PATENT MONETIZATION: NY LAW FIRM LICENSES ELECTRONICS OEM PATENTS TO TELECOM NETWORK PROVIDERS
A New York based law firm representing a beleaguered consumer electronics manufacturer was trying to monetize the company’s patent assets related to protocol conversion procedures used in certain industrial electronics equipment. The law firm engaged Copperpod for technological research in this area and to identify the best technical evidence and companies that infringe the patent assets.
Copperpod reviewed the patent assets in detail alone as well as in conjunction with the client’s present and previous product offerings to understand the novelty as well as how the portfolio fit in with the client’s technological journey over the last 15 years.
Based on the deep understanding of the underlying technology, Copperpod recognized that even though the patents were written keeping industrial electronics in mind (keeping with the client’s product development efforts), at least one of the patents was applicable to modern telecommunication networks as well as ad-hoc wireless networks popularized by consumer Internet of Things in years since the patents had been granted.
Copperpod thus advised a 2-phased patent monetization strategy for enforcing the client’s patents.
Copperpod identified 8 mid-size industrial electronics companies as well as consumer IoT device manufacturers that currently infringed on at least one patent asset. We focused specifically on companies with $20-$50 million in EBITDA, with preference on companies with physical presence in either New York or Texas. Using Copperpod’s analysis and claim charts, the client was able to negotiate license agreements with all 8 companies within the first 6 months.
Phase 1 helped the client achieve a number of objectives:
Generate initial funding for engaging larger technical and legal teams.
Prove to litigation financiers the ROI roadmap for a larger enforcement campaign.
Vet the patent assets for invalidity issues and technical gaps
Copperpod expanded the infringement theory and identified how telecommunication networks infringed on one of the patents. The first thing our experts found that there are at least 7 possible use cases for the infringement including virtual gateways with protocol conversion to the latest IoT devices. Three of these use cases related to telecom standards widely adopted in US. After a deep literature study of the ITU-T and 3GPP standards, our experts found the particular versions and portions of the standards used by telecom companies that mapped onto at least one of the claims and Copperpod shortlisted 16 companies that used infringing gateways for converting message protocols using a communication server.
Of the 16 companies, the client then further shortlisted 8 telecom providers and filed district court cases in Texas, California and New York using Copperpod’s analysis for fulfilling Rule 11 requirements.
Copperpod remained the client’s and the outside counsel’s go-to team for technical answers throughout the campaign – which has since resulted in favorable multi-million dollar out-of-court settlements with all defendants.
A patent may be enforceable in industries and technology areas beyond the one towards which it was originally intended.
An enforcement campaign with the right mix of low priority and high value targets pays for itself right from the start.