Our Work

These anonymized highlights reflect the structure, complexity, and outcomes of representative work completed across the United States, Europe, and Asia. All engagements are confidential.

Individual Licensees

Defensive Program

Collective Licensing

Strategic Transactions

Background	A major technology company approached our team for assistance obtaining reasonable royalties for cellular technologies used in new mobile devices. Because their volumes were relatively low, they struggled to engage patent owners to discuss licensing terms.
Challenges	Our team needed to bring together five separate patent owners to agree upon terms for a single license to the technology company.
Solution	We served as the successful deal’s intermediary, utilizing the team’s combined experience and previous relationships. This resulted in all parties agreeing upon terms that were mutually acceptable to all.

Background

A major technology company approached our team for assistance obtaining reasonable royalties for cellular technologies used in new mobile devices.

Because their volumes were relatively low, they struggled to engage patent owners to discuss licensing terms.

Challenges

Our team needed to bring together five separate patent owners to agree upon terms for a single license to the technology company.

Solution

We served as the successful deal’s intermediary, utilizing the team’s combined experience and previous relationships. This resulted in all parties agreeing upon terms that were mutually acceptable to all.

Technologies involved

Cellular patents

Outcome

A license was granted and reasonable compensation was provided to the licensors.

Background	A Silicon Valley technology firm approached us needing an efficient defense solution against potentially aggressive, non-practicing entities (NPEs). NPEs posed a threat by acquiring patent portfolios and then asserting them against implementers. Ultimately, the client liked the model of springing licenses upon transfer of patents to NPEs, but also wanted to get that protection from patent owners outside traditional defensive networks. The client relied on our team to recruit high-volume patent sellers into a custom program to grant licenses-upon-transfer when those patents were transferred to an NPE.
Challenges	This was a new deal structure that many patent owners were either unfamiliar with or had previously rejected.
Solution	Our team used our extensive experience to educate and inform the client of the value that the program generated for their patents. The exchange of fees made this program stand out from other defensive programs.

Background

A Silicon Valley technology firm approached us needing an efficient defense solution against potentially aggressive, non-practicing entities (NPEs). NPEs posed a threat by acquiring patent portfolios and then asserting them against implementers.

Ultimately, the client liked the model of springing licenses upon transfer of patents to NPEs, but also wanted to get that protection from patent owners outside traditional defensive networks. The client relied on our team to recruit high-volume patent sellers into a custom program to grant licenses-upon-transfer when those patents were transferred to an NPE.

Challenges

This was a new deal structure that many patent owners were either unfamiliar with or had previously rejected.

Solution

Our team used our extensive experience to educate and inform the client of the value that the program generated for their patents. The exchange of fees made this program stand out from other defensive programs.

Technologies involved

The program included virtually all patents across the patent owners’ entire portfolios and a spectrum of technologies.

Outcome

The client received thousands of licenses as the patent owners have continued developing their portfolios and divesting assets to willing buyers.

In addition, the success of this partnership paved the way for this program to be scalable to multiple clients in the future.

Background	A group of patent owners approached us for assistance in licensing their portfolio to large tech companies, including a major smartphone maker. Our team had an existing, close relationship with the smartphone maker that proved invaluable in gaining access to management. The patent owners needed help getting the smartphone maker to obtain a license at a reasonable price.
Challenges	We faced the challenge of balancing the expectations of all parties, while increasing the level of fees the smartphone maker was willing to pay and decreasing the amount of money the licensors were willing to take. Negotiations also involved various companies across Asia, encompassing different cultures, practices, languages, and varying degrees of licensing experience.
Solution	Our team met face-to-face with all parties involved in order to fully understand their positions and collect valuable information. This helped with the negotiation process and ensured fair compensation.

Background

A group of patent owners approached us for assistance in licensing their portfolio to large tech companies, including a major smartphone maker. Our team had an existing, close relationship with the smartphone maker that proved invaluable in gaining access to management.

The patent owners needed help getting the smartphone maker to obtain a license at a reasonable price.

Challenges

We faced the challenge of balancing the expectations of all parties, while increasing the level of fees the smartphone maker was willing to pay and decreasing the amount of money the licensors were willing to take. Negotiations also involved various companies across Asia, encompassing different cultures, practices, languages, and varying degrees of licensing experience.

Solution

Our team met face-to-face with all parties involved in order to fully understand their positions and collect valuable information. This helped with the negotiation process and ensured fair compensation.

Technologies involved

Semiconductor, cellular, wireless

Outcome

Licenses were agreed and reasonable compensation was provided to the patent owners.

Background	With several of our key clients, we identified a portfolio originating from three major patent owners, which consisted of close to a thousand assets (granted patents and patent applications) in the Wi-Fi space. This was seen as a clear risk if it were to be sold to an aggressive non-practicing entity (NPE). We acquired the rights to the portfolio and then licensed its core clients and more than a hundred additional licensees. These deals supported a fair and reasonable royalty rate for the Wi-Fi technology that clients used to their benefit, while also providing a solid ROI for original patent owners. After the licensing was concluded, we sold the portfolio and generated additional revenue for the original patent owners. Patent owners wanted a return on their investment in the Wi-Fi segment, while licensees wanted to clear risk and establish fair and reasonable rates.
Challenges	Managing the interests of several patent owners while also delivering value to licensees. It took many months of strategically negotiating and managing these interests to reach a set of terms, including rates and scope of the license, on which we could get agreement and begin signing licenses.
Solution	By finding the appropriate balance between the willingness of potential licensees to pay and reasonable fees that licensors could accept without the need for patent owners to resort to litigation.

Background

With several of our key clients, we identified a portfolio originating from three major patent owners, which consisted of close to a thousand assets (granted patents and patent applications) in the Wi-Fi space. This was seen as a clear risk if it were to be sold to an aggressive non-practicing entity (NPE). We acquired the rights to the portfolio and then licensed its core clients and more than a hundred additional licensees. These deals supported a fair and reasonable royalty rate for the Wi-Fi technology that clients used to their benefit, while also providing a solid ROI for original patent owners. After the licensing was concluded, we sold the portfolio and generated additional revenue for the original patent owners.

Patent owners wanted a return on their investment in the Wi-Fi segment, while licensees wanted to clear risk and establish fair and reasonable rates.

Challenges

Managing the interests of several patent owners while also delivering value to licensees. It took many months of strategically negotiating and managing these interests to reach a set of terms, including rates and scope of the license, on which we could get agreement and begin signing licenses.

Solution

By finding the appropriate balance between the willingness of potential licensees to pay and reasonable fees that licensors could accept without the need for patent owners to resort to litigation.

Technologies involved

Patents declared essential to Wi-Fi standards.

Outcome

Patent owners generated revenue in a space that they had previously found difficult to monetize.

Licensees received valuable comparable licenses in a space that we correctly predicted would see an increase in risk of litigation and divestments.

Our Work

Individual Licensees+

Technologies involved

Outcome

Defensive Program+

Technologies involved

Outcome

Collective Licensing+

Technologies involved

Outcome

Strategic Transactions+

Technologies involved

Outcome