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IP-based SWOT Analysis – TomTom for: July 30, 2014 1

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IP-based SWOT Analysis – TomTom

for:

July 30, 2014

Table of Content

1Overview4

1.1Objective of the SWOT Analysis4

1.2Methodology Used to Conduct the SWOT Analysis5

1.3Common Assumptions across the Study9

2Overall Patent Portfolio Analysis10

2.1Overall Analysis of TomTom’s Portfolio10

2.1.1Break-up of TomTom’s Patent Portfolio in to Technology Categories10

2.1.2Technology-wise Filing Trends of TomTom’s Patent Portfolio14

2.1.3TomTom’s Product Lines vis-à-vis Patent Portfolio17

2.1.4Growth-Share Matrix Analysis for TomTom’s Patent Portfolio20

2.2TomTom’s Portfolio VS Market Competitors22

2.2.1Technology-wise Comparison22

2.2.2Technology-wise Filing Trends Comparison24

2.2.3Comparison of R&D Expenditures: TomTom vs. Top Market Competitors (Garmin and MiTAC)27

2.2.4Other Potential Technology Areas Where Competitors Are Filing Patents30

2.2.5Other Comparison Parameters for TomTom vs Competitors31

3Category-Level Overview: Vehicle Navigation32

3.1Sub-category-wise Break-up of TomTom’s patents in Vehicle Navigation Category32

3.2Sub-category-wise Evolution of TomTom’s patents in Vehicle Navigation Category34

3.2.1Other Parameters of Analysis at Category Level34

4Sub-Category-Level Analysis: Vehicle Navigation - Using GPS35

4.1Key IP Holding Companies and Market Competitors35

4.2Patent Filing Trends: TomTom vs Competitors37

4.3Countries of First Patent Filing: TomTom vs Competitors40

4.4Countries of Patent Protection (Patent Deposition): TomTom vs Competitors42

4.5Patent Grant Analysis: TomTom vs Competitors44

4.5.1Grant time ratio44

4.5.2Grant rejection ratio46

4.5.3Legal status distribution48

4.6Research Collaboration: TomTom vs Competitors50

4.7Statistical Inventor Strength Analysis: TomTom vs Competitors52

4.7.1Inventors per Patent Families52

4.7.2Number of inventors employed54

4.8Patent Strength Analysis: TomTom vs Industry56

5Annexure58

5.1Definitions58

5.2Term Set58

5.3Relevant Classes Identified59

5.4Search Strings68

5.5Data Sources68

OverviewObjective of the SWOT Analysis

TomTom has a patent portfolio covering multiple aspects of vehicle navigation and associated technology areas.

The complete patent portfolio SWOT analysis encompasses:

· Analysis of TomTom’s patent portfolio at a standalone level to identify TomTom’s strengths and weaknesses; and

· Analysis of TomTom’s patent portfolio vis-à-vis the competitors’ patent portfolios to identify external threats and opportunities for TomTom.

Please note: For this study, the stand-alone analysis of TomTom’s patent portfolio has been done at multiple levels, namely, overall portfolio level, technology category levels (such as Vehicle Navigation, Traffic Analysis, etc.) and technology sub-category levels (such as Route Determination in Vehicle Navigation system, Estimated Time of Arrival calculation in Vehicle Navigation system, Audio/Visual Route Guidance in Vehicle Navigation system, etc.).

However, the comparative analysis of TomTom’s portfolio, w.r.t. the competitors, has only been done for one of the “technology category levels” (namely, Vehicle Navigation) to identify the opportunities and weaknesses w.r.t. Vehicle Navigation and its sub-categories.

In summary, this analysis tries to answer several questions for TomTom including, but not limited to, the following:

1. What are the strengths and weaknesses of TomTom’s IP portfolio vis-à-vis its top competitors? Are there any technology areas where TomTom is leading? Are there any technical areas where TomTom is lagging? Have TomTom’s competitors diversified in to new technical areas? If yes, then which areas?

2. What are the patent filing trends of TomTom vis-à-vis competitors?

3. Which countries are the innovations hubs - in the domain(s) of TomTom’s interest?

4. Which countries are being targeted by TomTom and its top competitors for IP protection?

5. How does TomTom compare with its competitors in terms of patent-grant ratio?

6. How does TomTom compare with its competitors in terms of inventions generated per inventor and inventions generated per $ on R&D spent?

7. Which organizations do TomTom and its competitors collaborate with to generate IP?

8. Which are the strong patents in TomTom’s areas of interest?

9. Who owns these strong patents? Are there any potential acquisition targets for TomTom?

10. What is the average strength of TomTom’s patents vis-à-vis its competitors?

11. How TomTom is placed in Revenue vs IP ratio? Are there any product segments where TomTom might be overdoing IP vis-à-vis the revenue contribution of product segments? Are there any licensing based revenue earning opportunities in TomTom’s patent portfolio? Are there any high revenue generating product segments weakly protected by TomTom’s IP?

Methodology Used to Conduct the SWOT Analysis

The following table lists down the activities involved in conducting the SWOT analysis.

Activity

Step-wise details of the activity

Output

Activities to obtain TomTom’s IP Data

Activity 1:

Identifying all the subsidiaries of TomTom, i.e., all those entities in whose name TomTom may hold any patents

1. Obtaining list of TomTom’s subsidiaries from TomTom’s website.

2. Conducting secondary searches on the Google.

3. Conducting searches on Hoovers, Bloomberg and other business research websites.

4. Obtaining list of TomTom’s subsidiaries from Questel Orbit’s Corporate Tree.

List of all subsidiaries of TomTom, i.e., all those entities in whose name TomTom may hold any patents (including the inventor names)

Activity 2:

Identifying Relevant IPC / CPC and US classes in TomTom’s Patent Portfolio

1. Identifying all patents and patent applications assigned to TomTom and its subsidiaries.

2. Identifying all the IPC / CPC / US Classes in which these patents/ applications fall.

List of all unique IPC / CPC and US Classes in which TomTom’s patents fall

Activity 3:

Manual analysis of classes to form technology categories

1. Manually analyzing all unique IPC / CPC and US classes identified above.

2. Grouping these classes into technology categories.

List of technology categories, along with the IPC / CPC / US classes that are included in each technology category

Activity 4:

Categorizing TomTom’s patents/ applications in technology categories

1. Categorizing all TomTom Patents/ applications in to Technology Categories based on their IPC/CPC/US classification.

2. Conducting search to capture all the patent families including the families which have no active or pending members.

List of patents / applications of TomTom in each technology category.

Any patent / application falling in more than one category is included in the list for each of these categories.

Activity 5:

Obtaining bibliographic data, assignment data, legal status data, priority country, countries of deposition and other information for further statistical analysis

1. Extracting all relevant bibliographic information about TomTom’s patents / patent applications for use in further analysis

Bibliographic data for each patent / application in TomTom’s portfolio

Activities to obtain TomTom’s Product Data

Activity 6:

Identifying product segments and sub-segments from TomTom’s Product Portfolio

1. Browsing TomTom’s product portfolio from TomTom’s website to identify all the product segments and sub-segments.

List of TomTom’s products and services categorized in to segments and sub-segments

Activity 7:

Identifying / Estimating revenues attributed to various product segments and sub-segments of TomTom

1. Identifying TomTom’s revenue attributed to each product segment / sub-segment from TomTom’s annual reports and other public sources.

2. Taking assumptions and estimating the revenue for a product segment / sub-segment, if detailed information was not available publicly.

Revenues attributed to various product segments and sub-segments of TomTom

Activities to Identify Competitors and Obtaining their IP Data

Activity 8:

Identifying Top IP Competitors of TomTom

1. Capturing all patent families having at least one member falling in any of the IPC/CPC/US classes identified during Activity 2.

2. Identifying top 5 assignees (IP Holding Companies) who have maximum number of patent families obtained from above search.

List of TomTom’s top 5 IP competitors

Activity 9:

Identifying Top Market Competitors of TomTom

1. Identifying top Market Competitors by conducting online research on various business news sites, new letters, online encyclopedia and other data sources.

List of TomTom’s top market competitors.

Please note that Market competitors may also be the IP competitors and might already be in the list of competitors obtained at above step #8.

Activity 10:

Identifying Competitors’ patents in each technology category of TomTom

1. Preparing separate search strategies for each technology category.

2. Conducting search using each search strategy to capture Key IP Holding Companies and Market Competitors’ patents / patent applications falling in each technology category.

3. Capturing all the patent families including the families which have no active or pending members.

List of patents / patent applications of identified key IP Holding Companies and Market Competitors in each technology category.

Any patent / application falling in more than one category is included in the list for each of these categories.

Activity 11:

Identifying Competitors’ patents outside the technology categories of TomTom

1. Identifying all other patent families assigned to Key IP Holding Companies and Market competitors that fall outside the technology categories of TomTom.

2. Identifying all major IPC/CPC/US classes appearing in this set of patent families.

3. Manually analyzing all these additional IPC / CPC/US classes to group them into new technology categories not present in TomTom’s portfolio.

List of patent families organized by other technology categories not present in TomTom portfolio but present in Key IP Holding Companies / Market competitor’s portfolios

Activity 12:

Obtaining bibliographic data, assignment data, legal status data, priority country, countries of deposition and other information for further statistical analysis

1. Extracting all relevant bibliographic information for each patent / patent application belonging to Key IP Holding Companies and Market Competitors’ for further analysis.

Bibliographic data for each patent / application belonging to IP/ Market competitor.

Analysis and Brainstorming to Dig Out Insights

Activity 13:

Analyze filing trends of TomTom and different competitors

1. Extracting the first filing year data of the patent families assigned to TomTom and key IP Holding Companies and Market Competitors’.

2. Plotting the total number of patent families along with the first filing year to generate a line graph for each of the technology category.

A line graph prepared depicting the filing trends for each of the technology categories for TomTom assets and each identified Key IP Holding Companies and Market Competitors

Activity 14:

Analyze TomTom’s IP coverage vs Product Segments

1. Understanding each of the product segments and their sub-segments by going through the technical descriptions of each segment and sub-segment.

2. Collecting revenue for each of the product segments.

3. Mapping the product segments with the technology categories of TomTom’s IP based on the expert’s understanding.

4. Calculating revenue vs. IP asset ratio for each of the product segments.

A table depicting the product segments and their relative IP protections by each technology categories of TomTom’s IP.

The table also depicts the revenue vs. IP asset ratio for each of the product segments.

Activity 15:

Analyze average grant time, rejection-ratio, and current status of portfolios

1. Collecting the filing date and issue date for each of the granted patents including the active and expired patents for each of the patent families of TomTom and Key IP Holding Companies and Market Competitors.

2. Calculating the time duration between filing date and issue date for each of the granted patents.

3. Preparing a line graph and a bar graph based on the calculated data.

4. Analyzing current legal status of patent families in portfolios of TomTom and competitors, analyzing how many applications were abandoned during prosecution for various reasons and comparing the rejection-ratio of TomTom’s portfolio against the competitors.

Graphs and charts depicting the time duration taken during patent application examination period, legal status and the rejection-ratios.

Activity 16:

Analyzing trends in grant –rejection ratio of TomTom and Competitors

1. Collecting the total number of granted patents including the active and expired patents for each of the patent families of TomTom and IP Holding Companies and Market Competitors.

2. Collecting the total number of rejected patent applications including the Patent applications including those are in lapsed, revoked and dead & pending stages for each of the patent families of TomTom and Key IP Holding Companies and Market Competitors

A table prepared depicting the grant-rejection ratio for TomTom and Key IP Holding Companies and Market Competitors

Activity 17:

Analyzing countries of IP protection of different competitors

1. Collecting the priority countries (jurisdictions of first filing) for each of the patent families of TomTom and Key IP Holding Co and Market Competitors.

2. Preparing heat maps using the priority countries data.

3. Collecting the deposition countries (jurisdictions of filing) for each of the patent families of TomTom and Key IP Holding Companies and Market Competitors.

4. Preparing heat maps using the deposition countries data.

Heat maps created depicting the jurisdictions the priority countries and jurisdictions the deposition countries

Activity 18:

Statistically analyzing inventor strength of different competitors

1. Collecting the inventors for each of the patent families of TomTom and Key IP Holding Companies and Market Competitors.

2. Calculating total number of inventors for each of the patent families of TomTom and Key IP Holding Companies and Market Competitors by counting all the inventors per patent families.

3. Preparing table depicting matrix of number of inventors and number of patent families.

4. Preparing bar graphs depicting avg. No. of Inventors per Patent Family and avg. No. of Patent families per Inventor.

5. Preparing pie chart depicting total number of inventors for TomTom and Key IP Holding Companies and Market Competitors.

Table prepared depicting matrix of number of inventors and number of patent families.

Bar graphs prepared depicting avg. No. of Inventors per Patent Family and avg. No. of Patent families per Inventor.

Pie chart prepared depicting total number of inventors for TomTom and Key IP holding Companies and Market Competitors.

Activity 19:

Analyzing the relative strength of patent portfolios using certain objective parameters

1. Collecting the US patents in the particular technology sub-category.

2. Collecting data such as number of forward citations, pending life, assignees of forward citations, number of relevant IPC/CPC and US classes, number of family members, independent claim length, prosecution time for granting for each of the collected patents.

3. Assigning weightage to each of the above mentioned parameters.

4. Calculating aggregated scores for each of the patents.

5. Sorting the patents according to the calculated scores.

A patent list prepared sorted according to the scores of corresponding patents.

Common Assumptions across the Study

Assumptions and Disclaimer

1. MicroPatent and Questel Orbit databases were used for conducting Patent searches.

2. Information about Market Competitors was collected from several websites including Hoovers.com, Amazon.com, PCmag.com, Wikipedia.org, etc.

3. The term 'Patent' has been used as a collective term for Patents and Published Applications.

4. Current analysis is purely based on IPC Classes and no manual screening of patents obtained from various searches was done to filter out noise, and accuracy of analysis is limited by this. A more accurate analysis can be undertaken which includes manual screening of hits from the search to remove noise and produce more accurate and actionable study.

5. The patent search has been conducted on June 3, 2014. Patent application filed after this date will not capture and have not been considered in this IP-based SWOT analysis.

6. The purpose of this study is to provide initial direction to help TomTom take further decision to get more accurate and detailed studies conducted. Sagacious spent a limited time on this study to collect data and compile insights, etc.

7. The accuracy of information presented is limited by the time spent and Sagacious does not guarantee the accuracy of this study. Sagacious recommends that TomTom gets more detailed and accurate studies conducted (as also suggested throughout this report) before taking any actions based on insights presented in this report. Sagacious assumes no liability of any decisions/ actions taken by any person/ company based on the information presented in this report.

Overall Patent Portfolio AnalysisOverall Analysis of TomTom’s PortfolioBreak-up of TomTom’s Patent Portfolio in to Technology Categories

Chart 1: Pie Chart Depicting Distribution of TomTom’s Patent Portfolio in various technology categories

Vehicle Navigation

Vehicle Tracking

Traffic Analysis

External Condition Indicator

Others

Chart 2: Venn Diagram Depicting Technology Categories overlap in TomTom’s Patent Portfolio

Vehicle Navigation

Vehicle Tracking

Traffic Analysis

External Condition Indicator

Others

Analysis and Observations from Sagacious

What do the numbers in the above chart mean?

· The Chart 1 depicts the total number of patent families that relate to a particular technology category.

· The Chart 2 depicts the total number of patent families which relate to a particular technology category as well as the overlap among of the technology categories (i.e., indicating if there are patent families that fall under more than one technology category and which technology categories have maximum such overlap).

What are the main observations?

· The Chart 1 depicts –

· 426 patent families (almost 63.9% of total patent families) are related to ‘Vehicle Navigation’ category.

· 266 patent families (almost 39.9% of total patent families) are related to ‘Vehicle Tracking’ category.

· 218 patent families (almost 32.6% of total patent families) are related to ‘Traffic Analysis’ category.

· 188 patent families (almost 28.1% of total patent families) are related to ‘Others’ category. TomTom has lesser focus outside their core business, i.e., Navigation technology. There is some IP (categorized under “Others”), not directly related to core navigation technology but is meant for enabling /enhancing their products/ services offerings in markets. Such domains and applications include Casing, mounting and design for Navigation Device, Date Storage for map data and retrieval, Object Detection, Interface and Display Module, Wireless Communication, Wearable devices and articles, etc.

· TomTom seems to have less focus on ‘External Condition Indicator’ as only 14 patent families (almost 0.15% of total patent families) are related to ‘External Condition Indicator’ category.

· The Chart 2 depicts that most of TomTom’s innovation is focused on vehicle navigation and everything else including vehicle tracking, traffic analysis, etc. is done keeping in mind and within the purview of Vehicle Navigation and to improve on the same. Further, the patent families in others category, seem to be totally independent of other technological areas.

How do these observations impact TomTom?

· TomTom’s IP lines related to the ‘Vehicle Navigation’ and ‘Vehicle Tracking’ technology categories seem to be well protected and may lead to a strong position in the domain.

· TomTom’s patents related to the ‘Vehicle Navigation’ and ‘Vehicle Tracking’ technology categories not in direct use may be leveraged / monetized in other ways and/or may find applications in totally unrelated areas (like animal husbandry, agriculture, etc.)

· TomTom’s IP lines related to the ‘External Condition Indicator’ technology category (for example, a PND providing ETA calculation based on external conditions such as road conditions, external light, etc.) may be vulnerable (i.e., weakly protected by IP).

· External Condition Indicators appear to be useful feature for today’s navigation system users. For example as said above, the ETA calculation may be dependent on external conditions such as road conditions, external light, etc. Accordingly, TomTom might lose its edge in the market by having lesser innovation in this technology area.

· TomTom seem to be too focused on their core business, i.e., navigation and all innovation is being done keeping Vehicle Navigation in mind. While it is a good thing, it is important to keep exploring newer dimensions that are natural extensions of their core business and/or are newer applications of their existing technologies (some examples from how few of TomTom’s competitors have undertaken this will be presented later in the report).

What actions can TomTom take in light of the observation?

· TomTom can study the IP landscape in this area of ‘External Condition Indicator’ to strengthen this particular area; also TomTom can study the IP landscape in other areas to find new trends and scopes.

· TomTom can acquire small companies that are innovating in ‘External Condition Indicator’ technology category;

· TomTom should actively check if its products in ‘External Condition Indicator’ infringe on IP owned by another entities / organizations.

· TomTom should explore what its core competitors are doing outside their core business and have they explored any additional application areas of their technologies and/or have extended their research to some nearby technology areas.

· TomTom can consider Vehicle Tracking and Traffic Analysis as standalone technology areas for innovation and research by decoupling them from the Vehicle Navigation technology

How Sagacious can help TomTom in these actions?

· An IP landscape analysis (including manual analysis of all relevant patents by technology and IP strategy experts) in the area of ‘External Condition Indicator’ category to identify innovation/ technology trends, key inventors / small assignees / Universities as IP acquisition targets or collaborators, etc.

· IP landscape analysis (including manual analysis of all relevant patents by technology and IP strategy experts) in the areas of Vehicle Tracking and Traffic Analysis to determine inventions specifically in these technology areas (i.e., in areas that are not related to vehicle navigation), application areas, technology trends, key inventors / small assignees / Universities as IP acquisition targets or collaborators

· Semi-automated Portfolio analysis (using our in-house algorithm and manual vetting by technology and IP experts) to mine and identify top patents in ‘Vehicle Navigation’ and ‘Vehicle Tracking’ categories and shortlist top patents for detailed commercialization analysis through licensing / selling.

· Conduct FTO searches in the ‘External Condition Indicator’ category whenever a new product is launched by TomTom.

· Conduct an exhaustive IP landscape analysis in any of the “other” technology categories.

Assumptions and methodology to prepare the chart 1

Numbers for TomTom’s patent families in each technology category were calculated through the Activities 1 – 4 as presented in section 1.2.

a. If even one member of the family falls in a particular technology category, the family is considered to belong to that category.

b. If the cumulative IPC / CPC / US classes of all members of the patent family belong to more than one category, then that patent family is counted in each of such technology categories. For example, if a family has US X, XXX, XXX (in IPC Class G01S 19/01 belonging to technology category ‘Vehicle Navigation’) and EPYYYYYYA1 (in IPC Class H04W 4/02 belonging to technology category ‘Vehicle Tracking’), then this family is counted in technology categories ‘Vehicle Navigation’ as well as ‘Vehicle Tracking’.

c. If a patent falls in multiple IPC / CPC / US classes belonging to one or more technology categories, the patent is counted in each.

Assumptions and methodology to prepare the chart 2

1. Numbers for TomTom’s patent families in each technology category were calculated through the Activities 1 – 4 as presented in section 1.2.

a. If even one member of the family falls in a particular technology category, the family is considered to fall in that category.

b. If the cumulative IPC / CPC / US classes of all members of the patent family belong to more than one category, then that patent family is counted in each of such technology categories. For example, if a family has US X, XXX, XXX (in IPC Class G01S 19/01 belonging to technology category ‘Vehicle Navigation’) and EPYYYYYYA1 (in IPC Class H04W 4/02 belonging to technology category ‘Vehicle Tracking’), then this family is counted in technology categories ‘Vehicle Navigation’ as well as ‘Vehicle Tracking’.

c. If a patent falls in multiple IPC / CPC / US classes belonging to one or more technology categories, the patent is counted in each.

2. Number of TomTom’s patent families falling in multiple categories, were represented as overlapping with each other in chart 2.

Technology-wise Filing Trends of TomTom’s Patent Portfolio

Chart 3: Trend-line Chart Depicting Technology-wise Filing Trends of TomTom’s Patent Portfolio

Analysis and Observations from Sagacious

What do the numbers in the above chart mean?

· TomTom’s filing trends over the years – the X axis represents the first filing/ priority years whereas the Y axis represents the number patent families having that year as its first filing year (or the earliest priority).

· Some data for the subsequent years of 2010 to 2012 may not be published or available.

· The data for the years 2013 and 2014 has not been presented as some of the applications may not be published yet.

What are the main observations?

· TomTom was very active in filing patent applications in all technology categories (except the ‘External Condition Indicator’ category) in the years 2008 -2010.

· TomTom is significantly less active in filing patent application in the technology category related to ‘External Condition Indicator’ category throughout the years.

· Though TomTom had first filed an application in 1984, it has started filing patent applications consistently only since 1991 and has a major surge in filing patent application in the duration of 2004 to 2010.

· TomTom had filed a large number of patent applications related to ‘Vehicle Navigation’, ‘Vehicle Tracking’ and ‘Traffic Analysis’ categories in the year 2008.

· TomTom’s innovation till 2006 was equally spread over different technology categories but since then it seems that focus on vehicle navigation technology only has increased

· A significant less number of the filing is observed in recent years, particularly since 2009. Based on the finding that R&D spend has been consistent over these years [chart # ], this drop may be due to any one of the following:

· TomTom has started focusing on quality of patent applications rather than quantity in order to optimize the IP spends. This may be verified based on an analysis of how many patents / applications may have been discontinued.

· Either the cost of innovation has increased over time leading to lesser conversion into IP or the innovation groups have hit a road block to innovate at the same pace in these technology areas.

How do these observations impact TomTom?

· TomTom’s declining patenting or filing in the ‘External Condition Indicator’ category may be making TomTom’s various product lines weakly protected by IP for future.

· TomTom’s product lines related to the various main-stream technologies will be weakly protected in the early years of 30’s decade unless TomTom continues its filing trends.

What actions can TomTom take in light of the observation?

· TomTom can study the IP landscape in various technology areas to find out new trends and white spaces to identify new areas for generating IP in line with ongoing market direction.

· TomTom can continue to retain their important inventors and keep innovating. At the same time, TomTom can be on a lookout for top inventors from the competitors, to speed up innovation.

· TomTom can also look for acquisition targets and/or can collaborate with some universities/ institutional researcher who have authored multiple inventions in the past to keep up the innovation trend northbound.

· If controlling the IP spend has been a reason for a decline in number of filings then TomTom can take one or more of the following actions:

· Optimize their existing patent portfolio to identify non-performing IP assets and discontinue paying their maintenance fees

· Timely and quick screening searches at initial stages to focus the innovation in correct direction to:

· Spend R&D budget only on potentially patentable ideas, and

· Improve patent draft quality thereby reducing expenditure in the prosecution process

· Identify high quality; lower cost IP research partners to provide technical research on R&D, business strategy, thereby significantly reducing the IP spend.

· Study the competitive landscape to:

· Identify areas which do not seem to be a hot spot of innovation as per market trends and strategize whether to continue budget spend in that area, and

· Identify if the market has moved on to a cheaper R&D location and explore your options

How Sagacious can help TomTom in these actions?

· IP landscape analysis (including manual analysis of all relevant patents by technology and IP strategy experts) in the areas of Vehicle Navigation, Vehicle Tracking, Traffic Analysis, External Condition Indicator to determine inventions specifically in these technology areas, application areas, technology trends, key inventors / small assignees / Universities as IP acquisition targets or collaborators.

· Study of competitor’s portfolio (including manual analysis of all relevant patents by technology and IP strategy experts) to identify areas where they have diversified into and present other possible research areas.

· Conduct patent monitoring in these technology areas to keep yourself updated on new market trends.

· Quick screening searches to screen out non-patentable ideas at a very early stage to save R&D cost.

· Detailed prior-art searches to assist in better quality and focused patent drafting, thereby reducing prosecution cost.

· High quality patent drafting of applications and provide a single point of contact for converting the parent application to suit each of additional patent offices, thereby reducing IP spend on drafting, patent format conversions and prosecution.

Assumptions and methodology to prepare the chart 3

1. The first filing year for each patent family was obtained as follows:

a. The oldest priority date (i.e., the oldest first filing date) was considered to extract the first filing year of each family.

b. Patent families falling in two different categories were considered in both the categories.

2. A line graph was prepared to depict the filing trends of TomTom’s patents into various technology categories. The X-axis represents the year of the first filing whereas the y-axis the number of patent families. Each line represents a technology category.

3. The line graphs are not showing the data for the years 2013 and 2014 as applications deriving priority from these years may not have been published yet.

4. The grey area is indicating that the some data for the subsequent years 2011 and 2012 may not be published or available.

TomTom’s Product Lines vis-à-vis Patent Portfolio

Chart 4: Dough-nut Chart Depicting TomTom’s various Product Lines

Consumer & Automotive

Licensing

Business Solution

Chart 5: Table chart Depicting TomTom’s various Product Lines protected by its IP Lines(Technology Categories)

Vehicle Navigation

Vehicle Tracking

Traffic Analysis

External Condition Indicator

Analysis and Observations from Sagacious

What do the numbers in the above chart mean?

· TomTom’s IP can be categorized broadly into four distinct IP lines which are Vehicle Navigation, Vehicle Tracking, Traffic Analysis and External Condition Indicator. Further, TomTom has three distinct products / service lines which are ‘Consumer & Automotive’, ‘Business Solutions’ (Fleet Management) and ‘Licensing Services’. These IP lines has been mapped to three main product/service lines.

· Each of the main categories of product lines can be divided into more sub-categories of products / services.

· The regions marked with “?” in the chart indicate the IP lines may not protect the corresponding Product / Service lines. For example, ‘Vehicle Tracking’ in relation to ‘Consumer & Automotive’ product line may not be having considerable IP protection. Similarly, the ‘Business Solution’ and ‘Licensing’ lines may not be sufficiently protected in terms of ‘External Condition Indicator’ and ‘Vehicle Navigation’ IP lines.

· The IP Assets Vs Revenue ratio for each business line category has been compared relative to each other and not with the general domain.

What are the main observations?

· The IP assets vs. Revenue ratio for the ‘Consumer & Automotive’ service line is very low (only 5.76), indicating that the product lines under this category may be weakly protected as the higher IP assets vs. Revenue ratio, i.e., enough number of patents to protect a product / service line with respect to revenue generated from that protect a product / service line, makes the protect a product / service line more secured.

· The IP asset vs. revenue ratio for the ‘Business Solution’ service line is comparatively high. Similarly, the ‘Licensing’ service line also indicating high IP assets vs. revenue ratio. This information indicates that both of the service lines are protected in a stronger fashion.

· ‘Consumer & Automotive’ category accounts for 79% of TomTom’s total revenue. Similarly, the ‘Business Solution’ and ‘Licensing’ categories account for 12% and 9% of TomTom’s total revenue respectively. The IP assets vs revenue ratio for the Consumer & Automotive’ category is 5.76. Similarly, the IP assets vs revenue ratio for Business Solutions and Licensing are 39.75 and 36.55 respectively.

How do these observations impact TomTom?

· TomTom needs to maintain consistency in innovation and needs to undertake more IP protection/acquisition for its main product line (‘Consumer & Automotive’) to effectively compete with potential competitors.

· As a significant amount of its product and services would have corresponding IP, TomTom may take advante of Patent Box regime prevalent in many European countries including Netherlands.

What actions can TomTom take in light of the observation?

· TomTom can study the IP landscape in the ‘External Condition Indicator’ category;

· TomTom can acquire small companies that are innovating in this technology area;

· TomTom can file more patent applications in ‘Vehicle Navigation’ and ‘Traffic Analysis’ categories;

· TomTom can conduct an FTO before launching any new product under the category ‘External Condition Indicator’.

· Can help it prepare a detailed chart indicating which products and what attributes are covered by its own patents and can be considered for patent box benefits.

How Sagacious can help TomTom in these actions?

· Conduct novelty searches for new inventions in various areas to ascertain patentability of the new inventions.

· Conduct FTO searches and IP vs Products analysis in the ‘External Condition Indicator’ category whenever a new product is launched in that area.

· Draft patent applications.

Assumptions and methodology to prepare the chart 4

1. Information about the products and services of TomTom was collected through Activities 5 and 6.

Assumptions and methodology to prepare the chart 5

1. Information about the products and services of TomTom was collected through Activities 5 and 6.

2. The revenue vs. IP assets ratio for a particular product / service line was calculated from the total number of patent families protecting this product / service line divided by revenue share by the product / service line.

a. If a patent family belongs to multiple categories has been counted once. For example, if a patent family has focused on Vehicle Navigation’ and ‘Traffic Analysis’ (and/or ‘External Condition Indicator’ categories, this patent family has been counted once for the IP protection for ‘Consumer & Automotive’ category. For example, the product line of ‘Consumer & Automotive’ (revenue 79%) can be protected by the IP lines of Vehicle Navigation, Traffic Analysis and External Condition Indicator which have total 455 patent families. Therefore, the IP Assets Vs Revenue ratio is being calculated as 455 / 79 = 5.76.

Growth-Share Matrix Analysis for TomTom’s Patent Portfolio

Chart 6: Growth-Share Matrix Depicting Technology-wise IP asset share of TomTom in comparison with the IP asset share trend in market, particularly among Competitors

Vehicle Navigation

Vehicle Tracking

Traffic Analysis

External Condition Indicator

Analysis and Observations from Sagacious

What do the numbers in the above chart mean?

· The above chart depicts the Growth-Share matrix for TomTom IP portfolio. The X-Axis represents the TomTom’s IP asset share, whereas the Y-Axis represents the IP asset share trends in Market. The market data is collected based on the primary market competitors of TomTom which are Garmin, MiTAC, Navico and Rand McNally and their respective subsidiaries.

· The size of the circle representing a particular technology category is equivalent to the total number of patent families of TomTom portfolio focusing on that particular technology category.

· If the circle is more to the right than it is more to the top, it means that TomTom is ahead of its competition in that area. If it is the other way round (more to the top than to the right), it indicates TomTom may be behind its competitors.

What are the main observations?

· The ‘Vehicle Navigation’ and ‘Vehicle Tracking’ technology categories are well synchronized with the IP asset share trends in Market. In fact, TomTom seems to be a little ahead.

· In the ‘Traffic Analysis’ technology category TomTom is pretty ahead of the competition and has higher IP assets in comparison to Market trends.

· The ‘External Condition Indicator’ technology category might be an area that has more opportunities and scope for research and IP protection. Till now, TomTom seems to be doing ok (just a little behind) but this is a definite opportunity to surpass competition.

How do these observations impact TomTom?

· TomTom might be losing its edge in the market by having lesser innovation in the technology category of ‘External Condition Indicator’.

· TomTom may be spending a significant amount of money for maintenance of some less important patents from ‘Traffic Analysis’ ,‘Vehicle Tracking’ and ‘Vehicle Navigation’ technology categories, particularly in Traffic Analysis technology category.

What actions can TomTom take in light of the observation?

· TomTom may study the IP landscape in the ‘External Condition Indicator’ category;

· TomTom may acquire small companies that are innovating in this technology area;

· TomTom may out-license the less important patents from ‘Traffic Analysis’ and ‘Vehicle Navigation’ technology categories;

How Sagacious can help TomTom in these actions?

· Portfolio analysis to mine top patents in ‘Vehicle Navigation’ and ‘Vehicle Tracking’ categories.

· Prepare detailed claim charts providing evidence of use on infringing products.

· Competitor’s analysis in this fashion to present possible areas of research.

Assumptions and methodology to prepare the chart 6

1. Number of TomTom’s patent families in each technology category was calculated through the Activities 1 - 4.

a. If even one member of the family falls in a particular technology category, the family is considered to fall in that category.

b. If the cumulative IPC / CPC / US classes of all members of the patent family belong to more than one category, then that patent family is counted in each of such technology categories. For example, if a family has US X, XXX, XXX (in IPC Class G01S 19/01 belonging to technology category ‘Vehicle Navigation’) and EPYYYYYYA1 (in IPC Class H04W 4/02 belonging to technology category ‘Vehicle Tracking’), then this family is counted in technology categories ‘Vehicle Navigation’ as well as ‘Vehicle Tracking’.

2. Total number of TomTom’s top Market Competitors’ patent families in each technology category was calculated through the Activities 7 - 11.

a. If even one member of the family falls in a particular technology category, the family is considered to fall in that category.

b. If the cumulative IPC / CPC / US classes of all members of the patent family belong to more than one category, then that patent family is counted in each of such technology categories. For example, if a family has US X, XXX, XXX (in IPC Class G01S 19/01 belonging to technology category ‘Vehicle Navigation’) and EPYYYYYYA1 (in IPC Class H04W 4/02 belonging to technology category ‘Vehicle Tracking’), then this family is counted in technology categories ‘Vehicle Navigation’ as well as ‘Vehicle Tracking’.

3. Growth-Share Matrix Depicting Technology-wise IP asset share of TomTom in comparison with the IP asset share trend in market was created.

4. Growth-Share Matrix has been calculated by using Calculate Compound Annual Growth (CAGR) for last 5 years (2007 – 2012) in the industry in the Y axis and TomTom’s IP assets share with respect to Market’s IP assets in the X axis.

TomTom’s Portfolio VS Market CompetitorsTechnology-wise Comparison

Chart 7: Bubble Chart Depicting Technology-wise break-up of TomTom’s Patent Portfolio vs. the Main Market competitors

Vehicle Navigation

Vehicle Tracking

Traffic Analysis

External Condition Indicator

Analysis and Observations from Sagacious

What do the numbers in the above chart mean?

· The numbers besides the bubble of the charts are representing the total number of patent families those are focusing on the technology category corresponding to the bubbles.

What are the main observations?

· Garmin, MiTAC, Navico and Rand McNally are the top competitors amongst other market competitors.

· Garmin and MiTAC have the similar distribution of patents families in comparison with TomTom.

· Similar industry trend followed in terms of overall protection.

· MiTAC has stronger IP protection than TomTom in almost every technology category.

· Both Garmin and MiTAC have significantly higher ratio of patents outside the navigation (and related) technologies, categorized under “Others” indicating that they are diversifying in to areas/ applications outside the core navigation.

· Navco and Rand McNally although have sizable market size, have very low IP protection in navigation and related technologies. This does indicate that their products might be infringing on TomTom’s patent.

How do these observations impact TomTom?

· TomTom’s products may have potential threats from MiTAC for IP lines related to the ‘External Condition Indicator’ technology category in near future.

· Garmin and MiTAC appear to be strong competitors for product lines related to all technology categories.

· TomTom may be a little behind MiTAC and Garmin when it comes to diversification outside their core competency.

What actions can TomTom take in light of the observation?

· TomTom can file more patent applications in these areas of Traffic Analysis and External Condition Indicator technology categories to get an edge over the competitors

· Keeping watch on the filing by its competitors on Traffic Analysis and External Condition Indicator technology categories.

· Create an ammunition for defense against MiTAC and Garmin

· Create ammunition and identify infringing products on Navico and Rand McNally

· Conduct a market analysis of Navico and Rand McNally indicating the countries in which they operate and how come they are able to operate without IP.

· Identify basic patents of MiTAC, Garmin that TomTom’s products might infringe and try to invalidate them.

· Detailed study of competitor’s ‘Others’ Technology category patents.

How Sagacious can help TomTom in these actions?

· Regularly monitor competitor’s activities.

· Regularly monitor a technology area.

· Monitor competitor’s advancement in different technology categories to provide information regarding areas of research trending in the market.

· Help identify potentially infringing products.

· Prepare detailed claim charts providing evidence of use on infringing products.

Assumptions and methodology to prepare the chart 7

1. Number of TomTom’s and its competitors’ patent families in each technology category were calculated through the Activities 1 – 4, 10 and 12.

a. If even one member of the family falls in a particular technology category, the family is considered to fall in that category.

b. If the cumulative IPC / CPC / US classes of all members of the patent family belong to more than one category, then that patent family is counted in each of such technology categories. For example, if a family has US X, XXX, XXX (in IPC Class G01S 19/01 belonging to technology category ‘Vehicle Navigation’) and EPYYYYYYA1 (in IPC Class H04W 4/02 belonging to technology category ‘Vehicle Tracking’), then this family is counted in technology categories ‘Vehicle Navigation’ as well as ‘Vehicle Tracking’.

2. Bubble charts was prepared to depict distribution of TomTom’s and its competitors’ patents into various technology categories.

Technology-wise Filing Trends Comparison

Chart 8: Trend-line Charts Depicting Technology-wise Filing Trends of TomTom’s Patent Portfolio vs. the Main Market competitors

Vehicle Navigation

Vehicle Tracking

Traffic Analysis

External Condition Indicator

Others

TomTom

Garmin

MiTAC

Navico

Rand McNally

Analysis and Observations from Sagacious

What do the numbers in the above chart mean?

· The line graphs depicting the filing trends of the top competitors and comparison with the filing trend of TomTom.

· The X-axis represents the first filing year whereas the Y-axis represents the no. of patent families filed in corresponding year.

What are the main observations?

· TomTom, Garmin and MiTAC have filed most of their patent applications between the years of 2005 and 2011.

· Garmin did a lot better on IP side between 2001 to 2005 than TomTom but TomTom really picked up during 2005 and is currently doing better than all the competitors when it comes to IP filings.

· MiTAC, one of the top competitors of TomTom, has a good filing trend in ‘External Condition Indicator’ technology category.

· 2008-2010 has been the time period where all companies consistently did more innovation in this domain indicating it was market linked.

· Garmin has recently focused a lot on “Others” while MiTAC has been doing so since the beginning but also in recent years only uptrend is seen in others category.

· Rand McNally and Navico have been too discrete in filing IP and have only few spurts of innovation. Also, most of their portfolio looks very recent.

· Recent growth by Navico is seen.

How do these observations impact TomTom?

· MiTAC and Garmin appeared to be tough competitors for TomTom in every technology category. Both of these are also focusing a lot on diversification but TomTom is lagging behind a bit and should catch up.

· Navico and Rand McNally should be watched carefully and regularly to keep a tab on their innovation.

What actions can TomTom take in light of the observation?

· Understand where Garmin and MiTAC diversifying are. Also, study other companies/ competitors operating in navigation domain to identify the opportunities to get a kick start in some tangential areas that are natural extensions for TomTom.

· TomTom may study the IP landscape in ‘External Condition Indicator’ technology category as well as other categories to speed up its invention activities.

· TomTom should file more patent applications in these areas of interest to get an edge over its competitors.

· Opposition searches.

· Keep a tab on competitors activities

How Sagacious can help TomTom in these actions?

· Conduct and file oppositions against new patents being granted.

· Regularly monitor competitor’s activities.

· Regularly monitor a technology area.

Assumptions and methodology to prepare the chart 8

1. The first filing year all of TomTom’s and the top competitors’ patent families in each technology category were extracted through the Activities 4 and 13.

a. The oldest priority date (i.e., the oldest first filing date) was considered to extract the first filing year of this family.

b. Patent families those are falling into two different categories were calculated for the both of the categories to find the filing trends of both categories.

2. A line graph was prepared to depict the filing trends of TomTom’s and the top competitors’ patents into technology category.

3. The X-axis represents the year of the first filing whereas the y-axis the number of patent families in the technology category.

4. The line graphs are not showing the data for the years of 2013 and 2014 as some of the applications may not be published yet.

5. The grey area is indicating that the some data for the subsequent years 2011 and 2012 may not be published or completely available.

Comparison of R&D Expenditures: TomTom vs. Top Market Competitors (Garmin and MiTAC)

Chart 9: Line Graphs Depicting Comparison of R&D Expenditures versus number of patent families over the years

No. of Patent Families

R&D Expenditure

Analysis and Observations from Sagacious

What do the numbers in the above chart mean?

· Line graph is depicting the comparison of R&D expenditures versus number of patent families over the years (for TomTom and its major two market competitors Garmin and MiTAC).

What are the main observations?

· TomTom has much higher expenditure per patent family than that of its main competitors.

· Recently while their R&D spent has remained the same, their patent families number has gone down significantly.

· MiTAC has very high number of families despite having very low R&D spent compared to Garmin and TomTom

How do these observations impact TomTom?

· TomTom might be expending much more money but the output may not satisfactory.

· TomTom may be using some modes of innovation that is expensive e.g. testing. etc.

· TomTom’s engineers might be focusing on innovations in a saturated domain and further research is yielding no new innovation.

· TomTom may be left behind in IP despite spending a lot on R&D.

What actions can TomTom take in light of the observation?

· Identify the correct area to research into.

· Impetus to research and conversion into IP.

· TomTom may study the patent being filed by its competitors in the several areas.

· Identify low cost technologies or methodologies.

· Identify research partners and build research teams located in low-cost areas.

· Do better scouting of innovations in their R&D centers by quick screening, detailed patentability, etc.

· If for some reasons, TomTom does not wish to spend on IP, then they should direct their effort for defensive publications to prevent competitors from getting unnecessary IP.

· Identify and engage with low cost patent research to cut down R&D expenditure.

· Identify low cost innovation management partner.

How Sagacious can help TomTom in these actions?

· Filing more patent applications in various technology areas.

· Initial commercialization analysis to Identify correct technologies to proceed with research on.

· Comprehensive landscape.

· Competitor profiling.

· IP acquisition profiling (i.e. in case $ vs. Patent by R&D is higher than buying patents, then suggesting to buy patents).

· Innovation scouting/ management.

· Complete IP management e.g. docketing, filing, single point contact for multi-country filing, etc.

Assumptions and methodology to prepare the chart 9

1. Collecting information about R&D expenditure over the years from several sources.

2. Collecting first filing years for each of the patent families (including granted, published but still in pending stage, revoked or rejected).

3. Plotting total number of patent families per year against the expenditure in the respective years.

Other Potential Technology Areas Where Competitors Are Filing Patents

Chart 10: Technological Distribution Chart for depicting the potential areas which are not present in TomTom’s portfolio while other competitors are working in the same.

Analysis and Observations from Sagacious

What do the numbers in the above chart mean?

· Garmin and MiTAC, two main competitors among the top competitors of TomTom, are focusing on other emerging technology categories (apart from ‘Vehicle Navigation’, ‘Vehicle Tracking’, ‘Traffic Analysis’ and ‘External Condition Indicator’ technology categories).

· Navico and Rand McNally, other potential competitors of TomTom also focus on other technology categories.

What are the main observations?

· Two technology categories, such as ‘Animal Husbandry and Training’ and ‘Alarm System’ are appeared as other categories for Garmin.

· Technology category of ‘Furnishings and Casings’ is appeared to be another category for MiTAC.

· Apart from the technology categories cover by TomTom, Navico is focusing on the ‘Sonar System’ technology category.

· Similarly, Rand McNally has ‘Identification Card System’ and ‘Books’ as other technology categories.

How do these observations impact TomTom?

· As ‘Animal Husbandry and Training’ technology category may use GPS technology, TomTom may look to see if its patents can find application here.

· Other technology categories, like ‘Sonar system’ and ‘Identification Card System’ may be new areas to focus on.

· Some product lines, such as casings for PND, products for sport and fitness, from TomTom may be infringing patents of its competitors in those technology categories.

· Several market areas exist where TomTom may not be thinking of entering and might lose out in the long run.

· After comparison with TomTom’s IP, we can say which products of TomTom may potentially infringe competitor’s IP.

· For e.g., TomTom is definitely doing research on the casing/ Hardware for its product but not filing enough IP. It shows that their in-house understanding of innovation/invention is limited or narrow.

What actions can TomTom take in light of the observation?

· TomTom may study the IP landscape related to above mentioned technology categories to understand if they can be potential application areas for its technologies;

· TomTom can while drafting check if the technology may find application here.

· TomTom can study the IP creation strategy of competitors (acquisition, etc.).

· There might be chances that ‘others’ IP may be coming by acquisition.

· Study in general the application areas of their technology (e.g. by citation).

· Cross-check their research with respect to ‘others’ category to see if they invent but still do not file IP. If so, take necessary action.

How Sagacious can help TomTom in these actions?

· Perform an IP landscape analysis in some potential technology categories, such as ‘Sonar System’, ‘Animal Husbandry and Training’, ‘Furnishings and Casings’, etc. to identify the innovation trends in the various area and technologies behind these applications.

· Drafting patent applications comprehensively in a way that it could cover the broadest patentable aspect of each inherent application.

· Innovation Management

· Competitor profiling.

· Prepare detailed claim charts providing evidence of use on infringing products.

Assumptions and methodology to prepare the chart 10

1. Identifying the patents those could not be categorized any of the technology categories for TomTom and its top market competitors through Activity 11. It should be noted that Pioneer and Fujitsu have not been considered as their patents / patent applications span over multiple technology areas.

2. Capturing all the IPC / CPC and US classes from the identified patent set. Identifying the IPC / CPC and US classes those are not cited by the patents of TomTom.

3. Identifying and categorizing the captured classes those are indicating separate technology categories.

Other Comparison Parameters for TomTom vs Competitors

Many other areas can be compared to between TomTom and others; however, we have not presented that analysis in this quick study at the portfolio level. Some of such analysis may include the following:

· Category-Level Overview

· Sub-Category-Level Analysis

· Patent Filing Trends for TomTom vs Competitors

· Countries of First Patent Filing and covered for TomTom vs Competitors

· Grant time and Grant-Rejection Ratio for TomTom vs Competitors

· Research Collaboration for TomTom vs Competitors

· Statistical Inventor Strength Analysis for TomTom vs Competitors

and many more

To give you an idea of usefulness of such parameters, we have presented this comparison at a narrower level (i.e., at Sub-category level). We have done more in-depth analysis for “Using GPS” sub-category under “Vehicle Navigation” category in Section 4.

Category-Level Overview: Vehicle Navigation

In this section, we will provide analysis corresponding to a particular technology category - “Vehicle Navigation”. This selection has been done so that we can showcase more objective and micro-level analysis of the portfolio and not show just general trends which may not be applicable against all the categories. Note that, for now, we have done the analysis only for one technology category but similar analysis can be done for other categories as well.

Sub-category-wise Break-up of TomTom’s patents in Vehicle Navigation Category

Chart 11: Pie Chart Depicting Sub-category-wise break-up of TomTom’s Patents in Vehicle Navigation Category

Analysis and Observations from Sagacious

What do the numbers in the above chart mean?

· The chart depicts the break-up of the technology category of “Vehicle Navigation”.

· 426 patent families from total patent families assigned to TomTom are related to ‘Vehicle Navigation’ technology category.

· The ‘Vehicle Navigation’ technology category further is categorized into sub-categories. Above pie-chart depicts the total number of patent families which relate to a particular technology sub-category.

· 219 patent families (almost 53% of total patent families related to ‘Vehicle Navigation’ technology category) are relating to ‘Route Determination’ sub-category.

· 76 patent families (almost 18% of total patent families related to ‘Vehicle Navigation’ technology category) are relating to ‘Map Display’ sub-category.

· 51 patent families (almost 12% of total patent families related to ‘Vehicle Navigation’ technology category) are relating to ‘Using Map Database’ sub-category.

· 43 patent families (almost 10% of total patent families related to ‘Vehicle Navigation’ technology category) are relating to ‘Using GPS’ sub-category.

· 19 patent families (almost 5% of total patent families related to ‘Vehicle Navigation’ technology category) are relating to ‘Audio/Visual Route Guidance’ sub-category.

· 9 patent families (almost 2% of total patent families related to ‘Vehicle Navigation’ technology category) are relating to ‘ETA Calculation’ sub-category.

What are the main observations?

· TomTom is mainly focusing on the Route Determination’ technology sub-category (more than half of its patents related to the Vehicle Navigation’ technology category), followed by Map Display, Using Map Database and Using GPS sub-categories.

· ‘Route Determination’ which is the basic function of ‘Vehicle Navigation’ is the highest researched and further convenience features are not that highly researched by TomTom.

How do these observations impact TomTom?

· As this industry is moving towards more interactive and intelligent system, such as ETA Calculation or Audio/Visual Route Guidance’ sub-categories, TomTom may also focus on these areas of innovation.

What actions can TomTom take in light of the observation?

· TomTom may study the IP landscape related to above mentioned technology sub-categories;

· TomTom may acquire patents in the above mentioned technology categories;

· TomTom may study what their competitors are doing under the ‘Vehicle Navigation’ category and how their IP is distributed.

· TomTom can even study the head of their IP under a category/ sub-category to see where they are headed.

· Do self-audit with respect to the innovations being done in-house but no IP is created.

How Sagacious can help TomTom in these actions?

· Perform an IP landscape analysis in the “ETA Calculation” or “Audio/Visual Route Guidance” categories to identify the innovation trends, white spaces or patents for acquisition in this area.

Assumptions and methodology to prepare the chart 11

1. Number of TomTom’s patent families in each technology category was calculated through the Activities 1 - 4.

a. If even one member of the family falls in a particular technology category, the family is considered to fall in that category.

b. If the cumulative IPC / CPC / US classes of all members of the patent family belong to more than one category, then that patent family is counted in each of such technology categories. For example, if a family has US X, XXX, XXX (in IPC Class G06G 7/78 belonging to technology sub-category ‘Route Determination’) and EPYYYYYYA1 (in IPC Class G01S 19/39 belonging to technology sub-category ‘Using Tracking’), then this family is counted in technology categories ‘Route Determination’ as well as ‘Using Tracking’.

2. A Pie chart was prepared to depict distribution of TomTom’s patents into various technology sub-categories.

Sub-category-wise Evolution of TomTom’s patents in Vehicle Navigation CategoryOther Parameters of Analysis at Category Level

All the analysis we have presented at Portfolio level above in section 2 OR at sub-category level in Section 4 below can be replicated at Category level also. However, to keep the report short and limited time available at our end for preparing this sample, we have chosen to skip more analysis at category level. However, if this would be of interest – please let us know and we can do it for you.

Sub-Category-Level Analysis: Vehicle Navigation - Using GPS

The “Vehicle Navigation” category as shown can be further divided into technology sub-categories of “Vehicle Navigation using Route Determination”, “Vehicle Navigation using Map Display”, “Vehicle Navigation using map display”, “Vehicle Navigation using GPS”, “Vehicle Navigation using Audio/Visual Route Guidance” and “Vehicle Navigation using ETA calculation”.

However, breadth and scope of each of these categories is huge and an analysis of this type will be of most use when we further drill down into each sub-category to show what are the specific trends associated with that. Hence, “Vehicle Navigation using GPS” has been selected. This selection has been done so that we can showcase a more objective and a micro-level analysis of the portfolio and not show just general trends which may not be applicable against all the categories. Also, to give some perspective to this analysis, we have compared specific sub-category trends with that of TomTom at the portfolio level as well.

Note that we have, for now, the analysis only for one technology sub-category but can do the same for other categories as well.

Key IP Holding Companies and Market Competitors

Chart 12: Bar Graph Depicting IP assets of TomTom, key IP Holding Companies and Market Competitors in Vehicle Navigation using GPS sub-category under Vehicle Navigation Category

TomTom

Top 5 IP Holding Companies

Top Market Competitors

Note: Navico and Rand McNally do not have any patents in this technology sub-category of “Vehicle Navigation Using GPS“, and therefore they do not appear in the above graph. Also, note that Top Market Competitors may also be the top IP holding companies

Analysis and Observations from Sagacious

What do the numbers in the above chart mean?

· Bar Graph depicts number of patent families for TomTom and each of the Key IP Holding Companies and Market Competitors in the ‘Vehicle Navigation Using GPS’ technology sub-category.

· Denso and MiTAC appear to be innovation leaders in this technology sub-category of ‘Vehicle Navigation Using GPS’ having 53 patent families each.

· Denso and MiTAC are followed by Honeywell having 48 patent families, Qualcomm having 48 patent families,

· TomTom is also placed pretty well in terms of IP in this sub-category and it with Trimble Navigation, have 43 patent families each in this technology sub-category.

· Garmin and General Motors have 33 patent families each.

· Navico and Rand McNally may not have any patent family in this technology sub-category.

What are the main observations?

· Presence of General Motors and other companies like Qualcomm, Honeywell, Denso in the top IP filers indicates both opportunity and threats for TomTom.

· Opportunity because they can expand to other application areas (for example by studying Qualcomm’s patents and working for cell phone companies, etc.)

· Threats because if General Motors (and other automotive manufacturers and automotive part manufacturers like Denso) are investing so much in innovation for Vehicle Navigation using GPS it might eat in to markets of TomTom as navigation aids will come build-in. Moreover, telecom companies investing so much in vehicle navigation using GPS sub-category indicates that cell phones, etc. will increasingly eat in to TomTom’s market

· Non-direct companies having more patents than core companies are alarming. It appears they are aggressively making Navigation a core part of their vehicles.

How do these observations impact TomTom?

· TomTom is playing a significant role in this technology sub-category. However, TomTom has also good competition from Top IP Holding Companies.

· Non-core companies being aggressive means the two main markets (Auto and Cell) of their products/services may get diluted heavily.

If such companies are looking for partnerships, then TomTom should be active in the space.

What actions can TomTom take in light of the observation?

· TomTom may strengthen its IP in this technology sub-category by conducting IP landscape and filing more patents.

· TomTom may impose itself on competition.

· Other companies like Denso, etc. who currently may not be active in this area may benefit from TomTom’s products/ services and compete with Denso.

· Detailed study of Qualcomm, General Motors, Honeywell, Denso and identify the trends. TomTom can seek synergies, contact competitors-offer services, collaborate.

· Denso being a key supplier of automotive parts to several auto manufacturers should be studied in detail.

How Sagacious can help TomTom in these actions?

· Conduct FTO search in the technology sub-categories before launching new products.

· Portfolio analysis to mine top patents in ‘Vehicle Navigation’ categories.

· Prepare detailed claim charts providing evidence of use on infringing products.

Assumptions and methodology to prepare the chart 12

1. Number of TomTom’s and its competitors’ patent families in this technology sub-category were calculated through the Activities 4 and 12.

2. A bar graph was prepared to depict the IP asset of TomTom’s and its competitors’ into the technology sub-category of Vehicle Navigation Using GPS.

3. Market Competitors have been identified by searching for companies having similar products / service lines in different sites, like Hoovers.com, Amazon.com, PCmag.com, Wikipedia.org

Patent Filing Trends: TomTom vs Competitors

Chart 13: Trend-line Chart Depicting the comparisons of sub-category-wise Filing Trends of TomTom’s Patent Portfolio and Key IP Holding Companies

Chart 14: Trend-line Chart Depicting the comparisons of sub-category-wise Filing Trends of TomTom’s Patent Portfolio and Key Market Competitors

Analysis and Observations from Sagacious

What do the numbers in the above chart mean?

· Line Graph depicting the filing trend comparison of TomTom and Key IP Holding Companies and Market Competitors in ‘Vehicle Navigation Using GPS’ sub-category.

· TomTom and top IP Holding Companies have filed most of its patent applications between 2000 and 2012.

· Alike TomTom, Garmin (one of TomTom’s top market competitors) has filed most of its patent applications between 1997 and 2012.

What are the main observations?

· Garmin had a peak in filing trends between 2006 and 2007, TomTom between 2008 and 2009 and MiTAC between 2009 and 2010.

· Garmin focused this earlier than TomTom and MiTAC picked up even later.

· Garmin may have basic patents.

· MiTAC may have advanced patents.

· Denso and General Motor both had a peak in 2005-2006; Auto segment started focusing on it even before the Navigation companies got on to this. However, Denso’s filing decreased when the Navigation companies picked up. Probably Denso saw it and let go of the research in that area.

· General Motors has consistently filed some applications but it seems they do not actually research on this area and the number of applications is comparatively low.

· Qualcomm and TomTom peaked almost at the same time. This indicates that this was the time when GPS Navigation usage in general and specifically on phones was getting a lot of research attention. Also, Qualcomm may have many complimentary patents with TomTom.

How do these observations impact TomTom?

· TomTom is playing a significant role in this technology sub-category. However, TomTom has a good competition from key IP Holding Companies as well as some of its market competitors.

· TomTom might be infringing on some patents of Garmin.

· MiTAC might be infringing on some patents of TomTom.

· Denso might be willing to let go of its patents in this area and focus more on its core research, while getting this area covered through companies like TomTom.

· Some of Qualcomm and TomTom’s patents may invalidate each other. Also, potentially a pool of patents of Qualcomm and TomTom may form a good licensing package for all Telecom companies.

· Similarly Denso and TomTom may provide a package for Auto companies.

What actions can TomTom take in light of the observation?

· TomTom may strengthen its IP in this technology sub-category by conducting IP landscape and filing more patents;

· TomTom may acquire patents in the above mentioned technology sub-category;

· Study Denso, Garmin, MiTAC, Qualcomm IP portfolio in detail;

· Study Garmin IP vs. self products;

· Study self IP vs. MiTAC;

· Study self IP in ‘Others’ category against Garmin;

· Study the domain in general to acquire IP that predates Garmin’s IP and have basic patents for defense purposes;

How Sagacious can help TomTom in these actions?

· Conduct FTO search in the technology sub-categories before launching new products.

· Portfolio analysis to mine top patents in ‘Vehicle Navigation’ categories.

· Prepare detailed claim charts providing evidence of use on infringing products.

Assumptions and methodology to prepare the chart 13 and 14

1. Number of TomTom’s and its competitors’ patent families in this technology sub-category were calculated through the Activities 4 and 13.

2. A bar graph was prepared to depict the IP asset of TomTom’s and its competitors’ into the technology sub-category of Vehicle Navigation Using GPS.

3. The line graphs are not showing data for years of 2013 and 2014 as some of the applications may not be published yet.

4. The grey area is indicating that the some data for the subsequent years 2011 and 2012 may not be published or available.

Countries of First Patent Filing: TomTom vs Competitors

Chart 15: Maps Depicting the comparisons of counties of First Patent Filing for TomTom and Key IP Holding Companies and Market Competitors

Analysis and Observations from Sagacious

What do the numbers in the above chart mean?

· Heat map depicting the originating countries (countries where the application has been filed first) TomTom and its Key IP Holding Companies and Market Competitors in ‘Vehicle Navigation Using GPS’ sub-category.

What are the main observations?

· TomTom and its competitors have chosen US and WO as their top destinations for first filing.

· Unlike its competitors, TomTom is not following some key Asian countries like JP and CN as the first filing countries or countries of origin

· Almost all competitors are filing in the US first.

· IP holding companies still have some first filing in EP, but, for major market competitors, the first filing is in CN, TW indicating that market competitors are doing research through in low cost centers.

· TomTom also has TW as its first filing center for 7 cases and is probably going in the same direction. If not, then it appears that TomTom should.

· None of these companies have India as their research center. This may be an opportunity for TomTom as India is a low cost destination with significant number of English speaking and highly educated resources. Hence, cost, efficiency and quality will be phenomenal.

· So, it is either US, home country or low cost destinations where should open research centers.

· Mostly companies file first in UK because there you can get the first examination report quickly. However, this trend is not visible in this market.

How do these observations impact TomTom?

·

· Cost of research may be low for competitors.Competitors may have access to talent pool and native thickness of markets that are growing at tremendous pace.

· TomTom may be left behind if competitors capture a strong market in these countries by providing relevant products/ services.

What actions can TomTom take in light of the observation?

· TomTom can files its first applications in some Asian countries having significantly growing markets;

· TomTom can acquire IP licenses from others in those countries.

· Continue doing research at low-cost destinations.

· Compare quality of research coming out of these countries for competitors to see its due diligence with respect to the research center.

· Explore India as a possible research location

How Sagacious can help TomTom in these actions?

· Conduct FTO search in the high importance jurisdictions before launching new products.

· Conduct searches using native languages in CN, TW, JP, KR jurisdictions.

· Filing of patent applications in Asian countries.

Assumptions and methodology to prepare the chart 15

1. Priority countries of TomTom’s and its competitors’ patent families in this technology sub-category were captured through the Activities 5 and 12.

2. Heat maps have been generated from the calculated data.

3. WO and EP data is not showing as those are conceptual jurisdictions.

Countries of Patent Protection (Patent Deposition): TomTom vs Competitors

Chart 16: Maps Depicting the comparisons of counties of Patent Protection (Patent Deposition) for TomTom and Key IP Holding Companies and Market Competitors

Analysis and Observations from Sagacious

What do the numbers in the above chart mean?

· Heat map depicting the deposition countries (countries where the application has been filed) TomTom and Key IP Holding Companies and Market Competitors in ‘Vehicle Navigation Using GPS’ sub-category.

What are the main observations?

· TomTom has been very aggressive in expanding its portfolio globally.

· TomTom has not expanded in Europe and South-East Asia as aggressively as the market competitors.

· TomTom has filed in Argentina while no other market competitor has. So, TomTom should see if it can capitalize on this.

· Market competitors are not focusing much on EP in this area.

How do these observations impact TomTom?

· TomTom might be losing markets in other countries which are covered by the competitors.

· The trend coming here is through just one category and hence, should not be considered conclusive, but, companies are not focusing much on Europe. US and Asia appear to be major focus in this category.

· This can be a great opportunity for TomTom.

· With TomTom’s global presence in terms of IP, it is an opportune position to block competitors in several countries, EP, CA, IN, etc.

· TomTom must be overdoing its expansion and hence increasing its IP cost.

What actions can TomTom take in light of the observation?

· TomTom can file its applications in some countries such as India and other Asian countries having significantly strong market;

· TomTom can acquire IP licenses from others in those countries.

· TomTom can collaborate with IP holding companies in countries where market competitors don’t have much IP and create better barriers or create and advantageous position for self.

· TomTom should study overall trends of deposition of market competitors and research the reasons for such trends to determine if TomTom is on the right track.

· TomTom should compare its global spread vs. competitors and take corrective actions if required. Also, study trends in this research.

· Countries like IN, CN, are world’s largest mobile phone users. TomTom can focus more on filing phone-related IP in these countries.

· Market competitors have strong presence in US, Asia. So, TomTom may be infringing their patents in these countries. So, TomTom can get FTOs conducted for any new launches in these countries.

How Sagacious can help TomTom in these actions?

· Conduct FTO search in the high importance jurisdictions before launching new products.

· Conduct searches using native languages in CN, TW, JP, KR jurisdictions.

· Filing of patent applications in Asian countries.

· Filing of patent applications in India.

· Filing strategic continuations.

Assumptions and methodology to prepare the chart 16

1. Designated / deposition countries of TomTom’s and its competitors’ patent families in this technology sub-category were captured through the Activities 5 and 12.

2. Heat maps have been generated from the calculated data.

3. WO and EP data is not showing as those are conceptual jurisdictions.

·

Patent Grant Analysis: TomTom vs CompetitorsGrant time ratio

Chart 17: Line Graph Depicting comparisons of grant time ratio of TomTom and Key IP Holding Companies and Market Competitors in Vehicle Navigation Using GPS sub-category

TomTom

Top 5 IP Holding Companies

Top Market Competitors

Chart 18: Bar Graph Depicting comparisons of grant time ratio of Key IP Holding Companies and Market Competitors in Vehicle Navigation Using GPS sub-category

Analysis and Observations from Sagacious

What do the numbers in the above chart mean?

· The Chart 16 is depicting comparisons of cumulative grant time ratio of TomTom and Key IP Holding Companies and market competitors in Vehicle Navigation Using GPS sub-category.

· The X-axis showing the time period (in years) taken by TomTom and key IP Holding Companies and market competitors whereas the Y-axis represents cumulative percentage of its all patents that got granted by that time period from filing of application.

· The chart 17 depicting comparisons of grant time ratio of TomTom and Key IP Holding Companies and market competitors in Vehicle Navigation Using GPS sub-category.

· The X-axis showing the time period (in years) taken by TomTom and key IP Holding Companies and market competitors whereas the Y-axis represents percentage patent applications that took corresponding time period for granting.

What are the main observations?

· TomTom applications take longer to get granted.

· When 50% of TomTom applications got granted, 85% of market competitors patents were granted and 65% of IP companies patents were granted.

· Longer time to grant indicates higher costs to patent offices and attornies.

· It also indicates that patents had minor novelty and it took longer to convince the examiner.

· Quality of patent applications may be bad.

· Low quality inventions getting filed.

How do these observations impact TomTom?

· TomTom might be expending much more money for the prosecution purpose.

· TomTom is spending more on prosecution.

· Longer time results in longer uncertainity on whether they will get IP. Also, this results in longer unusable period out of life of IP and arguably lesser period in which the IP can be enforced.

· Filing strategy used by TomTom may be such that it may not have enough feedback before the 12/31 month period of going into “” and then TomTom would have to spend extra amount intentionally without being aware of its fate.

What actions can TomTom take in light of the observation?

· TomTom can draft its applications in a better way, i.e. better quality drafting.

· TomTom can conduct a comprehensive novelty search before filing to improve chances of getting a patent.

· TomTom should scout/ screen inventions more thoroughly.

· Patent application’s quality must be better.

· To study in detail which countries are they facing such issues with.

· Optimize filing strategy.

· Identify low-cost service providers to help them in prosecution.

· Innovation management is required.

· Study competitor’s filing strategy and applications to find out how to reduce this time period.

How Sagacious can help TomTom in these actions?

· Conduct novelty searches covering 100+ countries against new inventions.

· Draft patent applications.

· Filing strategic continuation applications.

· Continued support during prosecution.

Assumptions and methodology to prepare the chart 17 and 18

1. Granted time has been calculated for all the granted patent members from all the patent families in all the jurisdictions (including alive and expired) from filing date and issuing date through the Activities 5 and 15.

·

Grant rejection ratio

Chart 19: Table Chart Depecting comparisons of grant rejection ratio of patent applications Key IP Holding Companies and Market Competitors in Vehicle Navigation Using GPS sub-category

Analysis and Observations from Sagacious

What do the numbers in the above chart mean?

· Table chart is depicting grant and rejection ratio of patent applications Key IP Holding Companies and Market Competitors in Vehicle Navigation Using GPS sub-category.

· The green colored bars are representing total percentage of parent applications that have been granted or expired after grant;

· The red colored boxes are representing total percentage of rejected parent applications or patent applications those have been dead at the pending stage.

· Almost 17% of total applications (total 191 patent applications) of TomTom have been finally granted. But almost 3.9% of total applications (total 44 patent applications) of TomTom have been rejected after examination.

· Almost 49.7% of total applications (total 121 patent applications) of top market competitors have been finally granted. But almost 19.7% of total applications (total 48 patent applications) of top market competitors have been rejected after examination.

· Similarly, almost 48.7% of total applications (total 619 patent applications) of top 5 IP holding companies have been finally granted. But almost 3.6% of total applications (total 46 patent applications) of top 5 IP holding companies have been rejected after examination.

What are the main observations?

· TomTom makes more efforts for acquiring patents of its technologies in comparison to its competitors.

· TomTom might be expending much more money for the filing and prosecuting application of menial quality.

· Almost 50% of applications filed by competitors get granted, whereas, only 17% of applications of TomTom get granted.

· There appears to be a concerning issue with respect to either of

· Innovation scouting

· Application drafting

· Office action response management

· TomTom would be spending at least three times more on IP cost as compared to its competitors as coming from its grant ratio.

How do these observations impact TomTom?

· High e