Management of Intellectual Property
- Imaging products company. Evaluated a portfolio of over 500 US patents with teams of technology and IP experts to determine the quality of the portfolio for external commercialization and the extent that the portfolio was on future product roadmaps. The project team comprised internal and external staff and used a customized version of ICMG’s inventory software tool that is now embedded into their ongoing IP management program.
- Financial services company. Developed an intellectual asset strategy and asset inventory prioritization methodology for the company and outlined the roles that IP should play for future value for the company.
- Complexity science services company. Evaluated over 60 business process technologies and the IPRs to determine their commercialization potential. Made recommendations for new patent applications and to modify current claims to address the evolving market space. Assessed the commercialization options (license, JV, spin-out, sale etc.) for each technology.
- European electronics company. Evaluated the portfolio of intellectual assts to assess its revenue potential using statistical methods. Subsequently mined the IA portfolio to identify licensable innovations. Performed market analyses and prioritized licensable innovations. Performed a knowledge transfer activity to teach the client staff to conduct future mining activities.
- Accounting standards organization. Developed an IP strategy for business method patents for accounting and finance measurement techniques used in the industry and for the standards organization.
- European telecommunications company. Designed a system for managing the firm's intellectual assets. The IAC system design included identification of the major elements of the system as well as a careful definition and description of each specific element and how its function complement the other elements and overall function of the system.
- Global pharmaceutical company. Developed a model to value the impact of upstream activities on the sales curve to better enable functions that are far removed from sales to better articulate their value to the firm and to better allocate resources to these activities. In addition created, an intellectual capital strategy to enable the firm to maximize the value of outside relationships to the firm.
- European industrial gases company. Conducted an assessment of the in-place IP management system and made recommendations for upgrade.
- Computer manufacturer. Benchmarked licensing programs across their competitors and companies with industry-leading licensing offices to understand how to organize after several acquisitions.
- Wireless telecommunications company. Developed the IP management systems and deployment structure for a holding company created to be the central point of IP management in the company.
- Chemical company. Conducted a technology strategy workshop and facilitated a client team to select between strategic alternatives for a multi-billion dollar line of business.
- Household consumer products company. Created a patent management strategy that ensures the company's patent portfolio is aligned with its corporate strategy and vision, development of a patent management system, and competitive assessment of a particular technology of the company. This project includes a knowledge transfer component to facilitate the company performing aspects of the project on its own in the future.
- Chemicals and life sciences company. Prepared a comprehensive strategic plan together with the company's diversified team related to a major new technology. Work included detailed review and assessment of the technology and the various value extraction alternatives available to maximize the value of the technology for the company.
- Semiconductor manufacturer. Defined the roles intellectual property could play in supporting the business strategy and refined those roles into value creation and value extraction. For the value extraction role, determined the set of activities that supported the business strategy.
- Computing components manufacturing company. Designed a system for managing their intellectual property. The system design included drafting an IP strategy that matched the company's intellectual property management with the corporate strategy. Developed the system's major elements and components, including the required decision processes. For each decision process, the system supplied a back-up understanding of the information required; the work processes necessary to provide the information and the databases needed for storing the information.
- Chemical company. Retained by company to review strategy, organization, work processes and systems for managing intellectual assets. Developed recommendations and implementation plan.
- Diesel engine company. Assessed the current state of the company's patent portfolio and patent management, identification of the desired state of the patent portfolio and patent management, and development of an action plan to achieve that desired state.
- Defense company. Performed analysis to estimate the revenue potential of the company's patent portfolio utilizing an integrated team of financial, technical and licensing professionals. The results were used to shape the company's next steps regarding the overall extraction of value from and management of its patent portfolio. We are now assisting the company in detailed portfolio mining and cash generation for the deemed high-value patents. This phase includes a knowledge transfer component to facilitate the company performing portfolio mining on its own in the future.
- Aerospace company. Performed a portfolio mining exercise to determine the probable licensing value of the company's patent portfolio. Future phases will examine the portfolios of recently acquired companies and assist in the merging of the patent portfolios.
- Agricultural, food and products company. Performed a pilot project for a key division to develop a strategic framework to identify, manage and leverage its intellectual assets. This company’s most significant type of intellectual property identified was trade secret. The inventory was used to design a more cost-effective transfer pricing strategy. This project included a knowledge transfer component to allow the company to perform aspects of the project on its own in the future.
Expert Testimony & Litigation Support
Misappropriated Trade Secrets
- SilverCybertech, Inc. vs. Harvey J. Anderson, and Article III, Inc. (Client). Plaintiff SilverCybertech charged that client both Harvey Anderson and Article III were unjustly enriched by the alleged theft. Deposition and testimony centered around plaintiff’s claim for unjust enrichment damages. Judgment of a jury for defendant.
Peak Systems (Client) v. Applied Materials, Inc. Legal issues concerned misappropriation of trade secrets involved in the design, construction and sales of rapid thermal annealing oven for the manufacture of silicon wafers. Economic issues concerned valuation and unjust enrichment. Analysis involved development of costs saved by infringing party, the sales benefit realized, as well as the sales benefit from convoyed product sales. Deposition and trial testimony given. Decision for Applied Materials on liability.
Litton Systems, Inc. v. Ssangyong Corporation (Client). Economic issues involved damages phase of trial. Economic evaluation of plaintiff's damages claim concerning theft of trade secrets. Detailed critique of underlying theory and calculation methods for determining damages claims. Evaluation of costs, methods, supporting documentation and calculations. Deposition and trial testimony given. Damages decision: initial plaintiff claim disallowed, downsized revised claim awarded (ex-post unjust enrichment).
- Netword LLC vs. Centraal Corporation (Client). Centraal launched its RealNames service, which facilitates web navigation by allowing users to assign aliases to their Internet addresses (URL’s), in May 1998. Netwrod had launched a similar product a year earlier. Shortly after Centraal’s launch, Netword was granted a patent and subsequently sued Centraal over patent infringement. Economic analyses included critique of Netword’s lost profits damages claim, and preparation of a report outlining reasonable royalties damages. Report produced and filed. Summary judgement on all counts, in favor of Centraal.
Wang Laboratories, Inc. v. Netscape Communications Corporation (Client). Netscape released its Navigator product in 1994. The design of the Navigator product focused on attributes deemed by Netscape to be important to its expected customers. Included in its product were several features that Wang Laboratories claimed infringed patents of Wang. Economic analyses included critique of Wang’s damages claim, preparation of a report outlining the Netscape view of damages. Report produced and deposition taken. Summary judgement on all counts, in favor of Netscape
Texas Instruments, Inc. (Client) v. Dell Computer Corporation. Legal issues involved damages for alleged patent infringement. Economic issues involved determination of a reasonable royalty. Analysis included collecting examples of licenses within the computer hardware industry, determining an industry standard set of royalty rates and licensing practices. Case settled prior to deposition.
- Celeritas v. Rockwell International (Client). Legal issues concerned breach of contract and misappropriation of trade secrets concerning software. Damages analysis involves lost profits and unjust enrichment. As part of unjust enrichment, the analysis involves defining standard industry practices and using these in developing the cost-to-create software applications. Trial judgment in favor of Celeritas, Rockwell held liable, damages trebled.
- Non-Stop Logistics (Client) v. Americold. Non-Stop Logistics developed a software package that reduced inventory costs. It filed suit against Ameritech, alleging breach of contract and damage to Non-Stop because the breach reduced its ability to compete in its chosen “entry” industry (thereby causing additional costs and time delays to be incurred). As the original claim stated that damages were to be measured by the reduction in Non-Stop’s stock price, the analysis involved demonstrating the financial relationship between the breach and the reduction in share price. Affidavit produced. Court found for Americold, issuing a declaratory judgment against Non-Stop on liability. The case is on appeal.
- Bentley Systems, Inc. (Client) v. Intergraph . Legal issues involved breach of a “best efforts” clause in a business between the parties. Economic issues involved the creation of a sound conceptual framework within which to define “best efforts” as well as a subsequent analysis of defendant Intergraph’s performance against that framework. In addition, the analysis included a lost profit analysis. Deposition not required. Testimony given at the arbitration hearing. Arbitrator found for Bentley Systems Inc., damages awarded.
- StarSight (Client) v. Scientific Atlanta. Legal issues involved breach of contract with a focus on the portion of the contract relating to the confidentiality and freedom to use technical information in competing products involving software. Economic issues concerned lost profits and unjust enrichment. Deposition not required. Trial testimony given. Decision for StarSight on both liability and damages (including punitive damages).
- Brookhurst, Inc. (Client) v. McDonald's Corporation, et al. Legal issues concerned breach of contract, specifically refusal to pay for development of a software system. Economic issues concerned valuation of a partially completed custom software system for managing the manufacturers and the distribution system of uniforms for McDonald's. Collateral issues involved analysis and critique of reports and issues related to the main economic valuation. Deposition provided. Case settled prior to trial in Brookhurst’s favor.
- Coopervision v. Biocontacts Liquidating Trust (Client). Legal issues involved whether licensee had made a "best efforts" attempt to commercialize a licensed technology. Expert opinion involved a qualitative analysis of defendant's R&D activities and a comparison of them against a set of standards developed for this testimony. Deposition given, case settled during trial.
- State of Maryland v. Gore Enterprise Holdings, Inc. (Client). Plaintiff State of Maryland alleged that defendant Gore Enterprise Holdings, Inc. (GEH) had not paid the appropriate taxes to Maryland for income associated with Gore’s Maryland-based manufacturing, protected by patents of parent company, W.L. Gore & Associates (WLGA), residing in its patent holding company GEH. Issues in the case involved whether GEH was created and operated as a tax sham. Also at issue was the business rationale for creating GEH and whether it had continuing economic substance. Judgment pending.
- IXYS, Inc. (Client) v. Harris Semiconductor. The economic issues concerned development of opinions identifying the relevant product and technology market encompassing the technology in dispute and, to assess the extent to which defendant, Harris Semiconductor, possessed market power in the relevant market for the patents or patented products at issue. Deposition not required. Trial testimony given. Decision for Harris Semiconductor on liability.
Valuation of Intellectual Property
- Aerospace Company. Appraised the fair market value of portfolios of IP (patents and know-how) for purposes of donation to nonprofit organizations by major US corporations. Work on over 15 different engagements for donation packages covering a diverse range of technologies.
- Telecommunications Company. Appraised the fair market value of a portfolio of patents, trademarks, know-how and other intangibles for purposes of transfer among foreign affiliates.
- Chemical Company. Established an arm’s length royalty range for inter-company licensing of IP, between a US chemical company and its manufacturing affiliates in Europe.
- Aerospace Company. Calculated the value of a software division for purposes of acquisition by another company. The analysis included a comparison between two potential buyers, based on the value that the acquisition would bring to each of them.
- Semiconductor Company. Appraised the fair value of a group of intangible assets included in an acquisition of a company engaged in semiconductor processing. The valuation was done in support of purchase price allocation by the buyer, in accordance with SFAS # 141.
- Semiconductor Company. Conducted annual impairment analyses per SFAS # 142, to determine the current market value and potential Goodwill impairment associated with an IP portfolio purchased through an acquisition.
- Aerospace Company. Calculated the fair market value of an in-kind contribution of IP rights, in return for equity in a new company spun off by a major US corporation.
- Telecommunications Company. Calculated the royalty potential of a standard-essential patent in the area of third generation (3G) wireless technology.
- Automotive Company. Calculated the value of a portfolio of patents in the area of fuel cell technology under alternative commercialization plans.
- Automotive Company. Conducted an assessment of the market for advanced battery technology for electric hybrid vehicles (HEV) for a large Japanese automotive company.
- Telecommunications Company. Performed a third-party independent valuation of a portfolio of assets to support US tax strategies and to meet SEC reporting requirements. Performed an update one year later.
- Aerospace Company. Assessed the strategic and financial options for spinning out a software division and valued the alternatives. The valuation was conducted to support the company’s decision process of selecting between two potential acquirers for the division. Originally valued internally for $2 million, ICMG valued the division at $20 million, and it was sold for $22 million.
- European consumer electronics Company. Valued a consumer electronics brand and products for potential acquisition.
- Aerospace company. Valued a division to be spun-out by the venture arm of the company, with products, brands, and employees. The valuation was performed to support the equity value of the IP-contribution made by the company, and was also intended to support the funding secured from the venture arm of the company.
- Chemical company. Performed a third-party valuation of the intellectual property transfer pricing agreements between a US company and their foreign affiliates. The valuation was part of a periodic review of the agreements to determine whether the agreements required adjustments based on current market conditions.
- Auto manufacturer. Performed an independent valuation of intellectual property that was donated to a university for tax savings.
- Aerospace company. Performed a valuation of helicopter assets for an acquirer that also acquired the duty to compensate the helicopter inventors for past and future invention royalty streams.
- Semiconductor equipment manufacturer. Performed an allocation of goodwill and intangibles in compliance with FAS 141/142 in an acquisition of a company and its intangibles.
- Telecommunications Company. Appraised the fair market value of a patent portfolio of over 100 patents. The valuation was done to support the company’s tax planning and SEC filing. The valuation involved clustering the patents into technology buckets, and assigning a value to each bucket.