Helping Pioneering Start-Ups Develop IP Portfolios Worth Millions
Patterson + Sheridan is well-versed in helping start-up companies develop – and maximize the value of – their patent portfolios. During the infancy of online social networks, we helped one of the industry’s early pioneers build its patent portfolio from the ground up. Because our client had no in-house attorneys, we served as their “virtual patent counsel,” playing a key role in their invention mining and patent portfolio development processes. Persevering through the company’s business highs and lows, we drew on our extensive patent prosecution expertise to help them secure pioneering patents and identify new inventions that could be valuable additions to their patent portfolio. Within five years, the portfolio grew to include six issued patents – including one of the pioneering patents in the field of online social networks – and an even greater number of pending patent applications. The result: The entire portfolio was sold to a major player in the online social network space for several million dollars.
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.
How we helped a tech company protect a new revenue stream with a design patent
A Fortune 100 technology company was preparing to release a new wireless access point (WAP), and wanted to ensure they had filed patent applications that covered the various improvements over the state-of-the-art product before its launch deadline. Our lawyers worked with the development engineers to mine more than a dozen applications, but the engineers also wanted to patent an expansion interface that would allow users to customize the WAP by plugging in additional expansion modules that could include additional antennas, memory or power supplies.
The company wanted to prevent competitors from selling their own expansion modules for our client’s new WAP, but using expansion modules for customizing a computing system is a widespread practice — securing a utility patent on this general idea would be difficult. How could we legally protect this revenue stream?
Our creative solution was to seek a design patent for the expansion interface. While the interface itself is functional, its design is ornamental. If a competitor sold an expansion module to plug into the WAP’s unique interface, they would infringe the design patent.
The client liked our approach, and we successfully filed the utility and design applications for the new product in time for its launch. Not only was the company able to protect its intellectual property, but our strategy gave them the exclusive ability to sell expansion modules for the new WAP.