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Client Confidential

The Influence of IEEE on Key Patents

Prepared For:
Michael Spada
Director of Product Marketing - IEEE
445 Hoes Lane
Piscataway, NJ 08855-1331, USA

Prepared By:

Anthony Breitzman, PhD


and
Patrick Thomas, PhD

1790 Analytics, LLC


130 N. Haddon Ave.
Haddonfield, NJ 08033

May 29, 2009


Executive Summary
1790 Analytics was engaged by the IEEE to identify valuable patents that build upon
research published by IEEE. The main findings of our report are:

 Patents have a highly skewed value and impact distribution. Very few patents
have a major technological impact or have significant financial value. Many more
patents have limited technological or financial value.

 The aim of this report is to isolate these important and valuable patents, and
identify which of them build upon IEEE science. We first identified patents that
are cited frequently by later patents, since such patents have a strong impact on
technological developments. From among these high impact patents, we then
identified those that cite at least four different IEEE articles as prior art.

 A list of almost 800 high impact patents that build extensively upon IEEE science
is provided in Appendix A. From among this list, in this report we highlight 48
patents, six each from eight different industries (Computer Hardware; Computer
Software; Semiconductors; Information Storage; Optics; Telecommunications;
Robotics; and Medical Devices).

 Each of the 48 patents we highlight was selected because it appears to be of


particular technological or financial value. Some of the patents we highlight have
stimulated whole new areas of research. Other patents have had central roles in
technology licenses and company purchases valued at tens, and in some cases,
hundreds, of millions of dollars.

Examples of patents highlighted in the report:

 A patent for interference modulator (iMoD) incorporating anti-reflection coatings


and micro-fabricated light sources. Specifically, iMoD technology, based on a
Micro-Electro-Mechanical-Systems (MEMS) structure combined with thin film
optics, is a display technology that delivers vivid display images with lower
power consumption. The technology was acquired by Qualcom in 2005 for $170
million. The iMoD technology is just now starting to reach the market under the
trademark “Mirasol” (see www.mirasoldisplays.com) In February 2009, the
Inventec V112 was announced. It will be the first smartphone available with an
iMoD based screen. Also, in February 2009, Qualcomm announced an agreement
with LG to develop Mirasol based handsets.

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 A patent from an Israeli semiconductor firm named Saifun for a non-volatile
EEPROM (electrically erasable and programmable) memory cell. The patent was
invented by the firm’s CEO Boaz Eitan. Eitan who is a former employee of Intel,
is considered to be one of the world’s leading experts on non-volatile memory
components. Saifun signed Licensing deals with Sony, Fujitsu, Infineon and
others that are expected to generate royalties in the hundreds of millions of
dollars. In 2007 Spansion purchased Saifun to gain access to its non-volatile
memory for $368 million. Boaz remains CEO of Saifun, which runs as a wholly
owned subsidiary of Spansion.

 A patent for digital watermarking assigned to Digimarc Corporation. This patent


builds extensively on science published in IEEE journals, and references 15
separate IEEE papers as prior art. Digimarc’s patent describes a method for
watermarking digital materials so that they can be tracked individually. This
technology has already been proven in a well-publicized case, by identifying an
Academy Award “screener” who allowed a nominated film to be copied and
redistributed before its official release date. This technology has been licensed,
and has the potential to reduce or eliminate a $10 billion copyrighting problem.

 A medical device patent from Georgia Tech with the title “Microneedle devices
and methods of manufacture and use thereof.” Microneedle technology is a new,
microscopic injectable drug delivery method that can target specific layers of the
skin. The novel dual-delivery method combines the advantages of hypodermic
syringes and transdermal patches. There are many medicines that cannot be used
with transdermal patches because they will not penetrate the skin. The
microneedle patches solve the problem painlessly, because unlike hypodermic
needles the microneedles are too small to stimulate nerve endings. Moreover, the
microneedle patches allow better dosage control and are seen to be particularly
useful for insulin because the dosage could be more easily adjusted and the
injections can be pain free. Finally, the technology holds promise for mass
vaccinations because they’re cost effective and could be applied by people with
minimal training. In 2007 Apogee Technology signed an exclusive license with
Georgia Tech to use the microneedle technology in its PyraDerm drug delivery
system. The microneedle patent lists several IEEE articles as prior art.

 A patent assigned to Immersion Corporation, describing a method for adding the


sense of touch to interactions with digital media. This technology for adding
feeling to a controller holds significant promise for robotic assisted surgery and
medical simulations. Currently, however, its highest impact is in the video game
market. This patent is licensed to Microsoft and is the basis for Microsoft’s
popular sidewinder force-feedback joystick. Also, in March 2004, a US court
granted Immersion an injunction to halt sales of Sony Playstations and 47 video
games that infringed on Immersion’s related patents for its “feedback” controls.
Sony was also ordered to pay over $90 million in damages for patent infringement
related to this patent and related technology. The nine different IEEE articles

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referenced in this patent suggest that IEEE science provided an important
foundation for this technological development.

 A patent related to Digital Rights Management (DRM) and assigned to Intertrust


Technologies Corp. Although firms seem to be moving away from DRM, the
Intertrust DRM patents were extremely valuable. In 2003 an investment group
that included Sony and Philips purchased Intertrust for $453 million. In 2004
Microsoft settled a lawsuit with Intertrust for $440 million and took out a license
on Intertrust’s DRM technology. In 2009 Intertrust signed a license with
Samsung. This follows similar deals with Nokia, Pioneer, and Motorola in 2008,
and LG Electronics and Adobe in 2007. Terms of these deals have not been
announced, but if Microsoft is a guide they are likely to be sizeable.

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