04: Palm A

Read “Intellectual Property and Strategy” (HBS #9-704-493). This article describes the protection of intellectual property and discusses key strategic considerations including business models, digital rights and international issues. The article was written before U.S. patent processes were significantly modified by passage of the America Invents Act which was signed into law during the Obama administration. This law changed the U.S. patent system from a “first-to-invent” basis to a “first-to-file” basis, effective March 2013. We will discuss this and other elements of intellectual property strategy in class.

Read the brief article, Network Analysis of COVID-19 mRNA Vaccine Patents_Nature May 2021.pdf, posted in the Readings folder in Canvas Files. This recent article from the May 2021 issue of Nature Biotechnology highlights the complex intellectual property network behind today’s mRNA-based COVID-19 vaccines, which has its roots right here at Penn. As you read the article, look at the progression of patents and licenses along the vaccines’ development pathways. Specifically, the article follows three key sequential elements of the vaccines’ development:

• (i) modifying the mRNA so it is stable;
• (ii) delivering the mRNA in a lipid nanoparticle; and
• (iii) designing the mRNA sequence such that the resulting spike protein is stable and elicits an immune response. Note the dispute between NIH and Moderna as to who is the actual inventor!

Then read the recent Wall Street Journal article, Moderna Sues Pfizer and BioNTech, Alleging mRNA Patent Infringement - WSJ.pdf, Alleging mRNA Patent Infringement, posted in the Assigned Readings folder in Canvas Files. This article describes Moderna’s move to protect its innovative mRNA technology platform which the company claims has been copied by its competitors.

Optional (not required): A considerably longer article from the January 15, 2022, issue of the New York Times, Halting Progress and Happy Accidents: How mRNA Vaccines Were Made, walks you through the development of the Pfizer-BioNTech and Moderna vaccines. While considerably lengthier than the above assigned article, the NY Times article is written for the lay reader in somewhat less scientific terms. The Times article, also posted in the Readings folder in Canvas Files, is very interesting and timely, but is optional reading.

Read the “Palm Computing, Inc. (A) case (HBS #9-396-245). Today’s case discusses key issues of intellectual property surrounding the launching of Palm Computing, Inc., Jeff Hawkins’ early venture in palm-sized, pen-based personal computers. Palm products were the vanguard to the ubiquitous smart mobile devices (e.g., i-phones, Androids, etc.) on today’s market.

Think about how you would answer the following study questions:

• Why did Hawkins choose to strategically position Palm Computing as he did as an independent entity and not as a division within Tandy? How did that affect his gathering of resources (e.g., capital, people, strategic partners)? Describe this gathering process.
• Who is the inventor of the patent discussed in the case? Who is the owner of the patent?
• From Jeff Hawkins’ point of view, what are the advantages and disadvantages, if any, of the intellectual property protection he obtained for his pattern recognition algorithm, PalmPrint.
• What are Hawkins’ objectives for negotiating with Tandy? What strengths and weaknesses does Hawkins bring to the negotiation process?
• What strategy would you recommend Hawkins use to obtain Tandy’s cooperation?
• Why would Tandy want to execute such an agreement?

Be prepared to discuss this reading and case in class.

DUE

Following the guidelines in the Case Method Overview (posted in Canvas Files), write a concise 2-page essay addressing the question:

In the Palm A case, Jeff Hawkins is faced with the challenge of signing a cross-license agreement with Tandy Corporation in order to allow him to launch Palm Computing, Inc. What are Hawkins’ objectives for negotiating with Tandy? What does Hawkins want and need in this agreement and what is his rationale for each? Why would Tandy want to execute such an agreement?

In the Palm A case, Jeff Hawkins is faced with the challenge of signing a cross-license agreement with Tandy Corporation in order to allow him to launch Palm Computing, Inc.

• What are Hawkins’ objectives for negotiating with Tandy?
• What does Hawkins want and need in this agreement and what is his rationale for each?
• Why would Tandy want to execute such an agreement?

Submit your essay via Canvas prior to class. This essay must be your own work subject to the University’s Code of Academic Integrity.

---

Intellectual Property and Strategy

Four Types of Intellectual Property

patents, copyrights, trademarks, and trade secrets

Intellectual Property and Strategy

“information paradox.”

• Licensing
• Strategic Creation or Acquisition of New IP
• Digital-Rights Management
• Publishing IP

International20

Copyright is not strong as patten

Trade mark

Copyright is not strong as patten

• LOGO(and or logo with name)

  Palm, Grid, Tandy

• Terms and notice

Any sense can be trade markable

shape, smell(wine, smoke), taste(cola)

verb.

Can not make confusing to consumers

Trade Secrets

Formula, pattern, device, or compilation of information

Recipe

Figures

Super set of manufacturing process

Confidential Information

NDA

Pa

settlement is always better way

Reverse Engineering is workable for trade secrets

Do not violet others secret

Law is lagging

Internet Time