Print PDF

Patent Portfolio Management, Monetization, and Transactions

Since its founding, we have provided strategic intellectual property counseling and representation to Imerys, including its French parent company, international subsidiaries, U.S. headquarters, and multiple domestic business units. We have evaluated developing technology for patentability; drafted and prosecuted patent applications in the U.S. Patent and Trademark Office and abroad; analyzed patent enforcement opportunities; defended against third-party charges; and provided legal opinions on several aspects involved in bringing new products to market and maintaining Imerys’s strong, competitive position in the kaolin clay market.
Finnegan guided the entire developments of LTA’s patent portfolio that includes over 120 patents and pending applications directed to lighter-than-air airship technology. The applications cover airship technologies ranging from hull and empennage configurations, propulsion and power source arrangements, flight control systems, attitude regulation and control, attitude displays, variable buoyancy techniques, solar powered flight, aerodynamic features, and various ornamental designs and configurations.
Intertrust Technologies is a leading developer of digital rights management (DRM) solutions and trusted computing technologies that enable Internet trust between people and allow for data privacy and digital security among a wide variety of devices and services. Finnegan prosecutes and manages Intertrust’s entire patent portfolio. We also advise on portfolio development as well as enforcement and defensive strategies for its patents relating to content protection, digital security, data privacy, trusted computing, and rights management—all of which are key components of a connected environment in the 21st century.
We provide in-depth patent prosecution and counseling services for one of the world's leading solar companies. Our service includes preparing patent applications directed to novel silicon materials and processing technologies, specifically geared toward photovoltaic applications.
We provide in-depth patent prosecution and counseling services for one of the world's leading information management companies. Our service includes preparing patent applications directed to novel methods and systems for storing, protecting, and managing information with a particular focus on records management and data protection and recovery. In addition, we have provided due diligence for our client’s mergers and acquisitions, to assist it in achieving its strategic growth goals.
Finnegan client AOL reached a record-setting agreement with Microsoft to receive $1.056 billion for selling over 800 patents and granting Microsoft a license on its remaining 300 patents and patent applications.  We worked closely with AOL over several years to strategically build and strengthen its patent portfolio, towards its monetization goals.  Our strategic patent planning and prosecution services involved reviewing and processing hundreds of transferred cases.  The team analyzed the portfolio and implemented a process for strengthening it—identifying key inventions, studying products and trends in the market, drafting claims with an eye toward enforcement, and conducting interviews with U.S. Patent and Trademark Office examiners to obtain prompt allowances. We also helped AOL identify monetization opportunities and develop offensive and defensive patent strategies.  When AOL’s board of directors authorized a sale process for the portfolio, we worked with AOL’s in-house patent team and top executives and a team of advisors, handling numerous critical tasks and providing guidance throughout the negotiations and bidding process.
In the fields of memory technology, cryptography, and other new ventures, we help Rambus obtain patent rights from patent offices worldwide and have taken significant roles in assessing intellectual property issues as part of acquisition due diligence efforts and other strategic counseling projects. For example, in connection with Rambus’ acquisition of Cryptography Research, Inc. (CRI), Finnegan conducted an extensive IP due diligence. The deal was valued at over $350 million and involved the acquisition of the CRI and its IP assets focused on cryptographic technologies, such as protective measures against differential power analysis and other ways of protecting encrypted systems.
A leading healthcare company that develops wireless communication systems for managing patient care turns to Finnegan for counsel in many different facets of intellectual property. We study the patent landscape for wireless health management and assist the company in weaving its way through patents of its competitors; we obtain patent protection for its technology and trademark protection for its brands; and we provide guidance in drafting agreements for the transfer of technology.
A European company asked us to conduct IP due diligence on a technology it was looking to acquire. The renewable energy focused on the production of photovoltaic cells. In less than one month, we coordinated prior art searches in Europe and the United States, evaluated the search results containing over 500 U.S. and European patents, provided our opinion on freedom to operate with the target technology, and set up a system to monitor European and U.S. patents that may be granted in the future.
As Finnegan’s clients advance innovations that analyze big data, provide back-end storage and data solutions, monitor information from mobile devices and vehicles, process performance information, and provide user interfaces displaying information in a user friendly manner, we help them procure patent protection and build sophisticated portfolios around all related technology areas. We also assist them with developing enforcement strategies and defending against infringement accusations.
Finnegan provided an array of IP services to SRA International, including counseling and patent and IP prosecution for its Automatic Dependent Surveillance-Broadcast (ADS-B), which is a cooperative surveillance technology in which an aircraft determines its position via satellite navigation and periodically broadcasts it, enabling it to be tracked. As part of the comprehensive IP strategy developed for SRA, Finnegan addressed both patents and trademarks for systems and devices associated with ADS-B and other SRA services.
When a leading patent management company wanted to generate royalties from patents developed and owned by an international group of research and operating companies, it turned to Finnegan for assistance in setting up and running a licensing and enforcement program involving a full range of activities—analyzing the patents, identifying infringers in the marketplace, negotiating and drafting license agreements, litigating to enforce the patents, and providing strategic advice throughout the process.
Seoul Semiconductor received favorable rulings on several important motions in its U.S. International Trade Commission (ITC) case led by Finnegan against Nichia Corporation, paving the way to a valuable cross-licensing deal as part of a settlement ending years of litigation in courts across the globe.  Finnegan represented SSC in cases from the Eastern District of Texas to the Central District of California, as well as at the Federal Circuit.  Shares in SSC rose fifteen percent on the Korea Exchange following the announcement.
Nuvera Fuel Cells retained Finnegan to manage all of the company's IP portfolio assets, which were recently consolidated. Much of the management is focused on the procurement of patents, both U.S. and foreign, directed to various aspects of fuel cell technology.
Connectivity is crucial for Internet-of-Things (IoT) devices. Finnegan has considerable experience dealing with standards-essential and non-essential patents covering telecommunications and network protocols, including asserting and defending against such patents. We have helped clients develop and license patent portfolios on various network technologies, such as wireless networks, the Internet, and other network architectures.
Finnegan client S3 Graphics Co. Ltd. ("S3G"), a subsidiary of HTC Corporation, filed an action in the District of Delaware against defendants Advanced Micro Devices, Inc., ATI Technologies ULC, and ATI International SRL. S3G sought a declaratory judgment, including damages, on defendants’ claims to ownership of or license to certain valuable S3G patents related to high-performance graphics processing for video games and other graphics intensive software applications. The court ruled on summary judgment that S3G owns the disputed patents, and that the defendants have no ownership interest or express license to the disputed patents.
We assisted our client in developing and negotiating an arrangement for pooling essential patents for an adopted standard. We created contracts by which the client became the agent for the patent owners in granting licenses to all applicants on a RAND basis.
Toshiba is one of Finnegan’s long-standing clients. The firm prosecutes hundreds of U.S. patent applications per year in various technologies, including semiconductors, integrated circuits, computers, communications, and electronics. Toshiba also turns to us for strategic advice and opinions regarding their extensive patent portfolio.
Finnegan’s work for Eastman Chemical covers a wide variety of technologies, including Eastman’s valuable specialty polyester resin portfolio. Our work has involved drafting and prosecuting applications for commercially important technologies; specialty prosecution proceedings, such as reexaminations and reissues; the preparation of opinions; prelitigation investigations; and issues involving licensing.
We represented a major travel-related company in securing worldwide patent protection on a diverse portfolio of software and business-method–related inventions. We advised and defended the client on various allegations of patent infringement and third-party claims for indemnification against infringement allegations.
Finnegan has represented Boston Scientific in a variety of patent matters since 1995. The work has included prosecution of hundreds of U.S. and foreign patent applications in the medical device area. Finnegan has also represented Boston Scientific in interferences, due diligence investigations of target companies, product freedom-to-operate opinions, reissue applications, and European oppositions.
Finnegan represented patent applicant High End Systems Inc. in reissue proceedings before the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences.  Finnegan was successful in obtaining a complete reversal of the Examiner’s rejection of claims to LED technology.
A startup company providing the technology for LCD panels faced a difficult licensing challenge in the worldwide fragmented production environment. We assisted the client in formulating a licensing program that provided necessary rights to the various levels of value production in countries around the world while avoiding exhaustion of the client’s IP rights through unrestricted distribution of components.
Our client had the technology and the IP but not the market presence. A major pharmaceutical company needed a portfolio of diagnostic products. We assisted our client in a lengthy negotiation over a partnership arrangement that allowed both companies to prosper. While IP was an important part of the transaction, we assisted in creating contractual protection of the client’s business interests, particularly in the event of a separation.
Finnegan represents a New England company in the coordination of their patent protection strategies for biofuel technologies. We also counsel this client regarding strategic partnerships and provide landscape analysis.
Finnegan has represented many healthcare companies in transactions that included strategic counseling on antitrust and patent misuse issues. For example, Finnegan counseled Applera in its strategic settlement with Roche concerning PCR technology.
One of our long-standing clients asked us for advice on how to expand its patent portfolio to include nanotechnology. We researched the activities of its competitors, reported our findings, and suggested a course of action to a group of its senior IP counsel and technical leaders. Our report focused on the implications of nanotechnology in the client’s industry and identified desirable avenues of research and product development where nanotechnology could be implemented and protected to provide an advantage in the marketplace.
In an important decision for companies bidding on government contracts or supplying bidders on government contracts, Judge Freda L. Wolfson of the District of New Jersey issued an order granting summary judgment of immunity from infringement in favor of Finnegan client Accuride Corporation.  Accuride was accused of infringing a patent on an automotive wheel for use with an onboard tire inflation system.  Accuride supplied the accused wheel to companies bidding on a U.S. Army solicitation for a military all-terrain vehicle (M-ATV) intended to better protect U.S. soldiers, sailors, airman, and marines in Afghanistan from roadside bombs and improvised explosive devices (IEDs).  In a detailed 29-page opinion, Judge Wolfson found that the U.S. Government had implicitly authorized and consented to liability for any potentially infringing onboard tire inflation system when wheels were supplied in the bidding phase of the M-ATV military contract.  Specifically, Judge Wolfson found that Accuride was immune from any liability for patent infringement under 28 U.S.C. § 1498(a), which is the federal statute that provides that claims for patent infringement occurring in government contracts must be against government and must be brought in the Court of Federal Claims.
Since 2000, Finnegan has worked closely with the inventors and legal staff at Caterpillar Inc. The firm has prepared and is prosecuting several hundred patent applications in the United States and in many foreign countries. We have also assisted Caterpillar with many opinion matters involving issues of patent validity, infringement, government contracts, licensing, and copyrights. And we have a significant role protecting Caterpillar's well-known trademarks around the world.
Finnegan works with clients developing surveillance and home monitoring technologies, where images and videos are captured and transmitted for real-time viewing and monitoring anywhere there is Internet access. We help these clients build portfolios around all technology areas in surveillance, defend against infringement accusations, and perform risk analysis before products are launched in the market.