - Valuation

CHAPTER 4 - Method 1: Use of Industry Standards for Valuation

The Concept and Limitations of Industry Standards

Sources of Industry Standard Data and Information

Survey Results as a Source of Industry Standards Data and Information

Proposed or Established Norms

Shopped Term Sheets and Price Lists

News Sources of License Agreement Information

Journals, Proprietary Databases, Reports, and Consultants

Published License Agreements as a Source of Industry Standards

Court Cases/Judgments as a Source of Industry Standards

Patent Pools

Lifetime and Organizational Learning

Average Error

Concluding Observations and Cautionary Notes

Appendix 4A: Outline of Agreement between DuPont and University of Houston

Notes

CHAPTER 5 - Method 2: The Rating/Ranking Method, and Tool

Ubiquity of Rating/Ranking

Overview of How Rating/Ranking Can Be Used in Valuation

Groups and Grouping as a Fundamental Knowledge Forming Process

Using Rating/Ranking to Value Technology: Factor Assessment

Developing Criteria for Using Rating/Ranking for Valuation of Technologies

Illustrations of Applying the Rating/Ranking Method

Issues in Interpreting Value from a Rating/Ranking Result

Using Rating/Ranking to Value Technology: Classified Value

Uses of Rating/Ranking with Approaches and as a General Tool

Perspectives on Rating/Ranking as an Approach with Licensing

Knowledge, Uncertainty, and Humility

Conclusion

Appendix 5A: Factors in Pricing License

Notes

CHAPTER 6 - Method 3: Rules of Thumb to Determine Valuation

Foundations of Rules of Thumb

Cost Savings Example of the 25 Percent Rule

Perspectives on the 25 Percent Rule

Use of the 25 Percent Rule for Apportioning New Profits

Examples of Applying the 25 Percent Rule to New Profits Licensing

A Universal Rule of Thumb Chart

Other Percent Rule Values

Some Misuses / Misapplications of the 25 Percent Rule

Other Valuation Rules of Thumb Used (or Have Been Proposed)

Summary Points on the Use of the 25 Percent Rule

Conclusion

Notes

CHAPTER 7 - Method 4: Discounted Cash Flow Method to Determine Valuation

Overview of the DCF Method

Basic Financial Concepts

Quantification, Classification of Risk

An Example Cash Flow Projection from a License

Additional Considerations for Calculating DCF

Segment and Scenario Analysis

Segment Analysis

Cash Flow Projections

Cash Flow (GCF) Corporate Examples

Other Issues to Be Considered with the DCF Method

Conclusion

Sources of Information to Develop Business Projections

Notes

CHAPTER 8 - Method 5: Advanced Valuation Methods Monte Carlo and Real Options

Modified Discounted Cash Flow Method

Monte Carlo Method

Final Points on the Monte Carlo Model

Real Option Methods

Conclusion

Online Resources

Appendix 8A: Example Crystal Ball Report for

Appendix 8B: Crystal Ball Report Corresponding to the Results Presented in ...

Notes

CHAPTER 9 - Method 6: Valuation by Auctions

Introduction to Auctions

When Auctions are Feasible

Auction Examples

Auctions as Distinct from Other Types of Dealmaking

Auction Strategies for Buyers

Auction Caution

Conclusion

Appendix 9A: Bidder’s Agreement

Notes

APPROACH III - Dealmaking

CHAPTER 10 - Approach: Deal Structure

Return to the Box and Wheelbarrow

Cash When Pricing Structures

Cash As Pricing Structures

Cash If Pricing Structures

Cash Maybe: Options

Consideration Forms Beyond Simple Cash

Special Form of Cash If : Equity

Balancing Simplicity with Comprehensiveness

Conclusion

Notes

CHAPTER 11 - People, Process, and Lessons Learned

Introduction

Deal Team

Deal Targets

Negotiating Plan

Plan B

Concluding Advice from Technology Dealmakers

Notes

CHAPTER 12 - In Conclusion

Approach of Opportunity Discovery as a Quest

Approach of Valuation: A Review of the Six Valuation Methods

Approach of Dealmaking

Closing Thoughts

Notes

APPENDIX - List of Abbreviations and Trademarks

Bibliography

Index

For the late Bill Riley, long time licensing mentor at Battelle.

Copyright © 2009 by Richard Razgaitis. All rights reserved.

Published by John Wiley & Sons, Inc., Hoboken, New Jersey.

Published simultaneously in Canada.

This book is a completely revised and expanded edition of Richard Razgaitis’s previous book, titled Valuation and Pricing of Technology-Based Intellectual Property (978-0-471-25049-4).

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Preface

This book is the fourth that I have written for John Wiley and Sons. All of them in some way have been about creating value from technology by identifying opportunities, valuing and pricing those opportunities, and Dealmaking.

The 1999 book, Early Stage Technologies: Valuation and Pricing, was my initial effort that developed the Six Methods of Valuation:

(1) Industry Standards

(2) Rating/Ranking

(3) Rules of Thumb

(4) Discounted Cash Flow

(5) Advanced Methods

(6) Auctions

In 2003, I updated and expanded the 1999 book as Valuation and Pricing of Technology-Based Intellectual Property. In the same year, I wrote a separate book on Dealmaking: Dealmaking Using Real Options and Monte Carlo Analysis.

In the present book, I have expanded most of the material in the three earlier books and cohered it all (I hope) in three core technology commercialization business processes, designated as Approaches. They are: opportunity Discovery, Valuation, and Dealmaking, hence the acronym Technology (or Licensing) D-V-D. In particular I have expanded the use of Monte Carlo as an Advanced Valuation Method. The text provides a link to my web site—www.razgaitis.com—that includes spreadsheets used in this book, as well as a means to obtain a free trial of the Monte Carlo software (Crystal Ball developed by Decisioneering, now a part of Oracle Corporation) to enable the reader to run his or her own simulations, and to provide a place for the inevitable errata.

My focus throughout has been on opportunity Dealmaking, as opposed to litigation contexts. Accordingly, the subject matter of Dealmaking is typically something other than bare patents in a process of sellers and buyers discovering value and enhancing deal structures to their mutual benefit. Technology Dealmaking is that special conjunction of the oldest form of human interaction, trading, with the most modern, technology. The nautical theme of the cover art is intended to be suggestive of this ancient quest for economic benefit through trade in the face of significant risk. The Approaches, Methods, and Tools (A-M-T) here presented are with the intent of being a kind of lighthouse, overarching business principles, not with the aspiration of risk removal, but to support risk-based opportunity discovery, valuation, pricing, and Dealmaking.

Throughout the book, I have made numerous changes and clarifications in the hope of making the points clearer and more useful and fitting together the complete business process of opportunity discovery, valuation, and Dealmaking. Arthur Schopenhauer (1788-1860) in an 1844 edition of his classic book, The World as Will and Representation (or Idea) originally published in 1818, wrote: Now, as regards this second edition, in the first place I am glad that after twenty-five years I find nothing to retract; my fundamental convictions have been confirmed, at any rate as far as I myself am concerned.a In his final edition of that book, he changed not a word from text he had written 40 years earlier. From this perspective, his 1844 edition, and his final 1858 edition included his 1818 text unchanged.

In contrast with that genius, I have tried to change anything and everything in my previous writing that I could to make it better and more complete, as well as more interesting, even fun to read. I have made extensive use of everyday terms of art—some might even call it business slang—to be as expressive as possible at the cost, perhaps, of some textual dignity. But Carl Sandburg, that Chicago big shoulders/Tool Maker city poet, said it well: slang is a language that rolls up its sleeves, spits on its hands, and goes to work. Putting technology to work is what I’ve tried to do here, using down-to-earth language to do it. I am still not done with that work, but it is the best I can do at the moment. It does not, however, represent my final views on the subject of technology valuation and pricing. I have intended it to be an educational contribution to my profession, not as a proof text on some narrowly defined dispute, but as a systematic discussion of tools, methods, and principles, that can be developed and applied to that most challenging task of developing a model framework for establishing its worth, and reaching agreement with a Dealmaking partner.

Disclaimer

It may not be necessary, but it is probably prudent, to point out what should be obvious: This is not intended as a proof text in support of litigation. The context of the valuation methods considered here and my associated observations and suggestions is in support of opportunity licensing, not enforcement. Further, each licensing and valuation opportunity is specific to the given fact situation; so it is unwise and even misleading to take a passage of static words and assume that it can be applied without consideration of the specific circumstances by the exercise of reasoned judgment.

About the Author

Dr. Richard Razgaitis began his career in technology on an exact date, May 25, 1961, on the occasion of President Kennedy’s pronouncement:

I believe that this nation should commit itself to achieving the goal, before this decade is out, of landing a man on the Moon and returning him safely to the Earth. No single space project in this period will be more impressive to mankind, or more important in the long-range exploration of space; and none will be so difficult or expensive to accomplish.

On that day he selected his undergraduate major, Aeronautical and Astronautical Engineering. That led to his becoming first a rocket scientist, then part of the Cape Kennedy launch team from the first Apollo flight in 1966 through the first lunar landing of Apollo 11 in 1969. He had the unique privilege of loading the fuel into the Saturn S-IVB that sent the first men to the moon: Apollo 8, December 21, 1968, Frank Borman, James Lovell, and William Anders.

He was a professor for more than 10 years at the University of Portland and Ohio State University where he taught more than 20 different undergraduate and graduate level classes. He has worked in industry for the past 30 years, including 10 years as Vice President of Commercial Development for two billion dollar R&D organizations, Battelle and Bellcore. For the past 11 years he has been a senior consultant with Charles River Associates and predecessor firms IPC Group and InteCap LLC.

He holds a B.Sc. in Aeronautical and Astronautical Engineering from the University of Illinois, a M.Sc. in Aerospace Engineering from the University of Florida, a Ph.D. in Mechanical Engineering/Thermal Fluid Sciences from SMU, and an MBA from Ohio State University. He has been a registered professional engineer in three states. He has been a long-time Board Member of the Licensing Executives Society including holding the chair of Treasurer. He was on the Board of the Licensing Foundation for six years and for three years its President. He also served a three year term on the Board of the National Inventor’s Hall of Fame, which period included the special induction in 2003 on the 100th year anniversary of flight, including the Lifetime Achievement Award for John Glenn, the first American to orbit the earth in Mercury Friendship 7.

He has written four books published by John Wiley & Sons, four book chapters published by the Association of University Technology Managers, the Licensing Executives Society International (LESI), and by the Centre for the Management of Intellectual Property in Health Research and Development and the Public Intellectual Property Resource for Agriculture, and four annual survey articles on the key issues in the licensing industry in les Nouvelles, the journal of LESI, on behalf of The Licensing Foundation.

Acknowledgments

One of the themes of this book is the multidisciplinary context for Technology D-V-D, and the need for active learning. So the list of people I would like to acknowledge is long, but by no means exhaustive. Although I have been involved in putting technology to work since 1965 when I joined the Apollo Program as a rocket scientist, my work in technology licensing did not begin until the early 1980s when I worked for Battelle Memorial Institute. When I joined its Battelle Development Corporation I was mentored by a special group of long time employees,

Much of my life has been spent in learning. Some would say, I still have a long way to go (which is true, but details on that are more appropriate to a confessional). Here I want to offer heartfelt thanks to you many teachers that in some meaningful way contributed to the thinking expressed here.

For 14 years and 2 months, I had the privilege of working for Battelle in Columbus, Ohio. During the early years of this period I had the opportunity of working for Battelle Development Corporation (BDC), a wholly owned subsidiary that had been responsible for commercializing Battelle and outside inventor technology since 1935. During those years at BDC, I happened to be present during the retirement transition of an unusually talented group of individuals who took the time and patience to share with me over a period of years their insights from an incredible breadth of experience. Although the content of this book is mine, I would be remiss not to acknowledge the influences that this unique opportunity afforded me. Bill Riley, to whom this book is dedicated, hired me into BDC. Bill was an endless source of experience-filled marketing and dealmaking stories; many of those stories deserve a string instrument composition to elevate them to more-than-Irish ballads (really more like Homeric Epics). Bill’s 29 years with Battelle, long term participation in the Licensing Executives Society (including a term as LES President), and wise memory were, for me, like attending an academy of licensing learning. His recent passing is a loss I feel every time I hear of a funny moment in licensing that I wish I could share with him.

Ken Shaweker was also a 30-year veteran of licensing experience, mostly at Battelle. He was BDC’s IP Counsel. As our lead attorney, he was a model of reasoned judgment combined with sagacity in developing solutions to meet worthy business objectives and taught me lot about agreements and people.

Steve Dickerson, another 30-year man and head of BDC for many years, was tireless in his enthusiasm and pursuit of opportunities. In negotiations he was both gracious and quick thinking, a very potent combination.

Dr. Charles Schwartz was, unbelievably, our 50-year man. His breadth and currency of technical insight was astounding; and as to kindness and patience, I have known only one other that deserves mention in the same breath.

Art Westerman (just a 40-year man) in addition to his business development skills was a great writer and teacher of business writing (sorry that I didn’t learn better than I did).

There were many others at Battelle who were not part of the retirement transition but who were part of my licensing and valuation faculty: Barry Bissell, Bob Zieg (who as Ken’s replacement shared the fruits of 26 years of patent/licensing experience), Bill Huffman, Roland Adoutte, L. Don Williams, Gene Eschbach, and many others.

I owe a very special debt to four very talented administrative assistants whose teachings often had to be by the rescue method: Carol Cremeans, Shirley Russell, Shari Dean, and Mary Ann Dillon.

I am likewise indebted to my experiences and opportunities at Bellcore, now Telcordia Technologies. One of my teammates there, the late Bruce Sidran, was the object of dedication in my 2003 Dealmaking book. I miss his friendship and great sense of humor.

For 11 years now I have been associated with a consulting group headquartered in Chicago, initially under the name IPC Group, then Intecap LLC, which then became part of Charles River Associates. The name keeps changing on the door, but most of the people are still there. I would like to acknowledge the special client working relationships I have had with colleagues Dan McGavock and Bob Goldman, and in times past with Brian Oliver and Mike Lasinski. In particular I want to acknowledge two Charles River Associates colleagues, Lew Koppel and Bob Goldman, who made numerous helpful suggestions based on their review of this manuscript. There is a long list of others with whom I have worked however I cannot name them all.

My association with the Licensing Executive Society (LES) has been a constant source of learning from many people who have also become friends. If I start mentioning names, I would never know where to stop. LES is simply an outstanding group of individuals who have universally been both gracious and wise, an uncommon combination.

The origins of these books can probably be traced to a conversation I had with Lou Berneman who, on behalf of the Association of University Technology Managers (AUTM), asked me to teach the valuation section of AUTM’s introduction to licensing course. That invitation, and honor, became an annual event for me for some dozen years and lead to my writing the valuation chapter in AUTM’s License Practice Manual, which has now been revised. I owe thanks to Lou, AUTM, and in particular the two thousand plus students who have participated in that experience; these many interactions have helped me solidify my own thoughts and defog some aspects.

In my 11 years consulting I have done perhaps 200 or more projects, and given numerous day and multi-day valuation workshops for clients. One of the benefits of all these experiences is the learning that takes place in every encounter, every question. Thanks to all of you for the opportunities to serve you by these assignments. Although I have been careful not to disclose anything proprietary from these engagements, the inevitable learning that comes from them has been a lifelong benefit.

Perhaps I owe my greatest learning debt to those many individuals with whom I negotiated, or attempted to negotiate, licensing agreements, including those necessary negotiations with my own teammates. Your reasoned and articulate explanations, of how you viewed the subject opportunities have swirled through my memories many times and continue to do so even now, many years later. It is an axiom of negotiation that Dealmaking is a mutual learning experience. I don’t know how mutual it has been, but for me it has been the learning laboratory and my thanks goes out to all of you.

This is not the kind of personal book that causes me to focus on the contributions of my family. But, it has been their encouragement and patience and source of earthly purpose that has kept me going: So to you, Carol (my loyal wife of now two plus years and counting) and children of whom I am so proud... Rich, Renda, Christy, Jodi, and Leslee, I say thanks. These six have all at one time or another asked "What exactly is it that you do?" This book is a long answer.

Lastly, my thanks go to Susan McDermott and Emilie Herman at John Wiley & Sons, and Martha Cooley who welcomed me into the Wiley relationship with that first book. Thanks for encouraging my writing, especially when things were going slowly.

CHAPTER 1

Introduction to Opportunity Discovery, Valuation, and Dealmaking

In this opening chapter we will review briefly the key points of Technology D-V-D, namely the Approaches of opportunity Discovery, Valuation, and Dealmaking, and the valuation Methods and Tools to be developed in this book.

Introduction: Technology D-V-D

This book is about three business processes used for transforming technology into money, usually by way of a license agreement. These processes, here referred to as Approaches, are technology: (1) opportunity Discovery, (2) Valuation, and (3) Dealmaking; the overall process is then designated Technology or Licensing D-V-D, where each letter corresponds to the respective Approach. About half of this book is on the Approach of Valuation. There are mountains of books on the general subject of valuation in various business contexts; this one focuses on unique issues associated with technology.

Technology

One can think of three discrete species of transacted rights: businesses, products, and technologies.

• Business transactions. These are usually the outright sale of all assets relating to an operating business including all forms of tangible and intangible property. Such transactions typically include some form of manufacturing or contract-for-manufacturing capability; established sales, marketing, and distribution channels; and, importantly, customers with a revenue history; and all the other elements necessary to operate as a standalone entity for the buyer to take over or integrate into its own operations.

• Product licensing. This enables the buyer to duplicate the making of some device, system, or service that has already been completed and proven by the seller. In this situation, the buyer will need to provide the necessary surrounding business assets to realize a profit from the license.

• Technology agreements. Such agreements designate transactions for pre or early commercial designs and data, normally without the evidence of large scale manufacturability or possibly even a single legitimate customer. In some cases, the final or best formulation has not yet been established. Another way of thinking of technology is as a work product of research and development (R&D). Put yet another way, R&D is a business operation that has as its successful result technology. Such an R&D work product can range all the way from a raw concept, at one extreme, to the results of many years and many millions of dollars’ worth of investigation with comprehensive data books, samples, test results, financial projections, and business plans, as well as outside verification by certification agents and potential customer feedback from trials.

However, the term technology is challenging to define exactly. It is meant to encompass the broad meaning intended by its Greek root, techne,¹ which designates the craft, skill, and know-how associated with making some product or performing some service. This meaning of technology would apply to not yet commercially demonstrated superconductivity inventions based on sophisticated semi conductor physics to software code that has a demonstrated potential of controlling some important business process.

The key ingredient missing from technology licensing that is present in both business and product licensing is a commercial track record. Without such ingredient, the customary approaches to product and business valuations do not work well because the underlying data usually relied upon do not exist. To make this more concrete, consider an automotive example. In early 1999, Ford Motor Company made an offer to buy and ultimately bought Volvo’s automotive business (and in late 2008 Ford announced it is planning to sell its Volvo operations). In developing the valuation of this transaction Ford in 1999, as the buyer, and in 2009 Ford as the seller has access to many years of financial and operational data as well as forecasted performance based on such data, and any subsequent buyer of this asset will be able to study the Ford data during its period of ownership. This is the nature of sale of business transactions.

Alternatively, Ford could have licensed from Volvo the right to make and sell Volvo cars in the United States in Ford plants based on Volvo proprietary information and patents. Again, in such a situation, Ford would have been able to study an extensive historical basis of the costs and revenues of making a Volvo car, and use such information to develop projections of profitability. This would have been a product transaction, because Ford would have had to use its business assets to make and sell the cars.

An example of a technology transaction would be Ford’s acquisition of the rights to a Volvo invention that Ford could then develop and use in their manufacture of Ford cars, or for some other business purpose. With such technology transaction species, there is often no product or business history because what is being licensed is newly developed and has not yet reached the stage of a product, or the nature of its commercial use would be substantially different in the hands of Ford as the licensee. Although the tools and methods discussed in this book can be of use in business and product transactions, the main objective here is in support of technology licensing.

Technology and Intellectual Property Rights

Technology rights are usually expressed in three forms of intellectual property (IP): patents, trade secrets (also known as know-how, or proprietary technical information), and copyrights. Such IP can be considered as the form by which the technology rights are documented, protected, and conveyed.

It will be assumed that IP protection exists when considering the valuation of technology. There is always some uncertainty about the breadth and strength of such protection, and this uncertainty factors into the value determination. If there are issued patents, there can be some uncertainty surrounding interpretation of claim language or even the validity of the patent itself. If the patents are still pending, then there will be uncertainty about what will be allowed by patent offices in various countries of the world. There can also be uncertainties about trade secrets. It may not be well understood how secret the trade secret really is; it could be that many other labs and companies have independently arrived at the same information or soon will do so. Also there is always some risk of inadvertent disclosure of the trade secret by the seller or buyer or by some third party that would damage the value of the underlying technology asset.

The extent and strength of IP protection are dimensions of a valuation. An extreme example of such effect is the absence of value if the inventing organization publicized all the details of its invention in such a way as to preclude obtaining a patent or any other form of IP protection. So the absence of protection can and normally does preclude value (although even with minimal IP protection there can be situations where the seller’s commercial assistance can accelerate time to market and create value for the buyer). However, the converse is not true: It is possible to have very strong patent and trade secret protection and still not have much or any value because, for example, of the absence of a market for the product made by the underlying technology (though there can be option value to ownership of a right with no immediately obvious commercial use).

Thus, as a general guideline, some extent and form of IP protection is a necessary but not a sufficient condition for value to exist.

Considerations about which forms of IP should be used in which contexts, and analysis of the strengths and weaknesses of each, are outside the scope of this book. In the valuation examples considered it will be assumed that the technology is protected in some way or combination of ways. When risk issues are considered, or when comparisons are made to reference agreements, then strength and extent of IP protection will be identified as a factor to be considered when performing a valuation.

Technology licensing is becoming an increasingly important transaction category but does not have the abundance of tools and experience available to business and product transactions. This book is intended to contribute to the field of technology valuation.

Technology Opportunity Discovery

In some situations the opportunity for technology licensing is obvious: There is a specific package of IP rights and underlying technology assets that the owner seeks to monetize in some way other than its own commercial development into products and markets. However in many situations, the IP owner has many technologies, perhaps thousands, as a result of significant R&D investments over the years not fully utilized in its own products, or left-over technology assets from a major acquisition, or a closing down of a major operating division and the opportunity exists to sell it in parts. In the latter situation there can be more opportunities than can be practically analyzed in detail, and some prioritization must first take place.

In all cases there is the discovery issue of identifying potential commercial applications that may not have been envisioned by inventors or prior business developers. Technology can be created focused on purpose A and instead, or in addition, be valuable for purpose B, or A, B, and C. The challenge and need for a technology owner, is to develop an initial recognition, which is Discovery, of licensing opportunities that are valuable. This business process is the Approach of opportunity Discovery.

We will cover opportunity Discovery in Chapter 3.

Valuation

The heart of the matter with technology transactions is value. This is sometimes expressed as the So, what? question, which is the natural response to any long winded and involved description of the latest and greatest invention. The answer usually begins with a discussion of who in the world will have a happier life because of it, and then how much would that happier life be worth to them if someone were in the business of providing this vehicle of happiness.

For the reasons discussed above, determining technology value is a challenging task. We will consider six Methods, and numerous Tools that derive from such Methods in six separate chapters, Chapters 4 through 9, covering the Approach of Valuation.

Dealmaking

The vehicle of technology transactions is a contract between a seller and buyer, normally a license. Such license conveys technology rights from the licensor, or seller, to the licensee, or buyer. For simplicity, hereafter the licensor will be referred to as the seller, and the licensee as the buyer.

The transaction between buyer and seller is a trade. Sometimes the trade is as simple as money from the buyer in exchange for assignment of a patent by the seller. In most cases, the trade is much more complex. But it is always a trade. Building on this fundamental idea I have introduced the acronym TR R A DE™ to structure this discussion. Within the scope of the book, all transactions are founded on the TR R A DE™ framework:

• TR is used to designate Technology Rights conveyed in the licensing transaction.

• R is the risk involved in any transaction.

• A represents the art behind the opportunity Discovery, Valuation, and Dealmaking Approaches

• DE is the deal economics.

The process of valuation and pricing determines the transaction deal economics, (the DE in our acronym). So, in shorthand form, this book is about TR for DE. The business process of making such happen as trade is here called Dealmaking, our third Approach. Dealmaking will be covered in two Chapters, 10 and 11. As we shall see this Approach also involves opportunity Discovery, because the technology opportunity discovered in Chapter 3 has to match with the business opportunity to be discovered with/for a prospective buyer.

Depending on the complexity of the transaction, there can be numerous issues and agreements that are included in the Dealmaking and additional to a technology license. For the transfer of physical assets, such as lab equipment or technology prototypes, there may be a separate purchase agreement. For circumstances where key employees are to leave the seller and join the buyer, normally there will be employment agreements. If the seller agrees to provide subsequent technical assistance to the buyer, there will be a separate services or consulting agreement. If the buyer is going to provide a licensed product to the seller for the seller’s use in some other product, there will be a supply agreement. Sometimes, the parties choose to create a separate nondisclosure agreement so that it stands independently of the license. In the case of equity transactions, there are numerous other agreements that are needed related to stock purchase, incorporation, and shareholder issues. The legal details of all such licenses and related agreements are outside the scope of this book. Here we will focus on valuation and pricing of the deal as a whole unit, understanding there may be one or many legal agreements used to encompass all the deal issues.

Graphic Outline of the Book

A graphic summary of the organization of this book along with the key acronyms we will refer to is shown here:

Taxonomy of Technology Licensing

There are various ways of categorizing the circumstances under which licensing valuation, pricing, negotiation, and dealmaking occur. Although a discussion of the how to’s of licensing in each of these categories is beyond the scope of this book, it is useful to have a common reference of licensing situations.

Technology licensing can be understood to take place under six situations, as discussed below:

1. Enforcement Licensing. The seller (licensor) believes it has the right and opportunity to enforce patent claims, and/or perhaps misappropriated trade secrets, against a buyer (licensee/believed-infringer) whose licensing need is a freedom to practice. In many cases the buyer is already using the technology in commerce and may already be aware of the seller’s patent(s). This is sometimes called stick (or the taxman cometh) licensing. Valuation can occur in pre-litigation contexts, or expert opinion in litigation, or settlement discussions.

2. Opportunity Licensing. The seller has a technology IP and possibly other assets that it believes will be of value to a buyer who is seeking new or expanded new revenue opportunities. Such licensing would normally include know-how of some kind. This is sometimes called carrot (or have I got a deal for you) licensing. Valuation normally occurs in anticipation and in the midst of a negotiation.

3. Opportunistic (as distinct from Opportunity) Licensing. The buyer seeks out a technology owner for the purpose of securing rights to a technology and perhaps other licensable assets. Prior to such contact, the seller may not have realized that it possessed licensable value, or it may not have been previously willing to license its technology. Valuation typically occurs first by the buyer in anticipation of making the seller an offer, and also by the seller as well as by both parties in the negotiation.

4. Divestiture Licensing. The seller is exiting a business area that includes technology and, typically, other assets such as physical plant, property, equipment, people, and trademarks. Traditional M&A (merger and acquisition) activities would encompass this form of licensing, though M&A transactions are normally associated with operating businesses. So in our context, divestiture licensing would more likely be related to technology assets and rights that were unused or underused by the seller and for some reason has become part of the M&A transaction. Divestiture licensing can resemble opportunity or enforcement licensing depending on the circumstances. Valuation typically includes nontechnology elements, such as the value of equipment, buildings, and so forth. Often the value is expressed as a lump sum payable in cash or cash and securities, though there can also be earn out and other future payments.

5. Partnering Licensing. The seller is seeking a business partner who will provide certain resources (such as complementary technology, key people, market access, and money) to a joint effort in further R&D, product development, manufacturing, and/or sales. The technology license is normally just an element of a panoply of supply, joint invention, facility access, marketing, and other agreements. Valuation occurs in anticipation of and during the back and forth of partner negotiations and can be expressed in royalty payment or splitting terms, or in revenue apportionment in accordance with some form of a capital contribution calculation, which would include a value for the technology contributed to the partnership.

6. Startup Licensing. The seller is licensing to a new business (commonly referred to as a NEWCO as a shorthand for new company) being formed expressly for the purpose of commercializing the technology by making and selling products and services. Buyers, who may be traditional venture capitalists, private investors, or strategic investors, normally seek many things from the seller, not least of which are the employment of the key people. The closing documents associated with licensing are mountainous and include incorporation papers, corporate bylaws, employment agreements, stock purchase agreements, and the technology license itself. Valuation occurs in the preparation of term sheets in anticipation and in the midst of negotiation of the formation of the NEWCO and for subsequent rounds of investment. Equity is normally the principal valuation consideration.

In the first three categories, the agreement structure and valuation issues tend to be substantially simpler than in the last three categories. To keep our considerations manageable, we will not attempt to include a discussion of all six categories of technology licensing as we go through each of the six valuation methods. In Chapter 10 we will cover the special situation of taking equity as a principal form of compensation, which normally occurs with Startup Licensing, but can occur in other circumstances.

For convenience, most of the illustrations used in this book will use Opportunity Licensing as an assumed context, although the impetus could have originated from one of the other above contexts. It must be noted that enforcement licensing is not the subject of this book. Enforcement licensing is about specific infringement contention of certain patent claims (or, possibly, misappropriation of trade secrets), for a product in commercial use. Such context presumes a bare patent license, no other assets, in a nonexclusive license limited to the field and territory (corresponding to the court’s jurisdiction). The contexts we are interested in involve a seller offering a mosaic of assets and rights, which we will later refer to as The Box, in exchange for a structure of cash and noncash payments which may be obligations extending over time and conditional upon subsequent commercial outcomes. Opportunity Discovery, Valuation, and Dealmaking as discussed in this book is far richer and more complex than a litigation context.

High Significance, High Ambiguity Contexts

Another way of envisioning the scope of this book is shown in Exhibit 1.1.

As illustrated, Dealmaking opportunities can be segmented by potential value (high and low) and ambiguity of key business terms (again high and low):

• Low potential value and low ambiguity. A significant analytical investment in technology Licensing D-V-D is not usually warranted; the low ambiguity condition corresponds to the substantial availability of business information, such as revenues, margins, market, new production growth potential, and so on. In such circumstances the direct use of comparables and rules of thumb can be all that is needed. Opportunities in this quadrant can be (and need to be) valued and transacted relatively quickly at low Dealmaking cost in order for them to be worth doing.

EXHIBIT 1.1 High Value, High Ambiguity Opportunities

• High potential value and low ambiguity. A greater investment in Licensing D-V-D is warranted to confirm the abundant business information and rationalize it for valuation, negotiation preparation, and agreement purposes, the Methods and Tools of this book can supplement and assist more traditional valuation tools and methodologies.

• Low potential value and high ambiguity. The power (and complexity) Technology Licensing D-V-D can be of value but a high level of effort in its application may not be warranted (if, indeed, the opportunity has low potential value).

• High potential value and high ambiguity. This is the sweet spot for Technology Licensing D-V-D: there is both a lot at stake and traditional data and methods are likely to be inadequate. This quadrant is sometimes characterized by colloquialisms that express the high potential opportunity with the corresponding, inherent uncertainties in the underlying technology, market, or business operation. For example, transformational, game-changing, revolutionary, disruptive, new paradigm or paradigm shift, step change, upset (or tipping point), killer app (deriving from killer application, often used in software, or quantum leap²). When such terms are used they are a strong indication that the opportunity is high potential value and, though it may not be overtly recognized, high ambiguity (low certainty) often because the transformational model is not achieved by some incremental, obvious new product adoption and growth pattern.

The Perils of Short Cuts

Over the past decade, with the emergence of the Internet and World Wide Web (WWW), the rapidly increasing power at a rapidly decreasing cost of personal computing, the ubiquity of mobile communication (phones, pagers, PDAs, and laptops) provides the Internet and worldwide connectivity in your pocket. In addition, the corporate information technology (IT) revolution in content availability, data mining, and networking (Ethernet, LANs, VPNs, WiFi, WiMAX, etc.) has together fostered a maelstrom of new business ideas (e.g. Web 2.0) and a premium on decision speed (Internet time). For a while it appeared that every new business idea promised to revolutionize how we lived and worked. These ideas were clearly touted as high opportunity and even the ardent believers generally admitted that they had attendant high uncertainties. At work was another force, time ultra urgency. These opportunities were so compelling, it was thought, and so competitively pursued that there was little time to analyze, quantify, or even, it seemed, to think. It was said that no one could do Ready, Aim, Fire! It had to be Ready, Fire! Aim or, as it was in many cases, just Fire! Fire! Fire! and hope you hit something worth the effort. Even our vocabulary reflected the new urgency by the then common usage of Internet time. Its initial use was in circa 1994. During that year, the Wall Street Journal used the term in its writings just four times; in 2000, it was used 43 times.³ The term conveyed an idea that expressed a behavior that reflected a core belief: The rates of change were so dramatic that time for reasoning was scarce or even nonexistent and the opportunities for success so abundant that the absence of reason was insignificant. Put another way, doing something, anything, had higher value creation opportunity than could be captured by any reasoning process requiring more than the proverbial 15 minutes.

In such absence of reasoned analysis, how were opportunities valued and chosen? Well, the obvious global answer as one surveys the smoldering ruins beginning in 2002 is not very well. But, specifically, pursuers of such high value/high ambiguity opportunities used two primary methods: (1) simplistic rules of thumb and (2) unstructured auctions. Among the examples of simplistic rules of thumb was the use of $2 million per software developer employed in valuing a potential software acquisition target. So, using the first method, if you were considering buying a software company with nominal revenues, but nowhere close to net earnings, with 500 developers, you would be prepared to pay $1 billion.

The second method was the use of informal auctions. Potential sellers of opportunities had multiple pursuers. This situation enabled them in many cases to play one bidder off against the other in an informal auction process that they, the seller, controlled. This auction was informal because in most cases the buyers did not know who the other interested parties were, or even if there were truly other interested parties or actual bids. Additionally, there were no standardized rules of engagement such as those which exist, for example, in stock or commodity exchanges or even bankruptcy court auctions. The motives of greed for gain and fear of lost opportunity led many buyers to bid and pay for opportunities far in excess of what they now appear to be worth. The examples of such overpayment are legion. Are auctions really markets, and are markets not reliable? The answer to both questions, in the case of informal auctions when there is a frenzy of buyers with money chasing the ‘next big thing’ is no. Could not a potential buyer have, instead, resorted to advanced valuation tools and methods such as those that are considered in this book? At the time of the technology bubble in the late 1990s, a common view was no because, it was widely thought, that by the time they completed even a cursory analysis the opportunity would have been sold to a buyer unfettered by such concerns who simply looked it over and topped the previous and all competitive bids. A similar propensity to favor speed over reason may have contributed to collapse in value of complex financial products created, packaged, and traded in recent years up until late 2008.

EXHIBIT 1.2 Buy Recommendations by Merrill Lynch for InfoSpace

Source: Wall Street Journal: Europe (staff produced copy only by Ravzin, Philip). Copyright 2000 by Dow Jones & Co. Inc. Reproduced with permission of Dow Jones & Co. Inc. in the format Trade Book via Copyright Clearance Center.

BEFORE A FALL ...

Merrill Lynch initiated coverage of InfoSpace in December 1999 with a rating of accumulate-buy and a price objective of $160. The company’s share price fell much faster than its rating.

Selecting one illustrative proxy for this point is difficult because there are so many to choose from. Exhibit 1.2 presents an easy to understand technology bubble example, namely, the public recommendations by a well known brokerage firm (Merrill Lynch) with respect to a high-flying Internet (dot.com) startup (InfoSpace). We will return to InfoSpace when we consider the valuation of various technology equities.

Consider the following as a benchmark for a poor return-on-investment standard. One can purchase a 12 pack of say, Coke® for about $3.00 in no deposit states or for $3.60 in the five states requiring deposits of five cents per aluminum can. After consuming the Coke, one’s return would be 95 percent loss of invested capital in a no deposit state (each can is 1/29 of a pound and a pound of recyclable aluminum cans is worth about 40 cents) or 83 percent loss of capital if you live in NY, CT, MA, VT, ME, IA, or OR; for those in Michigan (ten cent deposit) the loss of capital would be only 71 percent, and for Californians (2.5 cents) 91 percent. So, we might say that, on average, the just-drink-your-investment experiences a loss of invested capital of 90 percent. For many Fire! Fire! Fire! dealmakers, they would have done better in terms of enjoyment and return on invested capital to have purchased Coke, the soft drink itself (not the company) than many of the 1995-2000 merger and acquisition (or equity) investments, the most recent mania, many of which have exhibited declines in value exceeding the just-drink-your-investment benchmark. This same aluminum can returns have likewise occurred in 2008 and 2009 for certain financial companies. Although financial markets are very different from the technology and Internet examples, there is an underlying similarity, an undervaluation of the price of risk.

We now know that there are allegations that brokerage houses compromised their judgment on stock value by their desire to win investment banking business, which may have been joined with less than well considered merger, acquisition and other Dealmaking advice. Similar motivation and lack of prudence appears also to have contributed to the collapse of multiple forms of investment vehicles created, marketed, and sold by financial companies. Whether, or to the extent, there has been fraudulent or recklessness in making public recommendations of such opportunities, they would not have been effective if the public markets in large part did not find such counsel credible. The point is that investors and dealmakers, with all the reasoning opportunity in the world, believed such prognostications, to their (in many cases) financial detriment.

Dealmaking preparation either by quick and dirty rules of thumb or informal auctions can lead to very damaging results. However, business is about exigency; a scholarly, methodical, patient inquiry into all matters relevant to a potential negotiation is simply not an always practicable option. What is needed are reasonable, powerful, quick-to-apply and -interpret Tools and Methods that can assess opportunities and prepare for negotiation. So urgency in preparation is important, but not to the exclusion of a rational, defendable analysis. Developing a rapidly deployable methodology using valuation tools is what Licensing D-V-D and this book are about.

The Challenge of Close Calls

In most business situations one frequently deals with close calls, meaning the go/no-go decision with respect to a particular offer is difficult. If we consider for a moment the internal decision of whether to go forward with some particular investment project, it can be argued that the level of analysis should take into account that all that is needed is the answer to the question of should we go forward or not. A common and powerful tool for making such determination is the discounted cash flow analysis leading to a net present value (NPV). In the case of internal project investment decisions, we can perform a simplistic NPV analysis to sort out those obvious opportunities that have strongly positive NPV values and accordingly should be undertaken, and those that have strongly negative values and should be killed.

In Dealmaking contexts, as opposed to internal investment analysis, near zero NPV projections can occur more commonly. Consider for a moment a seller and buyer each using the same data on which they make projections and the same overall business assumptions. Their calculation of NPV will be identical but for small differences perhaps in some secondary assumptions. In this situation, the seller will try to capture in its sales price the entire positive NPV under the argument that so long as the opportunity has any positive value, a buyer should say yes to the deal and terms proposed. Thus, sellers are by their self interest offering terms that create near zero NPVs for the buyer, to the extent the market (the population of all potential buyers) permits. If there are multiple prospective buyers who then engage in a formal or informal bidding context, they will each be driven to increase their bids up to the limit of a zero or near zero NPV.

So it is common in Dealmaking contexts that the decision to proceed or not, from both the seller’s and buyer’s perspectives, ends up being a close call. In contrast then to many internal investment decision making situations, the natural contest and context of negotiations warrants the use of the Methods and Tools we discuss in this book.

Licensing D-V-D and Innovation

The focus of this book has been circumscribed by the term Technology (or) Licensing D-V-D. This subject is interconnected with three other important disciplines. One of them is the law of Intellectual Property (IP). It is such law that enable enforceable ownership rights. Two other important subjects are technology creation and entrepreneurship, which together can be termed innovation.

EXHIBIT 1.3 InterConnections of Licensing D-V-D

A graphic of how the subject of this book interconnects with these other three areas is shown in a Venn Diagram in Exhibit 1.3. It includes the horizontal box labeled Innovation, comprising Technology + Entrepreneurship. This is the conventional axis of a technology company’s process of creating value for its customers and owners by the transformation of R&D results into products and services. Underlying Innovation is the establishment of IP rights that protect such investment and value.

Licensing D-V-D circle is shown in the Venn Diagram as overlapping all three circles. In some situations, there has been limited entrepreneurship, and Licensing D-V-D builds on Technology and IP Rights. This could occur because a university, institute, or private inventor developed the technology. It could also occur in situations when a company has technology opportunities for which it has not made entrepreneurial investments. In other situations, the technology could have been matured significantly along the Innovation box. In either situation, Licensing D-V-D provides an important commercialization pathway that does not require the technology’s creator/owner to undertake commercial development into its own products and services. So, in a real sense, Licensing D-V-D is an always possible alternative to self commercialization. Sometimes such alternative is just an equivalent alternative, other times, a less desirable but necessary alternative, and still other times it is the best of all possible future worlds.

In the sub-sections below we will briefly consider certain proxies for size and scale of the four circles of Exhibit 1.3. We will focus on the most recent published data, 2006 and 2007, for the United States. Our purpose here is not to provide an exact analysis but to give some content and scale to these terms. The values reported below, as in U.S. dollars, are rounded and approximate. The reader is referred to the citations for the exact source data.

Technology as Measured by R&D Data

Industrial R&D spending is not exactly the same thing as technology as shown in Exhibit 1.3. But, annual R&D spending is a reasonable proxy for at least the cost, though not the value, of annual new technology creation.

R&D PERFORMED BY INDUSTRY R&D spending is a budgeted category, which is tracked and reported by companies on their income statement as part of a component of its overhead expenses along with sales, marketing, distribution, and administration. The U.S. National Science Foundation (NSF) has most recently reported on R&D Industry spending for the year 2006 in a report issued in August 2008:⁴

• Total spending was $250 billion, 95 percent of which can be grouped into three broad categories:

• Two-thirds was spent in DICE industries, where DICE is my own designation for Digital Information Computing Electronics, which includes software and instrumentation, computer systems design, but not medical instrumentation.

• 20 percent was spent in Health industries, which I have aggregated to include pharmaceuticals and medicines, as well as medical equipment and supplies, in addition to healthcare services.

• 10 percent was spent on Aerospace, and Machinery combined.

• Total industrial revenues were $6.6 trillion, so R&D spending represented an industry average of 4 percent. 40 percent of total R&D spending occurred in three groups:

• DICE revenues were nearly $1.8 trillion, so its R&D percentage was nearly 10 percent.

• Health revenues were under $400 billion, with an R&D percentage likewise just under 10 percent.

• The revenues of segments Aerospace and Machinery combined were over $500 billion combined, with an R&D percentage of 5 percent.

• There were more than 1 million R&D scientists and engineers in all industry segments; 80 percent were employed in three groups:

• 60 percent were employed in DICE industries

• 10 percent in Health industries

• 10 percent in combined Aerospace and Machinery

There has been an important transformation of the source of such R&D funding. Up through 1978, just some 30 years ago, the U.S. government funded more than 50 percent of total U.S. R&D; the peak percentage was 67 percent in 1964 during the peak spending years on Apollo (and which helped pay my salary as a then rocket scientist). In 2006, the year the listed data were obtained, industry paid 72 percent of the R&D bill. That 67 percent government to 72 percent industry is a remarkable shift in less than 50 years.

R&D PERFORMED BY UNIVERSITIES, INSTITUTES, AND RESEARCH HOSPITALS Another very important category of R&D is that which is done at U.S. universities and institutes, including research hospitals. These data have been collected and published annually by the Association of University Technology Managers (AUTM). The most recent data is for Fiscal Year (FY) 2006. For 2006 the total reported R&D (research) funding was $45 billion. More than two-thirds of such funding was by the U.S. federal government. Nearly 20,000 invention disclosures were reported by 190 survey respondents, which resulted in more than 10,000 new patent applications filed; also during 2006 more than 3,000 U.S. patents were issued (emanating almost entirely on filings in prior years). During the most recent three years, the reporting organizations filed patents on 60 percent of the disclosures received compared to less than 30 percent for years prior to 1995.

TECHNOLOGY DICE AND THE LITTLE ELECTRON Someone has estimated that 70 percent of the U.S. economy depends directly upon the manipulation of the electron. As first that may seem hard to believe, until one tries to list the industry segments that do not materially depend upon such manipulation. And it is remarkable to recognize that the discovery of the electron was just over 100 years ago (1897).⁵

TECHNOLOGY AND "CREATIVITY Technology creation is connected to the encompassing subject of creativity," the ability to create, or state of being one who creates, from the Latin word creatus, meaning to make or produce. Creativity of course exists in many domains outside of technology. When it is used with respect to technology it expresses the idea of bringing something new into being, and often with the flavor of the unexpected, or unpredictable. In this sense, creativity is also a key element of entrepreneurship, though the context is then more about productization of a technology, customer/market creation, and new business formation, though the lines blur. Here I have taken the two, technology creation and entrepreneurship, as together being innovation.

There is a vast literature on fostering technology creativity and entrepreneurship. The reason for such interest, beside just the natural delight in observing it, is the widespread recognition of the importance of technology creation in economic development, meeting human and national needs (real and invented), and competitiveness (corporate and national).

TECHNOLOGY AND SO WHAT? Because this book is about discovering, in the sense of recognizing, significant commercial opportunities based on technology, valuing them, and Dealmaking with them, there is an intrinsic issue known as the So what? question. Such question arises in many frameworks, and contexts:

• En emoi? Ancient Greek for What is it to me?

• Tai, kai? Lithuanian for So?

• Where’s mine? The classic city politician’s expression

Creativity in technology, as opposed to say creativity in the field of art, is about what can the created thing actually do, and why such doing matters. The So what? question answer for technology differs from the answer for science. For science the answer⁶,⁷,⁸ is twofold:

1. Explanation: "theories that render intelligible and