We measure our success by that of our clients. Our accomplishments go far beyond simply developing strong patent and trademark portfolios with effective prosecution. From prevailing in post-grant proceedings to negotiating complex agreements and avoiding costly disputes through risk management analysis and counseling, ESF consistently helps clients achieve their strategic business goals. We highlight some of our noteworthy success stories here.
Development and Sale of Start-Up’s Patent Portfolio Leads to Successful Acquisition
ESF helped a wireless start-up company build up two substantial patent portfolios for two somewhat different technologies/businesses that the company was developing. The managing investors of the company decided to sell off the assets for one of the technologies in order to focus further efforts on the other. The portfolio included approximately 30 U.S. patents and other pending patent applications in the U.S. and around the world.
Working with the company executives and a patent valuation expert, a sales presentation was created for the technology to be sold, including an explanation of the patents and their net present value to the wireless chipset market. The sales presentation was circulated through a network of interested parties, including large wireless chip manufacturers. One particular patent in the portfolio included patent claims broadly covering a groundbreaking solution for implementing a wireless transceiver in a single integrated circuit.
A bidding competition ensued for the portfolio of patents, and a final deadline was given by which the competitive bidders (unaware of each other) were to provide their best and final offer for the portfolio. The cash raised by the sale of the patents was sufficient to serve as a round of financing for the company. This allowed the company to further develop and generate interest from a large wireless network equipment company, which eventually acquired the company. Within two years of the sale of the patent portfolio, the company was able to reach an acquisition milestone.
Successful Outcomes in Post-Grant Proceedings for Several of ESF’s Clients
- ESF represented a patent owner in a Post Grant Review (PGR) based on the alleged public display of a prior art device. While the proceeding was instituted prior to the Board providing the patent owner access to the device, ESF’s aggressive discovery strategy and technical analysis of the device resulted in a final written decision that confirmed the patentability of all of the challenged claims.
- ESF represented a patent owner in 14 concurrent Inter Partes Reviews (IPRs). None of the proceedings were instituted, with some proceedings being denied and others being terminated after a favorable settlement.
- ESF’s representation of petitioners has resulted in institution of IPR in all such proceedings. The institution decisions drove favorable settlements or resulted in the unpatentability of all challenged claims after a full trial.