Background: A technology development firm engaged in innovation and monetization of IP was interested in acquiring a portfolio of 500+ telecom patents and applications from a Fortune 500 company. The firm engaged iRunway for an in-depth evaluation on the strength of the portfolio and actionable insights on possible avenues to monetize the patents.
Insight Delivered: iRunway put together a core team of consultants and technical experts to help the client in its monetization campaign. The patents in the portfolio broadly covered – core telecommunication equipments, access equipments and handsets and telecommunication services. From acquisition due diligence to putting together a package for licensing and litigation, the iRunway team supported the in-house counsel and its law firms across countries.
- Initial screening of portfolio: Our team prepared a spreadsheet containing the list of ‘STAR' patents, potential target companies and a cumulative score for each patent based on parameters such as infringement detectability, enforceability (technical relevance, breadth and scope of claims) and priority.
- Evidence of use & infringement analysis: For each of the high-ranking patent, the team prepared summary reports on the significance of technology, infringing products and monetary potential. For patents with positive evidence of use results, the team delivered detailed claim-charts mapping patent claim elements to the results of the target products.
- Standards mapping: The portfolio had significant number of patents declared essential to at least one telecommunication standard. iRunway team prepared claim charts verifying the mapping of the standards to these patents. In addition to this, our consultants also searched telecommunication standards databases and identified additional standards that could potentially map onto patents.
- Market research & damages estimate: Apart from the above technical analysis, iRunway team also helped the lawyers assess the economic feasibility of filing litigations in various geographies of interest. The team also delivered financial assessment reports containing likely accumulated damages base for possible litigation scenarios, derived from detailed financial modeling of target company’s annual statements, net present value, discount rates and realistic forecasts of future projections.
Outcome: The client successfully acquired the patent portfolio and setup up a global program for monetizing these patents.