Virtual Patent Counsel for Small Motor Leader
Long before fluid dynamic bearings became the popular motor for hard drives, Patterson + Sheridan began working with a client with aims to enter the small motor technology industry. We helped the company negotiate a patent license agreement with an established industry player, conducted due diligence on other industry competitors, advised on design modifications to avoid patent infringement, and prepared and prosecuted numerous patents for the company, filing nearly all the basic patents in this important field. The once-fledgling company is now the pioneer in fluid dynamic bearings for small motors.
Strategic Patent Reviews Help an Oilfield Products Company Cut Costs and Streamline Portfolio
It’s not uncommon for a company to have a sizeable patent portfolio but not have an in-house intellectual property attorney. This was the case for one international oilfield products company that serves various sectors of the oil and natural gas industry. We helped the company cut costs and streamline its portfolio through strategic organization of its various patents. Here’s how we did it.
Managing a patchwork portfolio amid rapid growth and acquisitions
This particular company had grown quickly by acquiring a number of smaller tool companies — and its patent portfolio had grown with it. Many issues had to be addressed on a case-by-case basis as the company inherited numerous domestic and international patents that were often managed in different ways by the acquired company. Among some of the issues: critically analyzing how these new patents fit into their portfolio overall, or if older patents were still relevant as technology and the industry evolved.
For a fast-growing company, having a clear-cut strategy and structure for reviewing and maintaining its portfolio is paramount. A rapidly growing portfolio can become costly very quickly, especially when dealing with international patents.
Assess and organize: Creating a more efficient, streamlined patent portfolio
Our team helped the oilfield products company audit and restructure its portfolio by organizing its patents according to the company’s expanding and evolving product lines. We then partnered with their team to assign decision makers for each corresponding business group and establish quarterly patent committee review meetings.
The initial meeting of each group focused on educating the group about its breadth of patents and discussing next steps for each, such as:
- Should we maintain this patent?
- Do we need to pursue additional coverage?
- Should we abandon this patent because it’s no longer relevant?
- Are you aware of any third parties infringing on this patent?
Future meetings included examining any newly developed technologies or newly acquired patents to determine how those fit into the company’s portfolio.
Stronger IP protection and strategy
The biggest tangible result for our client was establishing a clear IP strategy, which resulted in a targeted, robust portfolio managed within an established budget that led to significant cost savings. Streamlining its portfolio also allowed the company to better identify potential infringements by third parties. Thanks to this new process, the company’s technologies and the innovative ideas of its engineers are now more protected than ever.
Successfully defending a patent against two IPRs
Successfully defending a patent against two IPRs
An inter partes review (IPR) can often be a death sentence for a patent. In fact, the majority of all filed IPRs ultimately get instituted. So when a competitor filed two IPRs against our client — an industrial filtration company — challenging an existing patent our firm had obtained, we had our work cut out for us.
While the challenger’s expert made an argument that may have seemed compelling on its surface, the Patterson + Sheridan team was able to see through the facade because they understood the technical nuances of how the product was designed and is used.
Since our attorneys had unique insight into the technology, they were able to work with the patent holder’s experts to diminish the argument and soundly refute the technical points made by the challenger’s expert. Ultimately, the IPRs were not instituted — a relative rarity in today’s IP landscape.
At Patterson + Sheridan, we’re not just lawyers. Our attorneys have scientific backgrounds, years of industry experience and extensive knowledge in specific technical areas. When it comes to complex subject matter, that’s what sets our firm apart: We possess a deep understanding of both the law and technology, which allows us to see below the surface and comprehensively approach each matter.
This recent success is just one example of how we synergistically leverage our convergence of legal and technical know-how to benefit our clients.
Associated attorneys: Keith Taboada, Brian Taboada
Associated practices: Industrial Products