Project background
One of our clients was interested in monetizing their portfolio of 170 patents related to cloud-based web security technology. They are among Fortune 500 companies and were looking for litigation-ready, negotiation-proof claim charts. Our client contacted us to seek help in evaluating their patents and assistance in selling those patents to relevant industry players.
How we solved it
The project manager, in collaboration with their respective team leaders, conducted a thorough brainstorming session and developed a five-phase strategy to accomplish the objective.
Phase 1: We used our internally developed tool “Patent Ranker” to rank 170 patents based on their licensing potential. Our tool considers 20+ factors when ranking a patent, including market, number of forward citations, priority date, innovation cycle, claim length, remaining life, CIP, CPC, cross-citations, assignees, and other interdependent features. It performs an AHP analysis for ranking purposes. It ranked all the patents by their commercialisation probability.
Phase 2: Manual review of the top-ranked patents was conducted to assess the depth of the claims and the embodiments. Patents were categorised using a taxonomy based on the features or claim-element requirements.
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Phase 3: A thorough market research was conducted to identify a list of companies with products similar to the patented claims. Internet searches, AI, and our in-house tool “Product Finder” were used. We have built and maintain this tool to list products from specific companies based on technology features. Our team monitors leading companies in various technology sectors and indexes product names and related information in the database. We identified a list of cloud infrastructure companies, firewalls, and encryption-based solutions. Each product was categorised using the taxonomy built in phase 2. Phase 4: A comprehensive search for infringing products resulted in the shortlisting of 9 companies directly infringing the client’s security patents. In phase 3, we prepared IOUs (Indications of Use) for all nine products, indicating infringement of the patent claims. We have compiled all necessary documents and evidence to approach the infringing companies. Thorough market research was conducted to identify a list of companies with products similar to the patented claims. Internet search, AI, and our own in-house tool, “Product Finder, were used. We have built and maintain this tool to list products from a particular company based on specific technology features. Our team monitors leading companies in various technology sectors and indexes the product name and related information in the database. We identified a list of cloud infrastructure companies, firewalls, and encryption-based solutions. Each product was categorised according to the taxonomy developed in phase 2.
Phase 4: Evidence for each claim element was identified using marketing materials for the products, such as brochures, user guides, manuals, images, videos, and the company’s website. A free trial of the software was also arranged to capture a snapshot of internal features and map them to specific claim elements to build a strong evidence case. A thorough claim chart was built, in which each claim element was mapped to the evidence. Infringement theory/contention, exhibits, and analyst comments were added to make the chart more readable and litigation-ready.
Phase 5: As a first step, we contacted the in-house counsel of each infringing company and invited them to a discussion. Simultaneously, we presented the chart to several ecosystem players. We contacted top litigation funding companies based in the US and Canada, Litigation lawyers, and top patent brokers. Every negotiation was different. One infringing company based in New York decided to enter into a cross-licensing deal with our client. We invited them to the discussion and connected our client with them.
For others, we presented several opportunities to our client and connected them with ecosystem players to move it forward.
