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Patent Portfolio Management, Monetization, and Transactions - Portfolio Management

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.
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.
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.
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.
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.
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.
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.
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.
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.