case study - raising new capital through patents · 2014-05-01 · case study - raising new capital...

16
International In-house Counsel Journal Vol. 7, No. 25, Autumn 2013, 1 International In-house Counsel Journal ISSN 1754-0607 print/ISSN 1754-0607 online Case Study - Raising New Capital Through Patents ANDERS ARVIDSSON Director Value Extraction Services, Zacco, Denmark Abstract Based on experiences from patent transactions, potential buyers or licensors mostly see their return on investment in relation to the potential value the patents can generate. Their valuations take risks into account, such as infringement, design around and validity, as well as competing solutions, revenues, growth and expected duration of the product. If there is a likelihood that an actual or future product could be covered by a patent, this is also reflected in the value. Since the value of a patent as writte n on the patent owner’s balance sheet is normally based on the cost of obtaining the rights, the patent owner and the buyer will often have very different valuations. The methodology for patent valuation in this paper is based on a real case, which takes technical, legal and economic aspects into account. Both the patent owner and the buyer’s perspectives are reviewed. Keywords Patents, value, valuation, evaluation, patent filings, licensing negotiations, licensing agreements, valuation methodology, patent infringement, design around, patent validity, investment, Discounted Cash, Flow model 1. Introduction The value of a patent as written on the balance sheet often does not reflect its worth for a potential buyer or licensor, since such value is normally based on the cost of obtaining the rights, and does not consider future income that is relevant for an investor. This case study is about a company (referred to as ‘the Company’) that decided to release new shares to its shareholders in order to raise capital. The valuation of the Company’s patent portfolio (referred to as ‘the Company’) has been modified for the purpose of this article and does not necessarily represent the actual company or its investors. Certain assumptions have also been modified and some have been left out deliberately to protect any persons or companies related to the valuation. The approach to valuation demonstrated in this document is supported by established standards for patent valuations, like DIN 77100, which encourages using multidisciplinary skills, including legal, economic and technical merits to value patents. 2. Background A review of the Company’s last balance sheet valued its patent assets at $0.8 million, which was lower than the expected revenues from the Company’s patent licensing business. The value on the Company’s books was based the cost of obtaining the assets, not on the value of future income from those patents. The Company therefore decided to perform an independent third party valuation of these patents based on the expected cash flow generated from future licensing revenues. In the most conservative scenario, this valuation resulted in a median value of $5.4 million. The Company is owned by venture capital companies and private individuals. It is an innovative company, offering new solutions to the market. The Company oversees its own production, but also licenses its patented technology to other manufacturers. The

Upload: others

Post on 05-Jul-2020

4 views

Category:

Documents


0 download

TRANSCRIPT

Page 1: Case Study - Raising New Capital Through Patents · 2014-05-01 · Case Study - Raising New Capital Through Patents ANDERS ARVIDSSON Director Value Extraction Services, Zacco, Denmark

International In-house Counsel Journal

Vol. 7, No. 25, Autumn 2013, 1

International In-house Counsel Journal ISSN 1754-0607 print/ISSN 1754-0607 online

Case Study - Raising New Capital Through Patents

ANDERS ARVIDSSON

Director Value Extraction Services, Zacco, Denmark

Abstract

Based on experiences from patent transactions, potential buyers or licensors mostly see

their return on investment in relation to the potential value the patents can generate. Their

valuations take risks into account, such as infringement, design around and validity, as

well as competing solutions, revenues, growth and expected duration of the product. If

there is a likelihood that an actual or future product could be covered by a patent, this is

also reflected in the value. Since the value of a patent as written on the patent owner’s

balance sheet is normally based on the cost of obtaining the rights, the patent owner and

the buyer will often have very different valuations. The methodology for patent valuation

in this paper is based on a real case, which takes technical, legal and economic aspects

into account. Both the patent owner and the buyer’s perspectives are reviewed.

Keywords

Patents, value, valuation, evaluation, patent filings, licensing negotiations, licensing

agreements, valuation methodology, patent infringement, design around, patent validity,

investment, Discounted Cash, Flow model

1. Introduction

The value of a patent as written on the balance sheet often does not reflect its worth for a

potential buyer or licensor, since such value is normally based on the cost of obtaining

the rights, and does not consider future income that is relevant for an investor.

This case study is about a company (referred to as ‘the Company’) that decided to release

new shares to its shareholders in order to raise capital. The valuation of the Company’s

patent portfolio (referred to as ‘the Company’) has been modified for the purpose of this

article and does not necessarily represent the actual company or its investors. Certain

assumptions have also been modified and some have been left out deliberately to protect

any persons or companies related to the valuation.

The approach to valuation demonstrated in this document is supported by established

standards for patent valuations, like DIN 77100, which encourages using

multidisciplinary skills, including legal, economic and technical merits to value patents.

2. Background

A review of the Company’s last balance sheet valued its patent assets at $0.8 million,

which was lower than the expected revenues from the Company’s patent licensing

business. The value on the Company’s books was based the cost of obtaining the assets,

not on the value of future income from those patents. The Company therefore decided to

perform an independent third party valuation of these patents based on the expected cash

flow generated from future licensing revenues. In the most conservative scenario, this

valuation resulted in a median value of $5.4 million.

The Company is owned by venture capital companies and private individuals. It is an

innovative company, offering new solutions to the market. The Company oversees its

own production, but also licenses its patented technology to other manufacturers. The

Page 2: Case Study - Raising New Capital Through Patents · 2014-05-01 · Case Study - Raising New Capital Through Patents ANDERS ARVIDSSON Director Value Extraction Services, Zacco, Denmark

2 Anders Arvidsson

Company owns seven patent families filed in more than 25 countries and regions, which

contain over 80 patent filings. The patented inventions were considered state-of-the-art,

and commercially essential for the technology.

At the time of the valuation, the Company was also in the midst of licensing negotiations

with three major players in the market. In each negotiation there was an upfront fee

dependent on the territorial coverage and type of license. For two of the licensees there

were also running royalties linked to the revenues, and both these licensees were offered

non-exclusive licenses. The license negotiated with the third company was exclusive and

only suggested an upfront fee; the Company did not expect this agreement to generate

any further income.

There was also an existing licensing agreement with a fourth company. This company

had an annual commitment to pay royalties on a minimum volume, which generated

income until 2013.

We will evaluate three scenarios:

1. Revenues generated from the existing licensing

agreement;

2. Licensing the Company’s patents between 2012-2015;

and

3. Licensing the Company’s patents between 2012-2019;

The first scenario reflects the existing license agreement, and is regarded as a worst-case

scenario. The second scenario sees the transaction with a shorter commitment between

2012-2015 and is regarded as conservative. Still, longer term licensing was seen as more

likely due to the major investments required by the licensees to build new production

lines, which is reflected in the third scenario.

3. How the Company sees patent value

To develop valuation ranges, we will demonstrate multiple valuation analyses for the

purpose of finding a range of valuations and to identify a target value. This approach

provides greater insight into the degree of risk in the valuation, which can generate a

reasonable range and clear target valuation. In the following section, the methodology

consists of a financial analysis with different scenarios to represent different outcomes of

the Company’s licensing business.

3.1 Economic assumptions

Due to limited production capacity compared to some major market players, it was likely

that the Company would see significantly greater revenues from licensing its patents than

from its own production. It was further assumed that the value of the patents was based

on the potential licensing business.

Due to the Company’s broad patent filing, it would likely be able to generate a range of

identified licensing candidates in different regions, where it had applied for patents. The

Company had identified around 80 potential licensing candidates, and they were already

negotiating with three companies.

A license agreement was already being renegotiated with a third company. In addition,

there were licensing revenues generated from another licensee. The Company had its own

production, which is a further indication of a future market for its technology. Thus, it is

fair to say that the technologies offered by the Company through their patents had created

a market demand and the patents were likely to be licensed.

Page 3: Case Study - Raising New Capital Through Patents · 2014-05-01 · Case Study - Raising New Capital Through Patents ANDERS ARVIDSSON Director Value Extraction Services, Zacco, Denmark

Raising New Capital Through Patents 3

3.2 The patent portfolio

The Company wanted to conduct a brief study to understand the breadth and

opportunities that its patent portfolio might provide. In order to assess any potential

issues with such opportunities, it was agreed to perform interviews with the Company’s

external representatives. All input was based on information received from the Company

and its advisors, who independently provided the same or similar conclusions. Thus, it

was reasonable to assume that the patents were valid enforcable, and could not be

designed around.

At this stage it is important to understand that the valuation did not include a detailed

review of each asset to assess its strengths. It was also up to the Investor to assess and

verify that all of the facts provided were correct, which is normal in any kind of

transaction or investment.

3.3 Valuation model and scenarios according to the Company

In order to find a realistic valuation range, Discounted Cash Flow (DCF) models were

developed depicting gross royalties attainable by the Company should the patent portfolio

be successfully licensed. This helps establish a reasonable price that the portfolio should

achieve according to an arm’s length licensing transaction.

The basic DCF model depicts the Net Present Value (NPV) for a successful licensing

business of the patent portfolio based on current negotiations and existing agreements.

The definition of NPV is shown in Equation 1, which is the difference between the

present value of cash inflows and the present value of cash outflows.

Equation 1: Net Present Value

The cash flow for each year is discounted back to its present value (PV) and then all cash

flows are summed up. The discount rate is the rate of return that could be earned on an

investment in markets with similar risk. It is common to use a company’s weighted

average cost of capital (WACC) as the discount rate, which tells us how much interest the

company has to pay for its investment.

The DCF model was developed as follows:

Identify key companies (including those already in negotiations with

the Company as well as those that confirmed interest in acquiring a

license)

Identify revenue data of key companies

Identify costs and depreciation rates

All forecasted revenues that were used as input for the different licensing scenarios in the

DCF model will remain confidential.

The following assumptions were made for the DCF model:

Assumed

Parameter Scenario

Page 4: Case Study - Raising New Capital Through Patents · 2014-05-01 · Case Study - Raising New Capital Through Patents ANDERS ARVIDSSON Director Value Extraction Services, Zacco, Denmark

4 Anders Arvidsson

Revenue forecast

Data was supported by current licensing agreements

and pending negotiations, but has not been included

in order to protect the name of the company.

Running Royalty

Rates

2% and 4% are the expected royalty rates based on

forecasted revenues, which either have been

proposed to potential licensees or already exist in

shared licensing scenarios.

Fixed Royalty Rates $4.3 million was the amount of expected upfront

payments based on existing licensing proposals.

Validity percentage

This was based on the assumption that the patent

families to be licensed would be granted and were

valid documents. Therefore, their validity

percentage was set to 100%.

Infringement

percentage

This is based on the assumption that the patents

would be used and implemented. Without such use

the patents would not stand, may not require a

license and are assumed to be 100% infringed.

Design Around

percentage

This is based on the assumption that the patents to

be licensed are commercially essential. Therefore,

the probability of designing around the patent

families would not be possible, i.e. 0%.

Discount Rate This is based on the cost of capital for comparable

industries, and the most expected value was 12%

Patents The patent family

Depreciation 15-year straight line based on the investment in the

portfolio

Maintenance

This includes costs for maintaining the patent

portfolio and is based on an annual average from

The Company’s Patent Attorneys and renewal fee

agents.

Tax Rate This has been fixed at 28%

Table 1: Assumptions for DCF model

There were three different licensing scenarios identified:

Option Note

Page 5: Case Study - Raising New Capital Through Patents · 2014-05-01 · Case Study - Raising New Capital Through Patents ANDERS ARVIDSSON Director Value Extraction Services, Zacco, Denmark

Raising New Capital Through Patents 5

1

No license agreement signed.

Revenues are based on one

existing licensee.

This is a worst-case scenario and only

valid if no licensing agreement was

executed.

2

All negotiated and existing

licensing agreements were

successfully licensed between

2012-2015.

This is the most conservative scenario,

which requires a smaller commitment

from the licensee and the Company still

has an opportunity to renew the

agreement after 2015.

3

All negotiated and existing

licensing agreements were

successfully licensed between

2012-2019.

This is the most likely scenario, which

would require a longer commitment

from one licensee.

Table 2: Licensing scenarios for the Company’s patent portfolio

The DCF model for Options 2 and 3 were tested through a Monte Carlo Simulation

(MCS). MCS is a problem solving technique used to approximate the probability of

certain outcomes by running multiple simulations using random variables. The MSC

simulated 5000 possible outcomes in respect to the uncertainty variables and assessed the

impact of risk, allowing for better decision-making under uncertainty. The uncertainty

variables in Table 3 will be used to simulate different outcomes in the on-going licensing

negotiations.

Uncertainty

Variables

Probability

Distribution

Minimum

Value

Maximum

Value

Most -

Expected

Value

Royalty Rate Triangular 1% 3% 2%

Royalty Fixed in

Total Triangular $3,000,000 $5,300, 000 $4,500,000

Table 3: Uncertainty variables for MSC

There were four different Licensees: three of them were already under negotiations and

one was already licensed.

Licensee Terms and conditions

LicA Non-exclusive license. Term being negotiated. $1 million upfront;

2% running royalties on net sales.

Page 6: Case Study - Raising New Capital Through Patents · 2014-05-01 · Case Study - Raising New Capital Through Patents ANDERS ARVIDSSON Director Value Extraction Services, Zacco, Denmark

6 Anders Arvidsson

LicB Exclusive license for North America. Term being negotiated. One

upfront payment for $4 million. No running royalties.

LicC

Non-exclusive license for Russia. Term for three years. $300 000

upfront, 4% in running royalties with a minimum increasing

annual royalty. Since no forecast data is available, revenues will

be based on minimum royalties between 2012-2014.

LicD

Exclusive license for South Asia. Term is due in 2014. Running

royalty rate of 4% on net sales with a commitment of a minimum

volume. Since no forecast data is available, revenues will be based

on the minimum volume and average net sales.

Table 4: Licensees that were either licensed or in negotiations

The annual depreciation rate of the patents was based on the accounting year of the

valuation, which was an annual amount of $60 000. This rate was based on the cost

generated by the patents, and the investment will be depreciated between 2008 and 2019.

3.3.1 Option 1 – Worst-case scenario (the Company)

This licensing scenario reflects a situation in which the only revenues are from the

existing agreement with LicD. In the license agreement, LicD had only a license to one of

the patent families, and no other patents were included. For the purpose of this scenario,

it was further assumed that all other pending negotiations failed and no further income

from licensing was expected. The royalties were based on LicD’s existing commitment of

a minimum volume sold at an average net sales price per unit at a royalty rate of 4%. The

maintenance is based on the expected costs of maintaining the patent portfolio.

Total Royalties ($) Value 2012 2013

LicD Royalty Rate (running) 4%

LicD Revenues running royalties 99,740 199,490

Gross Revenues 99,740 199,490

Depreciation 60,020 60,020

Maintenance 96,520 123,070

Tax 28% 27,930 55,860

Total ($) 35,320 80,590

NPV 2012-2013 115,910

Table 5: NPV for Worst Case Scenario

3.3.2 Option 2 – Most conservative scenario (the Company)

It is important to bear in mind that the market for the Company’s products was still under

development, which represented an increased risk for a potential investor. That is why a

potential investor/licensee could see a short-term license as an alternative instead of

establishing a longer relationship. In this scenario all patents were included and it was

also assumed that all patents were successfully licensed to all potential licensees

according to Table 4. The risks used as uncertainties in the MCS are identified in Table 3.

According to the MCS shown in Table 6 and Table 7, the Company would likely yield an

NPV of between $5-6 million between 2012-2015, which represents the highest

probability for the NPV.

Page 7: Case Study - Raising New Capital Through Patents · 2014-05-01 · Case Study - Raising New Capital Through Patents ANDERS ARVIDSSON Director Value Extraction Services, Zacco, Denmark

Raising New Capital Through Patents 7

Table 6: Cumulative Probability Distribution Curve of the NPV for Option 2

Table 7: Probability Distribution Curve of the NPV for Option 2

3.3.3 Option 3 – Most realistic scenario (the Company)

It was likely that the Company would close a licensing deal with LicA that would last as

long as 2019, because it would require a major investment to build up a production line

for the products. The other licensing agreements were expected to last until 2013 (LicD)

or 2014 (LicC) and would have had less impact on expected revenue streams. As in the

previous option, all patents are included and it is also assumed that all patents are

successfully licensed to all potential licensees according to Table 4. The risks used in the

MCS are the same as identified in Table 3. According to the MCS shown in Table 8 and

Table 9, the Company is likely to obtain an NPV of between $9-11 million between

2012-2019, which represents the highest probability for the NPV.

Page 8: Case Study - Raising New Capital Through Patents · 2014-05-01 · Case Study - Raising New Capital Through Patents ANDERS ARVIDSSON Director Value Extraction Services, Zacco, Denmark

8 Anders Arvidsson

Table 8: Cumulative Probability Distribution Curve of the NPV for Option 3

Table 9: Probability Distribution Curve of the NPV for Option 3

3.4 Comparable analysis of the value of the Company’s patent portfolio

It was not possible to identify any comparable transactions given the lack of transparency

in the market. However, in 2005 the Company acquired four of the patent families at an

accumulated value of $212 000, which can be used as a reference. If we assume that the

value is equally distributed among the assets, this gives an average price of $53 000 per

patent family. Thus, if the Company’s seven patent families have equal worth, this would

mean a total value of $371 000.

3.5 Valuation target and range for the Company

Leveraging the proceeding steps, it is now possible to establish valuation targets and

ranges for the portfolio. This will support its range and targets by providing a transparent

Page 9: Case Study - Raising New Capital Through Patents · 2014-05-01 · Case Study - Raising New Capital Through Patents ANDERS ARVIDSSON Director Value Extraction Services, Zacco, Denmark

Raising New Capital Through Patents 9

view of the assumptions and data used in the models, the results of the different

techniques, and scenarios.

To assess the relevance of the comparable value from Section 3.4, we can first look at the

price paid for each patent family ($53 000). This value would be relevant to Option 1 in

Section 3.3.1, since the license agreement only included one patent family. Even if

Option 1 was considered as the worst-case scenario, it could still be concluded that the

value per patent family would still be lower than the NPV ($115 910) in the worst-case

scenario. Since the patent sale took place in 2005, it would be fair to expect that the value

has increased based on the current circumstances. Thus, the comparable value seems out-

dated and not relevant to use as a comparison, while Option 2 appears to better reflect the

potential value of the patent portfolio, i.e. an NPV of between $5-6 million between

2012-2015.

According to Option 3, the Company was likely to realise an NPV of between $9-11

million between 2012-2019, which was also regarded as the most realistic value of the

portfolio. This led to a target range between $5-11 million, and the Company selected to

present the most conservative value at $5 million to its investors.

4. How the Investor assesses patent value

The facts included in the economic assumptions surrounding the patent portfolio as

described in sections 3.1 and 3.2 could be verified and seemed realistic. However, the

Investor was worried about how good these patents really were and had no experience of

patents as an asset class. That was why the Investor also needed to assess the risks for the

patents seen as assets, in order to understand if it was reasonable to assume that the

patents’ legal and technical assumptions, see 3.2, were as good as the Company said they

were. To challenge the Company, the Investor decided to use a patent attorney to assess

this risk and see if it was possible to quantify this in his model. In this situation, the

patent attorney addressed the following facts as being covered under 4.1 and 4.2. The

risks addressed by the patent attorney will differ from case to case and may not represent

all of the facts and circumstances that should have been considered for this valuation. It is

therefore important to understand that the following sections are examples of potential

risks rather than the only ones possible.

4.1 Legal assumptions

4.1.1 Legal status

All patent assets were assumed to be in force.

The remaining lifetime of the patent families varied between 8 to 18 years,

which was also within the same time frame used in the valuation.

The patent families’ territorial coverage was within the scope of the negotiated

or existing licensing agreements.

4.1.2 Protection capacity

It was assumed that all criteria for patentability had been fulfilled in each applied country

and all patent filings would be granted or maintained in their present form.

4.1.3 Products covered

There was only one patent family that seemed relevant to the products developed by the

Company that would potentially contribute to the value of a future license. Therefore, it

was assumed that the remaining portfolios were of opportunistic nature, and should not

be a part of the valuation. It was further assumed that any product subject to existing

and/or future licensing negotiation was covered by the scope of the patent claims in the

portfolio. However, since the Company assumed that all patent families were included in

the earlier valuation, this also meant that it would have a potential impact on the value. In

Page 10: Case Study - Raising New Capital Through Patents · 2014-05-01 · Case Study - Raising New Capital Through Patents ANDERS ARVIDSSON Director Value Extraction Services, Zacco, Denmark

10 Anders Arvidsson

the case that there was really only one patent protecting the Company’s future licensing

business, this posed a risk in the case that the patent were contested. If this patent were to

fall, the whole licensing business would fall with it. The patent was, on the other hand,

well-written, and the claims covered all essential features of the products. For this reason,

the patent attorney thought it was realistic to assess the likelihood of surviving a potential

conflict at 90%.

4.1.4 Scope of protection

As stated in 4.1.3, the claim language in the patent relevant to the products was well-

written, but the claims also included many features. The patent attorney therefore

concluded that there was a risk that the patents could be designed around, and he was

presented with a couple of different solutions. Although the presented solutions were not

considered as competitive as the Company’s, the patent attorney still considered this a

risk and it was decided to add a risk of 10% that the patent could be designed around.

4.1.5 Enforceability

An opposition was filed against the granted European Patent (EP) relevant for the

products. An oral proceeding was scheduled two months ahead of this valuation.

According to the patent attorney, there were some challenges to overcome the opponent’s

arguments in this case. The patent attorney also explained the opposition’s facts and

arguments which, according to him, could potentially contribute to new grounds for

invalidating or limiting the scope of the claims in the patents. However, the risk was

considered moderate and it was possible that the Company could overrule the opposition.

The patent attorney therefore recommended adding a risk of 75% that the patent would

remain valid in its current form.

4.1.6 Rights of disposition

According to the Company, all patents were owned and controlled by the Company and

there were no other liens, shared ownership, escrows, etc. related to the patents. The

Company acquired four patent portfolios in 2005 and all rights have been assigned and

verified by the Company’s attorney. In 2007, the patent families were transferred to the

Company. It was therefore reasonable to assume that all patents were owned 100% by the

Company.

4.2 Technical assumptions

The Company already had products on the market, sold under license from vendors like

LicD. Thus, there is a proof of concept, and it was assumed that the products were

technically feasible in a production line. It had not been possible to foresee any

replacement products, and it was also assumed that the Company would be able to use

their patents to differentiate against competing solutions.

4.3 Valuation scenarios according to the Investor

According to the input provided by the patent attorney in sections 4.1 and 4.2, the

Investor concluded that the following Legal and Technical risks should be changed and

discounted from the valuation given in 3.3:

Parameter

Assumed Scenario

Validity

percentage

This was based on the facts of the upcoming opposition and

could have an impact on the future revenues of the

Company’s licensing business. Therefore, the validity

percentage was set to 75%.

Page 11: Case Study - Raising New Capital Through Patents · 2014-05-01 · Case Study - Raising New Capital Through Patents ANDERS ARVIDSSON Director Value Extraction Services, Zacco, Denmark

Raising New Capital Through Patents 11

Infringement

percentage

This was based on the fact that the patent attorney addressed

certain issues about the patents that could affect the

Company in a potential conflict. Therefore, the risk of

infringement was assumed to be 90% as concluded by their

patent attorney.

Design

Around

percentage

This is based on the assumption that the patents to be

licensed are commercial, but it was possible to design around

some of the patents even if the results were not as good as the

Company’s. Therefore, the probability of designing around

the patents was set to a likelihood of 10%.

Table 10: Changes in the assumptions for the DCF model

4.3.1 Option 1 – Worst-case scenario (Investor).

Option 1 presented in section 3.3.1 was not effected by the Legal and Technical risks,

since LicD was already committed to paying royalties to the Company until 2013. The

license agreement was also very well drafted, and there was only minor risk that the

agreement would be revoked. The scenario in Option 1 was therefore assumed correct

and consequently seen as a realistic value of a worst-case scenario.

4.3.2 Option 2 – Most conservative scenario (Investor)

Since Option 2 in 3.3.2 assumed that the patents were successfully licensed to LicA, LicB

and LicC in Table 4, it required that the patents would not be challenged. In Section 4.1

the patent attorney saw several risks that could have an impact on the patents value,

which were used in the valuation of this scenario. Consequently, the risks presented in

Table 10 were added to the same model as used in 3.3.2, which were previously

considered negligible risks by the Company.

The uncertainties used in the MCS are the same as in Table 3, but now include the

changes in the risks according to Table 10. The MCS shown in Table 11 and Table 12

show that the Company would be likely to obtain an NPV of between $3-3.5 million

between 2012-2015, as opposed to the $5-6 million projection in the Company’s

valuation. This is a considerable difference and shows that the legal and technical risks

are not negligible, though the valuation is still at least three times as much as the

valuation of $800,000 when using the original costs-based method.

Page 12: Case Study - Raising New Capital Through Patents · 2014-05-01 · Case Study - Raising New Capital Through Patents ANDERS ARVIDSSON Director Value Extraction Services, Zacco, Denmark

12 Anders Arvidsson

Table 11: Probability Distribution Curve of the NPV for Option 2

Table 12: Cumulative Probability Distribution Curve of the NPV for Option 2

4.3.3 Option 3 – Most realistic scenario (Investor)

This scenario will address the same concerns and risks as used in section 4.3.2, but

concern the period between 2012-2019, which was considered as the most realistic

Page 13: Case Study - Raising New Capital Through Patents · 2014-05-01 · Case Study - Raising New Capital Through Patents ANDERS ARVIDSSON Director Value Extraction Services, Zacco, Denmark

Raising New Capital Through Patents 13

scenario according to the Company. The result presented here provides an NPV between

$5-6 million compared to $9-11 million. This tells us that the legal and technical risks

will have a greater impact on the value over time, which is also a fair assumption since

the outcome of enforcing patents is very unpredictable according to the patent attorney.

Table 13: Probability Distribution Curve of the NPV for Option 3

Table 14: Cumulative Probability Distribution Curve of the NPV for Option 3

4.4 Comparable analysis of the value of the patent portfolios for the Investor

As in 3.4, there are no relevant transactions available to make a comparison, but now it

was at least possible to compare the values between the different assumptions made by

Page 14: Case Study - Raising New Capital Through Patents · 2014-05-01 · Case Study - Raising New Capital Through Patents ANDERS ARVIDSSON Director Value Extraction Services, Zacco, Denmark

14 Anders Arvidsson

the Investor and the Company. According to Table 15, both the median and mean value

for Option 2 is almost 70% higher without considering the Legal and Technical risks and

it also has a much wider range.

Value w/o Legal

and Technical risk

Value w/ Legal

and Technical risk

ITEM NPV 2012-2015 ($) NPV 2012-2015 ($)

Mean 5,428,640 3,194,740

Median 5, 435,640 3,201,300

Range Minimum 3,761,490 2,185,070

Range Maximum 7,038,830 4,276,880

Range Width 3,277,340 2,091,810

Table 15: Comparison of Statistics for Option 2

For the comparison of Option 3 shown in Table 16, the values without the risk changes

are over 76% more than those with, which is even greater than the values shown in

Option 2.

Value w/o Legal

and Technical risk

Value w Legal

and Technical risk

ITEM NPV 2012-2019 ($) NPV 2012-2019 ($)

Mean 9,846,400 5,598,090

Median 9,853,860 5,576,450

Range Minimum 6,179,570 3,352,070

Range Maximum 13,699,670 8,389,160

Range Width 7,520,100 5,037,090

Table 16: Comparison of Statistics for Option 3

4.5 Valuation target and range for the Investor

As in the proceeding steps, we can now establish more accurate valuation targets and

ranges for the portfolio considering the risks of the patents.

The relevance of Option 1 was concluded to be correct, but is also somewhat out-dated

since there was a strong indication that the Company would close the new licensing

deals. Option 2 is based on the current circumstances, but it is also likely that the

licensing business for the Company would continue to develop further as pictured in

Option 3. That is why the Investor could assume a valuation range between $3-6 million,

and $4 million would be a reasonable target.

5. Conclusions of the case study

The valuation approaches for the Company yield an apparent range of $3.7-7.2 million,

with a median value of $5.4 million for the most conservative scenario. The DCF model

made for the Company did not reflect the risk of the patents as seen in this valuation,

since it considered that the likelihood of a potential conflict under the circumstances was

Page 15: Case Study - Raising New Capital Through Patents · 2014-05-01 · Case Study - Raising New Capital Through Patents ANDERS ARVIDSSON Director Value Extraction Services, Zacco, Denmark

Raising New Capital Through Patents 15

small. The Company’s justification for this argument was that they were acting as a seller

and that it was up to the buyer or licensee to assess such risks.

For the Investor, the valuation yielded a range of $2.2-4.2 million, with a median value of

$3.2 million. The patent licensing business still seemed like a good opportunity and was

likely to generate a reasonable return in spite of the risks. That said, the risks surrounding

the patents are still a concern and the Investor may want to consider making an early exit.

In this way the Investor could better manage the risk and minimise future challenges that

may have an impact on the patents’ value.

6. Summary

The valuation methodology in this case was based on a target valuation that took

technical, legal and economic aspects of the patents into consideration. In patent

transactions, a hypothetical buyer or licensor mostly sees value in relation to the present

value the investment can generate. This means that the return on a patent from a buyer’s

perspective should take into account risks like infringement, design and validity as well

as competing solutions, revenues, growth and expected duration of the product. If there is

a high likelihood that an actual or future product will be covered by a patent, that should

also be reflected in the valuation.

We have now demonstrated that the cost of obtaining a patent is not an accurate means of

valuation, and that it is more accurate to use a free cash flow model to measure a patent’s

value. Even if it is possible to show a high, positive NPV by using a free cash model, it is

also possible that these values could be higher if the assumptions are too conservative.

However, there are also factors that could bring down the NPV, as in the case that the

patents are invalidated or limited in use for various reasons. Thus, in order to secure

one’s interest, it is also necessary to select an appropriate valuation approach The value

of a patent is clearly in the eyes of the beholder, and no valuations will be the same

unless they are founded on identical assumptions.

***

Anders Arvidsson, is head of value extraction services at Zacco1. He has more than 19

years' experience of developing, valuing and monetising patent assets in the corporate

world. Zacco is one of Europe's largest full-service IP firms, with offices in Denmark,

Sweden, Norway, and Germany.

Mr Arvidsson works closely with clients to leverage the value of their intellectual

property in Europe. He has provided customised services for clients that have an interest

in monetising or investing in intellectual property. As a market maker, Mr Arvidsson has

been one of the pioneers in creating the marketplace for IP transactions, which has helped

to protect companies’ strategic product position and to maximise the value of their

intellectual property. He is constantly seeking new ways of using intellectual property as

a strategic tool to achieve competitiveness in the IP market, and has been selected for

inclusion in the IAM 3002 – the World’s Leading IP Strategists.

Previously, Mr Arvidsson worked for Nokia, where he headed the patent acquisition

team. He contributed to annual revenue capture from various investments and negotiated

transactions involving multiple patent portfolios.

Zacco is a prominent full-service intellectual property consultancy with 15 offices in

Denmark, Germany, the Netherlands, Norway and Sweden. Through legal consulting,

1 http://www.zacco.com/ 2 http://www.iam-magazine.com/strategy300/directory/Detail.aspx?g=b73c05ec-fbf2-42f4-aaf4-

55d769016fdc

Page 16: Case Study - Raising New Capital Through Patents · 2014-05-01 · Case Study - Raising New Capital Through Patents ANDERS ARVIDSSON Director Value Extraction Services, Zacco, Denmark

16 Anders Arvidsson

market analysis, IP portfolio construction and risk management, we help our customers

turn intangible assets into sustainable business value.

Zacco has around 500 employees in all fields of intellectual property, including

approximately 200 attorneys – of whom about 100 are experienced European Patent-,

Trademark and/or Design Attorneys. Our staff also includes 40 Attorneys-at-Law and

200 knowledgeable IP administrators. The result is an IP firm that combines in-depth IP

expertise with the business, legal and technical skills needed to ensure our clients a

lasting competitive advantage.