Case Study: Patent Litigation Support, Evidence-of-Use Charts
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Patent litigation is a stressful and extensive process. Successful patent assertion planning requires finding the right partners who can help with various aspects of the process. This includes not only attorneys and investors, but also IP strategists and skilled technical experts who can provide detailed and reliable information about the target technology and industry from onset, particularly if litigation funding is required/sought.
As a foreword, because the current matter is in pending litigation, we can only discuss it in generalized terms.
From a referral by one of our existing clients, the CEO of a small high-tech firm approached us expressing a desire to monetize their portfolio of technology patents. The firm had previously sought the help of other individuals and firms who were unable to successfully assist in monetizing the patents.
We proposed to start by conducting an initial technical evaluation of the patents to determine if there was potential value to be extracted; and if so, to then perform thorough due diligence in a multi-phased approach. GHB Intellect typically uses a multi-phased approach in its projects in order to minimize costs to its clients. This also allows the clients to remain engaged and in control as the project progresses.
We assigned the evaluation to a technical expert who had 25+ years of hands-on research and development experience in the relevant field and with numerous patents and publications to his name. Our technology expert was paired with one of our IP specialists, who previously served as an intellectual property attorney in a major technology-centric law firm. The two of them formed the core of the team for this project. This team reported to the client’s counsel.
As part of this multi-phased approach, our team first conducted a high-level patent review and determined if there were any technologies/products/services that potentially practiced any of the patented claims. Based on these results, the team (along with the client) decided to further evaluate the identified technologies/products/services for potential infringements and converged on a list of potential Evidence-of-Use (“EoU”) charts (i.e., claim charts) that may be attempted. The different EoU charting attempts were prioritized based on our technical expert’s assessment of their potential for successful outcome.
Starting with the highest priority EoU target, we then searched for and evaluated the relative strength of the available documentary evidence. Once we were convinced that we had the references required for a successful EoU, we set out to generate the EoU chart against the target product. The team then repeated the process for subsequent EoU charts, keeping the client (and its counsel) abreast of the progress and receiving their approval for each step of the way. We ultimately created ten total EoU charts mapping the patents’ claims to various targets.
Once a set of EoU charts were developed, together with the client, we strategized that we should conduct a first-order financial valuation (damages analysis) to determine the extent to which the infringers may owe the client.
Armed with the proper due diligence material (technical evaluations, EoU charts, and a financial valuation) and supported by our team of experts, the client was able to successfully invite various litigation law firms and litigation finance firms to consider a partnership to embark on various patent assertion campaigns. Numerous law firms and litigation finance firms expressed interest in the partnership. Because of the thorough preparation and organization of our due diligence material, the law firms were able to perform their own due diligence rather quickly. When requested, our experts made themselves available to address any concerns/questions that were raised. GHB Intellect continued to provide technical support throughout the vetting process, including conducting a thorough file history review of the patents and delivering a detailed analysis of how the technology is distinguished from the art.
The client received multiple full-contingency offers from several highly-respected patent ligation law firms. Once a law firm was selected, the project was successfully funded by a reputable litigation finance firm.
Our client was very pleased with the results and admitted that he should have approached GHB Intellect sooner to lay the proper groundwork for monetization, in this case, litigation.
Whether a client is seeking to develop, sell, license, or assert a patent portfolio, GHB Intellect has the right resources to enable business objectives to be met. Our experts comprise active industry leaders who are up-to-date and proficient in the state-of-the-art technologies and practices in order to provide the most useful and actionable consultations to firms and individuals. Our work is highly respected by our clients and their associates for being accurate and thorough. Please contact us to learn more about our IP monetization capabilities, including litigation support.