Gero G. McClellan, Partner

Case Studies

Evaluating Portfolios, Assessing Risks

Patterson + Sheridan has extensive experience in helping clients identify and evaluate intellectual property portfolios for possible acquisition. Recognizing the need to move swiftly in the competitive IP marketplace, we quickly assemble an IP valuation team – tailored to reflect each portfolio’s technology focus – that combs through dozens or even hundreds of patents. We then conduct a detailed qualitative assessment to determine whether the portfolio aligns closely with a client’s products and strategic business objectives.

The recent emergence of non-practicing entities, or NPEs, has added a new element to our portfolio risk assessment. Because NPEs neither invent nor produce products of their own, their purchase of a patent portfolio may place technology companies at a competitive disadvantage, leaving them vulnerable to costly infringement lawsuits. Drawing on our years of experience, we assess and advise our clients on both the potential risks of specific IP assets being acquired by NPEs and the strategic benefits of client acquisition.

​Strategic Approach Enables Client to Dramatically Increase Annual Patent Filings

red dart hitting bullseye

Our clients’ patent filing expectations change each year. Sometimes, they can change dramatically in response to product releases, mergers, acquisitions and the like. Recently, a client drastically increased its annual filing target in two key technological areas and turned to us to achieve its goal.

Our plan included leveraging two of the firm’s offices located close to the client’s site and identifying a select team of six attorneys well-versed in the client’s technology and procedures.

Our hand-picked team of attorneys converged on the client’s site for multi-day visits with inventors to fully develop filing strategies based on existing invention disclosure documents. In addition, our attorneys conducted extensive mining sessions with technology group leaders to identify additional patentable subject matter in key technological areas. By using this two-prong approach, we were able to rapidly expand the client’s patent portfolio in the key areas to accomplish its strategic goals. 

Using Subject-Matter Eligibility as a Sword and Shield When Protecting Clients’ IP

Patent law is constantly evolving, due in large part to subject-matter eligibility. The latest Supreme Court decision on this subject, known as the “Alice” case (Alice Corp v CLS Bank), held that subject-matter eligibility for claims directed to abstract ideas is based on a two-part test:

  • First: determine if the claims are directed to an abstract idea or general principle.
  • Second: if so, evaluate all claim elements individually, and in combination, to determine if the claims include an inventive concept sufficient to ensure that the patent in practice amounts to “significantly more” than a patent upon the abstract idea itself.

As this area of patent law remains fluid, patent examiners are actively (and inconsistently) using subject-matter eligibility to examine applications. That’s where our vast experience on both sides of the IP process — preparation and prosecution and litigation — becomes a competitive advantage for our clients in industries ranging from computers, the internet, biotechnology, and oil and gas.

Our team has a deep understanding of the level of detail required to ensure a claim is valid when analyzed under the two-part subject-matter eligibility test — even if what we receive from the clients is a high-level description of the invention. We collaborate and dig deep to deliver a more holistic view of our clients’ inventions on the front end, and have developed an arsenal of strategies when drafting applications, including arguments and amendments should a rejection arise.

We’ve helped many of our clients address this issue for years, and their continued business is a testament to our track record in drafting patent applications that can withstand stringent and ever-changing subject-matter eligibility requirements.

Shutting down a patent troll before a costly trial

Building on our experience in drafting solid applications, we also leverage subject-matter eligibility knowledge to defend clients from frivolous infringement claims.

For example, our team represented one of the oil industry’s largest players as lead defense counsel in a multi-party infringement suit brought by a patent troll. Working alongside 12 other firms to represent more than 20 defendants, our deep understanding of subject-matter eligibility was brought to bear against the plaintiff’s broad claim related to “controlling a device over a network.”

Arguing the broadness of the claim and demonstrating that many everyday activities would infringe the plaintiff’s patent — from printing to a network printer to uploading photos to social media sites — our team successfully leveraged the plaintiff to voluntarily dismiss the case at the pleading stage, saving our client and the other defendants from a costly trial.

3 Ways Patterson + Sheridan Helps a Fortune 50 Tech Company Develop the Highest Quality Patents

When clients turn to Patterson + Sheridan, our attorneys go “all in” to deliver the highest quality strategic counseling and most thorough patent applications. Sometimes that means flying across the country to brainstorm with inventors or dedicating time to stay on the cutting-edge of our clients’ industries.

One Fortune 50 technology company relies on our firm to grow and protect their intellectual property, and in today’s fast-paced market, they can’t miss a beat when it comes to their inventions. Here are three ways we help them stay ahead.

1. Conducting “mining sessions” to extract and develop patentable ideas

Several of our attorneys recently traveled to meet with inventors and identify patentable ideas. By asking the right questions and brainstorming in a one-on-one environment, our team developed robust patent disclosure documents in conjunction with the inventors.

The result: 25 submissions to the company’s patent review board in a 48-hour period. These mining sessions expedite the process of turning half-baked ideas into potential patent applications, providing tremendous value for the client in more ways than one.

2. Assisting with patent pitching events to create a more efficient filing process

Typically, inventors draft disclosure documents themselves and submit them to their company’s patent review board, a process that can take months, if not longer.

To generate ideas more efficiently, our client periodically hosts a two-day workshop where dozens of inventors from across the company pitch their ideas. Our attorneys are invited to sit on the panel that hears proposals in order to provide feedback and identify the strongest candidates.

Once those winners are approved, we get to preparing patent applications. These events streamline an otherwise tedious process and afford our team the unique experience of working closely with in-house experts and generating a high volume of patents quickly.

3. Attending educational workshops to stay ahead of the latest industry developments

Our North Carolina office recently dedicated an entire day to attend a technical workshop, learning about machine learning and artificial intelligence with an expert PhD engineer. The goal? Gain a greater understanding of the latest advancements in this technology so our attorneys can better add value when handling related cases.

At Patterson + Sheridan, we pride ourselves on being forward-looking. Staying current with the technical aspects of our clients’ industries is just as important as continually honing our legal skills. When we understand the technology better, we can do better work.