Cases: IP Enforcement & Support
IP Assertion and Litigation - Medium-Sized Teaching Hospital
Our client, a medium-sized teaching hospital, had developed a medical technology and IP that it claimed was being infringed by a major corporation. We thoroughly analyzed the patent claims and license economics and approached the corporation with a licensing proposal. When this was rejected, we initiated litigation against the company.
This litigation was quickly settled. The corporation took a license to the IP and the IP owner earned $3M in royalties in the 18 months after the deal was concluded.
Strategic Direction and Financial Damages Support - Major U.S. University
A biotechnology company with a successful product on the market had licensed the underlying technology from our client, a major U.S. university. In collaboration with outside counsel, we were able to determine that additional products marketed by the company had roots at the university, yet researchers had not been credited and the university had not been informed. The university and counsel engaged our consultants to provide a detailed financial model to support its claims for additional royalty revenues, based upon forecasted sales, co-development revenues and anticipated sub-licenses. Along with outside counsel, we advised the university throughout the settlement negotiations and participated in discussions with the company. Ultimately the company agreed to a multi-million dollar settlement with the university.
Strategic Collaboration Management and License Negotiation - University
A large U.S. university had entered into a subpar license agreement in which misrepresentations had created inequities. Our Directors headed the team to identify and direct strategic leverage to provide a remedy for the inequity without derailing product launch, collaborative relationship or outside investor and investment banking involvement. The solution ultimately required management of scientific experts, legal experts, and financial modeling expert. While dependent on royalties, it is estimated that the strategic value of the remedy will net more than $20 million to the University.
Licensing Assertion - Molecular Diagnostics Technology - Major Multinational
This project involved an infringed medical device for a major multinational. We engaged in a dialogue with the client to explore ways to monetize some of their IP assets. We determined that we had potential with a portfolio that addressed the detection of gene mutations, a diagnostic tool essential in a large variety of disease screening needs. Our team acquired these IP rights under an arrangement in which the IP owner would receive a percentage of any revenues we derived from the patents. Our team consisted of two technical experts with commercial expertise (one in the U.S. and one in the U.K.) and a patent attorney.
Our team discovered dozens of likely infringers (i.e. companies with products that used techniques covered in the patent claims). We discovered and confirmed approximately five new infringers. The team executed royalty bearing licenses with over ten companies. Total revenues to the original IP holder are in excess of over $1 million per year.
Strategic Direction of Patent Conflict - Large Nutraceutical Company
Two large nutraceutical companies began engagement on business and patent conflict. We managed assessment of patent, business and scientific issues, directed an international legal team for the creation of appropriate balancing leverage opportunities and successfully provided the framework for negotiated settlement to the client which included a royalty free world wide right to practice.