Project Background
One of our clients, an SEP holder, was looking to license its patents to an East Asian company that is also an implementer and holds some patents. The implementer also offered to license their 200+ patents, which were declared to ETSI, to our client, to mitigate some licensing fees.
Our client contacted us to seek help assessing the validity and essentiality of about 140 of the 200+ patents. They decided to assess the remaining patents in-house.
Our client shared the claim charts of all 140 patents and told us to identify the mistakes in mapping or incorrect evidence as phase 1 and do a validity analysis of each patent as phase 2. We only had 5 weeks to complete both tasks.
HOW WE SOLVED IT
Due to time constraints, we decided to conduct both phases in parallel. One set of team members was dedicated to conducting phase 1 analysis. They were tasked with analysing each claim chart in detail, flagging the inappropriate ones, and putting a detailed comment where evidence for some claim elements was overlooked or missing, or where evidence was very broadly mapped, or an inventive step that was incorrectly mapped.
Our second team was dedicated to conducting validity analysis of each patent. Our experience taught us that an 80% chance of finding a good prior art for an SEP case is in contribution documents, meeting reports, or previous versions of the standards. Our in-house database comprises all documents from various SSOs and is indexed smartly. Our team utilized the database to discover compelling prior-art documents challenging the validity of the granted claims. For cases where strong prior-art documents were not found in contribution documents, we conducted a thorough patent search to discover valid prior-art documents.
Our reports helped our client immensely during the negotiation phase and put them in a strong position to challenge their efforts to cross-license their 200+ patents.
Contact Us
- #31, 10th Floor, TDI Business Center, Mohali, 160055, India
- +91 172-2972262
- info@sraas.com
