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Patent Portfolio Management, Monetization, and Transactions

Finnegan was one of the first firms to develop a full-service practice for managing and monetizing IP portfolios and has been involved in cutting-edge, high profile work in this area for over two decades. We analyze patent portfolios to understand the opportunities, increase the value of the portfolios by additional filings and acquisitions, identify business opportunities, create a plan for generating revenue, and then execute the plan by selling or licensing the patents. We distilled best practices from years of experience assisting clients with business decisions regarding their intellectual property and developed a proprietary system for understanding, developing, and using patent portfolios in a wide range of business decisions – the Finnegan Patent Portfolio Platform system. Contact us to learn more about the FP3 system. Here are a few examples of our experience:

Analyzing and increasing the value of patent portfolios

Finnegan played an instrumental role in actively managing and strengthening AOL’s portfolio of over 1,000 patents prior to its sale to Microsoft for more than $1 billion. Before the portfolio was up for sale, our attorneys had already analyzed and grouped the patents for particular purposes, filed and strategically prosecuted additional patent applications, and were prepared to discuss the purpose and value of the patents to specific potential buyers. This foresight proved invaluable when the sale began and greatly improved its ultimate sale price.

Selling patents

We worked with AOL’s in-house patent team throughout the negotiations and bidding process before selling the portfolio to Microsoft for more than $1 billion. Later that year, we also helped our client deCarta, Inc. sell their social networking patents. We leveraged our existing knowledge of the SoLoMo technology, and our research on trends and current interests of companies in the social networking industry, to create a list of interested entities. We then reached out to our contacts at these companies, presented them with the opportunity, and educated them on the scope of the patents and their applicability to the marketplace. We set up and conducted a multi-round private auction, and negotiated and drafted the terms of the agreement to finalize the sale.

Licensing patents

Finnegan worked with Philips, France Telecom, and others in setting up and running a licensing and enforcement program on standard essential patents covering the MP3 standard through a patent management company, and handled the full range of activities from beginning to end—analyzing the patents, identifying infringers in the marketplace, setting up a licensing company in the United States, negotiating and drafting license agreements, coordinating multinational litigation in Europe and the United States to enforce the patents, assisting in license administration, enforcing the agreements to collect royalties from breaching licensees, and providing strategic advice throughout the process. The licensing program resulted in over 1,000 licensees and significant revenue for our clients.

Acquiring patents and due diligence investigations

Finnegan helped a leading telecommunications company with its acquisition of a company selling television set-top boxes for $2.35 billion. Finnegan was retained to conduct a due diligence investigation and provide guidance throughout the negotiation. As another example, while representing HTC in the mobile-phone patent wars with Apple, Finnegan helped HTC acquire the S3G patent portfolio for $300 million and subsequently settle the litigation with Apple.

Pooling, collaborations, and other complex agreements

Finnegan has assisted clients in considering and carrying out strategies to monetize IP in many sophisticated arrangements, including setting up patent pools, participating in standards organizations, identifying patents to be included in pools, negotiating terms and compensation for pool participants, and arranging various other types of collaborations to generate revenue from patent portfolios.

The guidance you need to meet business objectives

Innovative start-ups, multinational corporations, and other IP-driven organizations turn to Finnegan for guidance when considering their IP options. We work with each client’s business, legal, and technical staffs to develop IP portfolios that align with their business objectives. We assess existing and developing portfolios to ensure that business plans are built on and around products based on strong IP protection that avoids infringement. This often entails identifying and prioritizing assets with recommendations to license technologies or sell marginal assets to generate revenue, to donate or even abandon assets to reduce costs, and to identify acquisitions to strengthen or expand an existing portfolio. Our patent transactions team has experience and dedicated resources to assist in every aspect of portfolio management and monetization:

  • Assessing and developing internal IP operations
  • Understanding your IP rights
    • Portfolio analysis
    • Patent landscape analysis
    • Patent mining and mapping
    • Due diligence investigations
    • Infringement and right to use
    • Validity and enforceability assessments
    • Strategic counseling and opinions
  • Developing and managing your rights
    • Strategic prosecution
    • IP acquisitions
    • Business and technical collaborations
    • Strategic counseling
  • Using and transferring your rights
    • Monetization advice
    • Licensing programs
    • Patent sales and private auctions
    • Divestitures
    • Cross licensing
    • Dispute resolution and settlement agreements
    • IP transactions
    • Negotiating and drafting agreements 
    • Patent pooling and standards
    • IP regulatory and administrative issues