Patent Exploitation Kept In-House




It was decided to not partner with any third party but rather keep exploitation control in-house. In the end, the administrator decision was based more on political grounds than sound business. Subsequent history has now shown that to have been a most unwise choice.

EverEdge’s client was a leading manufacturer of memory semiconductors with a distinguished pedigree and ownership of a robust worldwide patent portfolio related to all aspects of semiconductor memory products. The client and ultimately the court administrator needed strategic options for how to best exploit the intangible patent assets.

Several years ago, the decision was made to liquidate the client company, causing more than 15,000 patents and over 4,000 patent applications to be made available for monetization or other use. The client had suffered major loss of experienced personnel was not experienced in monetizing patent assets and needed a partner to provide the legal, technical, business and financial resources to analyse and understand the portfolio and identify strategic options for commercial exploitation. EverEdge had an established relationship with the client and became part of the process.

We focused on identifying the opportunity associated with undertaking a maximize revenue strategy. We conducted extensive due diligence on the patent portfolio itself, owner’s materials, license agreements and other relevant documents to initially categorize the portfolio. After digesting a massive amount of material, measuring the quality of the assets, and understanding the time window of opportunity, we identified a three-tier approach as the suggested model. This involved assignment of each on commercial exploitation opportunity and marketability.

Specific exploitation plans were created for each tier aimed at maximizing the value, and included straight sale, licensing, enforcement, auction and strategic partnership. For a portfolio of this size and scope, our proposal was designed to generate both near-term and long-term income in accordance with the bankruptcy administrator’s objective to generate revenue.

With the client’s support, EverEdge determined that partnering with an investment firm would be the best approach. A comprehensive business plan was created to enable discussions of the opportunity with the investment banking community. One specific firm was identified as potential partner and a joint proposal to the bankruptcy administrator was prepared. The proposal was made and considered by the administrator as the best of all he had received.

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