Paving the Way for an $80M Patent Portfolio

Several patent applications had been previously prepared and filed with the U.S. Patent and Trademark Office (USPTO) by a large, well-known law firm. After eight frustrating and expensive years with no results, the client transferred the applications to our firm, whereupon we completely revised the claim set to more clearly define the inventions while still providing meaningful protection for our client. We also conducted several in-person interviews with the USPTO Examiner to help better communicate the inventions and their differences over the prior art. The result? Two key applications were allowed in a little over a year. Further, the resulting patents were tested in litigation and licensed to market leaders to generate significant licensing royalties for our client. Our client recently sold their patent portfolio for over $80,000,000.00.

Leveraging Cross-License Opportunities

A search portal company expected a patent assertion from their competitors. Muir Patent Law was hired to identify patents to purchase in order to strengthen the company’s patent portfolio. This would provide better leverage in seeking a patent cross-license with these competitors. Upon identifying key products of their competitors, we used patent analysis software to identify third party patents having a significant likelihood of reading on the competitor’s key products. We also reviewed select criteria of the patent owners to predict their willingness to sell their patents. Cross correlating this information then allowed us to identify a reasonable number of patents for analysis, allowing our client to reduce its risk in expected patent licensing negotiations. Further, by providing an alternative fee arrangement, our fees were kept commensurate with our client’s needs.

Focusing a High Tech Manufacturer’s Patent Portfolio

A global leader in high tech manufacturing foresees several upcoming cross-license negotiations. To prepare for these negotiations, promising inventions are identified and related patent applications are transferred to our firm. After meeting with our client to discuss the inventions and related commercialized technology, we drafted and filed new claims for these applications and prosecuted their allowance with USPTO Examiners. Our client’s resulting patent portfolio is strengthened, providing specific instances of infringement by third parties, assisting in their cross license negotiations to increase their incoming royalty payments or reduce their royalty payments to third parties.

Mining Patent Portfolios, Identifying Infringement

Our client had an ongoing patent dispute with its competitor. The client had recently purchased rights in a third party patent portfolio and hired our firm to mine the portfolio to determine any applicability to products of the competitor. Reverse engineering was obtained to reveal circuits of semiconductor chips used by the competitor as well as structure revealing likely processes used to create the semiconductor chips. Using certain software tools, we were able to identify patents more likely infringed to help tailor our analysis efforts accordingly. Our analysis showed infringement of several patents, assisting our client in their patent dispute. Our alternative fee arrangement helped initiate the undertaking of a large project and reduced the risk of a large payment for little results.

Steering Patent Infringement Litigation to Victory

Our clients often need our expertise in assisting in patent infringement lawsuits. When patent negotiations between our client and a large multi-national corporation broke down, our client was sued for patent infringement. we identified invalidity and infringement problems of the asserted patents. We assisted the patent litigation (run by our client’s patent litigation attorneys) through trial where the jury agreed that all of the opposition’s patents were invalid and not infringed by our client. This absolute victory helped bring the parties back together and forge a patent cross-license agreement, saving hundreds of millions of dollars for our client.

Clearing a Path for a Startup

A technology startup company intended to commercialize a micro-electro-mechanical system (MEMS) product to compete with an established chip manufacturer. To prepare for its patent license negotiations, we reviewed the competitors’ portfolio relating to MEMS products to determine if any design changes should be made and/or if the patents had validity issues. At the same time, the client’s own patent portfolio provided several opportunities to assert the client’s patents against the chip manufacturer. We prepared claim charts identifying current and expected future infringement of the client’s patents and met with the chip manufacturer to discuss the same. Ultimately, in view of a change of direction of the startup, the patents were sold with the startup to the chip manufacturer for significant gain to the startup’s investors.

It’s about breaking through barriers

In order to help your business succeed, you need a team who knows how to get things done. Five of our attorneys worked for the U.S. Patent and Trademark Office, so we understand how the Office works, and what patent examiners will and will not accept.

Understanding the business side of patents keeps us focused on obtaining real commercial value for our clients’ intellectual property, whether in procuring patents, negotiating licenses, analyzing competitor’s patents, or consulting on patent portfolio management.