Technology, Licensing + IP Transactions

Case Studies

Cisco Systems, Inc. – Flip Video Camera Design Patents

In 2009, Cisco Systems acquired the technology company that pioneered the original “Flip Video” cameras. Cisco turned to Patterson + Sheridan to protect the ornamental appearance of the point-and-shoot video cameras, which were tremendously successful due to their unique design. 

We implemented an aggressive design patent strategy to cover various novel aspects of the camera’s ornamental design. As shown in the images to the right, we obtained multiple design patents covering various combinations of the cameras’ ornamental aspects.

Cisco successfully used the “Flip Video” camera design patent portfolio to file and eventually settle a suit alleging infringement of its design patents. This is described in a 2010 Law360 article (whose link is below).

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M&A Due Diligence Saves Company Millions

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By identifying potentially problematic third-party patents in the early due diligence stages of an M&A transaction, Patterson + Sheridan helped lower the overall acquisition cost by tens of millions of dollars. 

Our client, an international technology company, was acquiring an overseas entity. While conducting due diligence, we identified patents held by the acquisition target’s competitors that would affect the acquisition target’s main product. This knowledge enabled the client to negotiate a significantly lower acquisition price—by tens of millions of dollars. Following the acquisition, we worked with non-US counsel and caused that patent to be revised so that it no longer affected the acquired business.

Virtual Patent Counsel for Disk-Drive Technology Company

At its peak, the disk drive industry had more than 50 companies, including major players such as IBM, Samsung, Hitachi, Toshiba and others. Today, however, only three firms remain.

We worked with the company from its initial start-up, serving as its virtual in-house patent counsel, developing its patent portfolio, and helping to broadly license its technology. As the industry faced brutal competition and the technology evolved, we worked closely with our client to ensure its patent strategy helped position it for success.

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.

Pushing Back to Patent Critical MEMS Technology

Even the most well-executed patent applications can be rejected based on the perspective of the examiner who processes them. In this case, our high-profile MEMS client received a rejection from the patent office for a semiconductor technology critical to its business operations and competitive advantage. 

Feeling strongly about the strength of our client’s position, former USPTO patent examiner Steve VerSteeg used his experience to successfully navigate the situation. Taking a collaborative approach, we held conference calls to further understand the examiner’s concerns. When that didn’t prove successful, we recommended an appeal, with which the examiner would have to defend a position before the United States Patent and Trademark Office’s Patent Trial and Appeal Board.

In lieu of appearing before the board, the examiner allowed one claim. Fully prepared to appeal, we pushed for more claims and finally came to a resolution with the examiner. Combining a collaborative and aggressive approach, we obtained a patent that covered all claims in a matter of months, instead of having to appeal, which could have taken years before a decision was reached. 

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.

​Successful Trial Work for Satisfied Clients

Patterson + Sheridan has established a strong track record of performing repeat trial work for satisfied clients. Working in close consultation with our clients, we use strategic motions to maximize opportunities for a favorable settlement. At the same time, we prepare a focused case for trial, if necessary. As a result, we've secured successes for clients as both plaintiffs and defendants – and developed long-lasting relationships with clients who use our services again and again.

One of the major players in the smartphone patent wars, for example, hired us to defend it in a patent infringement lawsuit. We have since defended the company in a series of such lawsuits filed across the country. On the plaintiff side, we filed a patent infringement lawsuit on behalf of a Texas company seeking to enforce its patents on mixed-signal devices against a competitor, obtaining a favorable settlement. The client subsequently retained us to file additional suits against other competitors. In each instance we obtained favorable settlements. We later resolved patent infringement claims asserted against the same client by a well-known patent holding company.

Filing Amicus Briefs with the U.S. Supreme Court

Lawyers from Patterson + Sheridan have filed amicus briefs on behalf of clients at the Federal Circuit and the United States Supreme Court. In Limelight Networks, Inc. v. Akamai Techs., Inc., for example, we filed an amicus brief on behalf of a broad spectrum of clients at the Federal Circuit and filed another amicus brief in support of a petition for certiorari at the United States Supreme Court.

Closely Partnering with our Client Leads to Multiple Patent Applications and Earlier Filing Dates

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One of our clients, a Fortune 500 equipment manufacturing company, regularly conducts engineering design review sessions that include Patterson + Sheridan attorneys. The client includes us in these sessions to utilize not only our expertise in patent law, but also to increase our understanding of the client’s portfolio as well as the client’s relevant competitors. During the sessions, we capture many concepts that may include patentable subject matter based on our knowledge of the existing art. Additionally, we ask probing questions of the engineers to identify key, distinguishing features that are of potential patentable interest. Based on the discussion from the sessions, we then present to the client multiple patentable concepts with a perspective on how these concepts fit into a larger patent strategy, e.g., alignment with the client’s products and services, as blocking patents, etc. In some cases, the concepts are broadly disclosed in previously filed applications. Therefore, we propose amended, and in some cases divisional, claims to the client. In other cases, we recommend filing new applications.

Our participation results in filing multiple patent applications covering the ideas generated in the brainstorming session. We are able to save money for the client and take advantage of earlier filing dates to block competitors using previously filed applications.

International Experience and Technical/Legal Expertise Allows us to Quickly Protect a Client from Infringement Accusations

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One of our large multi-national clients approached us when a competitor accused it of selling a device that infringed on the competitor’s Chinese patent. The device was made in Europe and being sold to a customer in China. Worried that it would lose the order, our client contacted us on a Thursday afternoon, US time, and asked us to determine whether the device infringed the Chinese patent. We did not know the Chinese patent number or the features of the accused device.

Working with the client’s executives and engineers in the European manufacturing facility, the client’s Chinese sales team, and local Chinese counsel, we were able to obtain detailed information concerning our client’s products, as well as an identification of the patent in issue. Because of our capabilities in Asian languages, in addition to our technical/legal expertise, we were able to quickly identify and explore the issues with our client. By Sunday afternoon, we were able to communicate our legal advice to the client, resulting in the customer maintaining the order with our client. 

Patterson + Sheridan Conducts an IP Mining Workshop for an Emerging Company, Which Led to The Company Identifying Key New Patentable Ideas

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One of our multi-national diversified clients had invested in an emerging alternative energy company (the “Company”). This client was concerned the Company’s effort developing an IP portfolio was of less priority than developing the core technology; the filing of key patents therefore was delayed. At our client’s request, we conducted a two and half day workshop to identify opportunities to enhance the Company’s patent filing process, identify new patentable ideas and trade secrets, and prioritize and file patent applications covering ideas identified in the meetings. Another key objective was to help the Company’s personnel develop a faster and more efficient patent filing process and to review and develop effective trade secret protection practices. Because of the technical expertise, industry experience, and global legal knowledge of our attorneys, we were able to help the Company identify several key IP assets. The refined patent filing strategy we helped develop should simplify and speed up the Company’s patent filing process, provide its inventors time to further develop their ideas, and enable the Company to carefully consider IP strategies for each idea and make patent filing decisions that align with its business practices and budgets.

​Strategic Approach Enables Client to Dramatically Increase Annual Patent Filings

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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. 

Bilingual Attorneys Help Overseas Clients Overcome Language Barrier, Increase Quality of Patent Applications

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In today’s global economy, patent applications often are filed in the United States after they have been filed abroad. With 14 bilingual attorneys and agents fluent in languages including Japanese, Korean, Chinese (Mandarin and Cantonese), Taiwanese, Spanish, Greek, German, Hindi, Farsi, and Bosnian, we are skilled in assisting our overseas clients in overcoming the language barrier.

It can be particularly difficult to translate applications from Asian languages, especially Japanese and Korean, into English. Sentence structure, words with multiple meanings and implied subjects can lead to poorly translated applications that do not meet the rigorous disclosure requirements under U.S. patent laws. Using our fluency in the Asian languages and English, our attorneys are able to both ensure the translation is technically accurate and will not become a barrier to the application granting as a U.S. patent.

Our bilingual attorneys excel at using their knowledge of technology and the law to improve the quality of U.S. applications translated from foreign languages. Recognizing that translators are neither lawyers nor well-versed in the subject matter of the patent applications, we work closely with them and provide them meaningful feedback, leading to cost and time savings to the client while improving the quality of the translations at the same time.

We also conduct invention-disclosure meetings in inventors’ native languages and prepare initial applications directly in English. This saves clients both time and money while improving the overall application quality. 

Technical Knowledge, Team Approach Key in Managing Complex Patent Portfolio Transactions

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In today’s deal-driven technology sector, a transaction’s value rests heavily in a target’s active patent portfolio. Often, the portfolio is the competitive edge the acquiring company is after in the first place. With so much at stake, companies rely on patent counsel with both legal and technical backgrounds to properly assess and manage the transfer of these crucial IP assets.

Longstanding client relationship equals in-depth technical knowledge

For more than eight years, Patterson + Sheridan has represented a world leader in mobile wireless technology with respect to its complex and active patent portfolio. Due to this longstanding relationship, our attorneys have a deep understanding of the underlying technology.

Thus, when the client decided to undergo a series of transactions that involved complex active patent portfolios, our main company contact knew there was no time to spare for educating patent counsel, and enlisted Patterson + Sheridan to manage the integration of the incoming portfolios.

Acquisition of multiple patent portfolios

Our integrated team acted quickly and seamlessly, working directly with the acquired company, its inventors, and domestic and international patent counsel to:

  • Assess portfolios, including both U.S. and international patents, drawing upon the firm’s experienced docketing and paralegal team to ensure the complex process went smoothly
  • Identify issues, including inventions not yet protected by patent applications. We quickly filed these applications to ensure crucial rights were protected
  • Develop solutions, in all assisting the client with a series of three transactions over two years

During the process, we assessed hundreds of patents, filed countless applications and protected the client’s significant investment. These transactions were key to the company’s success in a very competitive market, and Patterson + Sheridan served as a trusted ally throughout.