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Patent Portfolio Management, Monetization, and Transactions - Licensing, Pooling, and Other Transactions

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 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.
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.
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.
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.
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.
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.