Israel is known as the land of milk and honey, the Holy Land, and the Startup Nation. And it consistently ranks in the top five countries for number of Patent Cooperation Treaty (PCT) patent applications filed per capita. But due to its relatively small size, it’s understandably not known as a hotbed of major patent deals. Yet, surprisingly, the person responsible for making many of the biggest patent deals in the world happen is an unassuming lawyer based in Tel Aviv, Lillian Shaked.
On this episode, Lillian talks about how she went from being a commercial attorney in Israel to working with the biggest names in patent monetization. She generously shares the insights that she has gained along the way and her thoughts about what it will take to be successful in the future. She also talks about her decision to transition from just being “the lawyer” making the deals happen to acquiring and monetizing the patents herself. She is doing that now from her new perch as a Vice President of Licensing for Transpacific IP.
On Why You Shouldn’t Squeeze Every Cent Out of a Patent Deal
“Once you do one deal, you do two deals, you do three deals, and they see that you’re coming [out] with high quality work product, you’ve done your research, and you’ve done the work, and you’ve been negotiating reasonably; it then becomes much easier to continue to work with people. If you’re going to burn your bridges and be nasty, even if you get one deal done and you get a couple more cents on the dollar, you have to consider that these big players are the ones you’re going to come up against a second time and a third time. And if you’re not able to maintain relationships, it becomes much more difficult.”
Impact of Patent Litigation Funding
“It brought the [patent monetization] industry back into business. It became very expensive to acquire portfolios, because as I said, it was no longer single patent deals…In the heyday, we were acquiring and licensing within 90 days without litigation, 90 days from acquisition to license, money in the bank; that sort of became extended to three to five years. So, it became more expensive, a lot more litigation. If the litigation funding companies had not stepped in to provide the funding, I don’t think the industry would have been able to get back on its feet. This has enabled companies and individuals to continue to assert and license patents.”
How Patent Litigation Funding Has Evolved
“I’ve seen another big change in the space. Originally, the patent litigation funding companies were very passive. They waited for the deals to come to them. They didn’t necessarily have a history with the companies, they funded companies, then there became sort of a misalignment of interest between what the company wanted to obtain in terms of revenue – settlement and licensing revenue – and what the funds thought they were entitled to, and what should have happened by now. So they move some very passive role to a more active role, where some of the patent litigation funds are actually scouting [and] looking for deals themselves.”
Why Litigators Prevent Win-Win Patent Deals
“Ego is big . . . there’s the need to win in court. Whereas for transactional lawyers, the win is getting the deal done. So it’s a little bit of a different outlook in terms of the actual negotiation. Oftentimes, litigators are sort of working hourly or on contingency and they’re interested in the highest settlement they could potentially reach. Transactional lawyers might not have that hanging over their head. And again, it’s the relationship building. And oftentimes, clients use different patent litigators for different matters. Whereas as a transactional lawyer I work with the same clients regardless of the patents and the cases. So, I have more relationships with the licensees…For transactional, the quicker we get to a license, the better for everybody.”
Advice for Getting Deals Done
“Be quick, don’t wait on things. You have to keep the momentum. You have to turn things daily, you have to be in touch, you have to set up the next call when you’re on the first call. You have to keep people engaged.”
Misguided Shame of Enforcing Patents
“I think there’s this issue of shaming, and the patent funding companies don’t want to take the risk of shaming. But again, I don’t understand this bit about shaming. I always liken patent monetization or litigation to trespassing. You have a piece of land, and in order to get to the other side, people have to walk over that land. Well, you wouldn’t tolerate that, you wouldn’t allow somebody to walk over your land to get to somewhere else without giving that person permission. [It’s the] same thing – people should not use other people’s patented technology without permission, without a license.”
Other Topics Discussed:
- How moving from Canada to Israel set her apart as Israel’s high tech sector boomed
- How Lillian made a patent transaction career from one patent deal
- Working with Erich Spangenberg
- Advantage of working from Israel on American patent deals
- Importance of ongoing, positive relationships between parties involved in patent transactions
- Different approaches to monetization: soft licensing versus suing before negotiating
- Monetization strategies based on reasonableness of infringers/potential licensees
- Impact of course correction in patent market after the boom years in the early 2000s
- Terms to avoid in patent deals
- Why and how deals fall apart
- Importance of momentum for patent transactions
- Why the BlackBerry patent deal fell apart
- Transitioning from handling the transactions as a lawyer to acquiring patents from beginning
- Advice for building valuable patent portfolios
Join the Discussion
5 comments so far. Add my comment.
sugouriMarch 17, 2023 05:02 pm
huge fan of Lillian. thank you for being a great role model to all the women IP lawyers out there 🙂 i remember feeling shame saying that i do ‘patent monetization’ — until Lillian effortlessly changed my mind during our first interaction. THANK YOU !!!!!
Pro SayMarch 14, 2023 05:28 pm
Sure; you’re welcome Eli. Your interviews — including your interviewees — are excellent.
Eli MazourMarch 14, 2023 01:50 pm
Thank you Jonathan S. and Pro Say!
Pro SayMarch 13, 2023 11:26 pm
Thank you Eli and Lillian. Well worth the time.
Jonathan StroudMarch 13, 2023 10:51 am
Super interesting, thanks.