Identification of deal-driving patents in a portfolio is becoming increasingly important for both big and small companies. This is because the revenue generated by patents is negotiated mainly on the “deal drivers”. Deal driving patents are the patents on which infringement claim charts can be made. Patent claim charting, also known as patent claim mapping, is the art of showing how a product or service infringes a patent’s claim. Companies use this approach to prove patent infringement and thus show the evidence of use of this technology in the market – thus driving the value of the licensing deal.

This article discusses how Sagacious IP’s end-to-end patent licensing support service helped a US-based client to settle a deal using an in-depth patent claim chart analysis.

Brief Description of the Problem

Our client is a US-based technology licensing firm with its headquarters in Denver. Over the past year, we have worked on various Evidence of Use (EoU) analysis-based projects with them. Recently, they engaged us for a bespoke project wherein they wanted our team to analyze nine patents from their patent portfolio and identify all possible patent infringement cases against a renowned US-based multinational technology firm. They also sought our help in settling a deal with the target firm.

Solution Offered by Sagacious IP

At the outset, our team formulated an exhaustive strategy on how to identify the deal-driving patents, prove patent infringement and settle a deal with the aforementioned target firm. Thereafter, the team carefully evaluated the client’s patents and prepared claim charts to prove infringement of six of their patents. The defendant, however, denied our client’s patent infringement allegations and prepared a rebuttal document for all six infringement cases. Notably, they highlighted non-infringement and invalidity of the client’s patents in their rebuttal document. We helped our client in preparing a response to the rebuttal by providing valid arguments for patent infringement as well as by defending the validity of their patents.

The Impact

The client had an upper hand at the negotiation table owing to our team’s end-to-end research support. This support included analysis of nine patents shared by the client, identification of infringed patents, and preparation of claim charts to prove the alleged infringement. As part of the project, this team comprising of two managers and four analysts also prepared a response to the defendant’s rebuttal against six infringement cases. They accomplished this by preparing arguments for defending the validity as well as alleged infringement of the patents in question. In the end, the client was able to materialize a deal worth a higher six figure dollar value after the defendant agreed to get a license from them.

Final Thoughts

With global competition on the rise, companies are constantly seeking ways to overtake their competitors, generate revenue, and strengthen their hold on the market. Although there are various approaches for achieving these goals, proving patent infringement against a rival company is one of the most prevalent ones. Sagacious IP’s End-to-End Patent Licensing Support service is suitable for large and mid-size firms as well as individual IP owners. Our team performs the research to identify various deal-driving patents and target markets to drive deals for large corporations. Thereafter, the licensing negotiations are handled by one of the multiple front end licensing companies (or attorneys) that Sagacious IP collaborates with. Click here to know more about this service.

-ICT Licensing and the Editorial Team

Having Queries? Contact Us Now!