Cases: Portfolio Valuation & Value Creation

Private Equity Backed Spin-out

Hired by a prominent east coast venture capital firm, our consultants performed a detailed valuation of the intellectual property of a business group within the Nortel Corporation. The venture firm was negotiating the formation of a spin-out from Nortel to include the patents, personnel and know-how associated with a development effort in next generation wireless communications. Nortel was under bankruptcy protection and our report was prepared for a bankruptcy court-appointed monitor to ensure that fair value was being given to Nortel and its shareholders as the new venture was being formed. The report allowed the transaction to proceed and the entity has since raised over $10 million in venture capital backing.

European Medical Company Acquisition

Our team was hired by a major European medical device manufacturer to advise on an acquisition of a complementary U.S. company. We provided a valuation of all of the intangible assets of the target firm, including patents, know-how, customer lists and trademarks. We worked closely with the acquiring firm's financial team to identify and quantify the valuable assets. Our financial models and reports were valuable in negotiations and closing the transaction. The result has been a successful asset sale.

Patent Pool Organization

Our consultants were hired by a privately held licensing entity to provide a valuation of the underlying IP assets as well as the organization going concern. The request was made by shareholders in order to provide a basis for transactions involving shares of the entity.

Pharmaceutical Drug Delivery

This project involved valuing drug delivery patent assets for specific geographical territories. The underlying technology was a novel drug delivery technique that was applied to several neuropathic pain treatments. Our consultants provided a valuation of the assets for a number of countries and this valuation served as the basis of negotiations between the IP holder and licensees.

Optical Components for Data Communications and Telecommunications - Privately Held Venture

The Board of Directors of a privately held venture needed the valuation of their intellectual property portfolio relating to their devices and electro-optical materials. The company had developed optical communications and millimeter wave imaging and detection components for telecommunication and security applications. We provided a comprehensive valuation of their entire portfolio consisting of over twenty patents and applications, know-how and trade secrets.

Natural Language Search Patent Sale - Small Tech Company

Our consultants were engaged by a small technology development company to assist in the selling of a fundamental patent in the area of natural language search. The company, prompted by an unsolicited offer to buy the patent, looked to our consultants to value and sell the patent. We surveyed the landscape of companies in the data management search engine markets. Our team constructed a detailed economic model of the value of the patent. We contacted companies in the identified industries and other parties with a potential interest in acquiring the patent. Through a closed auction, Upstream was able to secure a selling price for the patent of nearly four times the client's original offer.

Technology Commercialization and Licensing - Dental Implants

A group of implant dentists and an engineering group formed a company to develop a novel device that helps make dental implant procedures easier and safer. The company engaged our consultants to be its business representative to lead the business-related commercialization efforts for the technology. Our consultants developed dual commercialization strategies - a licensing program into the dental implant industry and a "go it alone" product development and commercialization strategy with a manufacturing partner. Our consultants engaged three of the major dental implant companies in licensing discussions at the highest level. In addition, our consultants identified and facilitated negotiations with a development and commercialization partner for the device.

Patent and Technical Analysis - Major University

A major university hired our Directors to review the landscape of therapies, both available and under development, to treat a certain disorder. The university had several method-of-use patents in this area and the review was triggered by a request for a license to the pants by a pharmaceutical company. The university wanted to determine whether it should grant an exclusive license to the company. In addition, the university suspected that other companies might have products, in development or on the market, that infringed upon its patents. Our consultants surveyed the landscape of marketed drugs in this area and identified several likely infringing products. Our consultants provided more in-depth analysis on these companies and we have supported the university's discussions with these parties.

Market Analysis of Object Based A/V Desktop Software Application - University

For this project, we provided a financial profile of a desktop software application to prepare an estimate of potential infringement damages for a university. The university holds a portfolio of fundamental patents related to the application and the inventor and university's counsel suspected that the software company was infringing upon this intellectual property. Upstream analyzed the revenues generated by the company and constructed the financial model. This model and supporting assumptions are being used by the university to support its ongoing discussions with the company.

Commercial Assessment & Licensing, Wireless Commerce Technology - Medium Size Company

Our consultants were engaged by a medium sized company that develops wireless commerce technology. Initially, the company had planned to roll out a consumer technology offering (to enable people to use their cellphones and PDA's to perform transactions) and had obtained a number of patents to protect its technology in this area. However, the company underwent a change in business direction and decided to focus on the business to business market instead. As a result, the company wanted to extract value from the consumer technology IP it was no longer using for its core business.

Our consultants assessed the IP licensing opportunity in the consumer wireless technology market. The company's Board of Directors has made the decision to explore a sale of the patent portfolio based on the assessment.


IP Valuation, Medication Package Monitoring - Enterprise Mobility Provider

Hired by a leading technology provider of enterprise mobility solutions for the healthcare and commercial industries, our consultants performed an assessment and valuation of the company's patent portfolio in the area of medication package monitoring patents. As part of the engagement, our consultants identified applicable medical package monitoring market segments, assessed the strength of the patents with regards to the medication package monitoring markets, determined segment market drivers and developed patent valuations based on these markets. Additionally, our consultants evaluated other potential applicable markets for the patents.