Infringement Analysis for Out-Licensing

The Client

An European telecommunication industry leader wanted to explore the possibilities of out-licensing one of their patents which they believe to be one of the early forerunners in the specified product category. The patent has both early priority as well as strong claims to have a potent chance for infringement.

Why E-Merge tech?

Recognizing the strong domain expertise and the rich experience of E-Merge tech in the telecommunication technologies and the competitive intelligence capabilities in the telecommunication industry, the customer assigned the responsibility of conducting infringement search at the global level to identify potentially infringing product(s) with evidences of use and provide claim chart(s) for the identified product(s) at the global level.

The Solution

The infringement search was conducted with an objective of “no stone to be left unturned” to identify alleged products that read on claim(s) of the given patent. The search was conducted with four dimensional approaches.

The search revealed a list of alleged infringers who are potential targets for out licensing.

FTO for Decision on Competition, Innovation and Product Design

The Client

The client is a global leader in OEM auto parts and an innovation driven company. With a range of products using multiple technologies, the client continuously brings out enhancement in the product features.  The FTO searches are very important for them to take strategic decision on competition, innovation and product design.

Why E-Merge tech?

The client was looking for a service provider with strong capabilities in multiple technologies and a client centric attitude. Considering the superior talents in the automobile products and wide technology areas, non English patent analysis, unique client centric work culture, the client entered into a long term contract with E-Merge tech.

The Solution

FTO searches were conducted for this client on global scale to identify relevant patents that reads on the given feature. Every FTO search was focused on

  • Patent Analysis
  • Legal status Analysis

Mastery in understanding the country specific rules, classification codes, and the crafting skills in right search strategies of E-Merge tech yielded good search results for the client.

Patent – Product Mapping

The Client

One of the top corporate in the global electronics consumer industry desired to create a “map” of certain patents/applications and the products those patents and applications cover for the ‘Specified Technology’.

Reviewing the given patent portfolio in the specified technology, and identifying the product/products for which each patent family is directed Mapping and categorizing the patents/applications that directly or peripherally cover the given products.

Why E-Merge tech?

The proven methods, industry knowledge, technology expertise, market research capability, and competitive intelligence of E-Merge tech made it easy for the client to pick E-Merge tech for this contract.

The important aspects of the methodology deployed by E-Merge tech include deriving the list of products and product features for the specified product portfolio and arriving at the features to be mapped for relevant patents and categorization of patents/applications that do not fall under the given technology.

The Solution

Patent by patent analysis is done to map the patent with the claimed features of the product and further categorization based on the type of coverage viz., primary or peripheral coverage.

Evidence of Use Analysis

The Client

A global leader in the electronics industry wanted to explore the possibilities of out-licensing one of their patents. To identify the alleged infringers and to initiate the out licensing talk, the company wanted to conduct a very systematic and a comprehensive study at a global level.

Why E-Merge tech?

The client knows that there were infringements of their given patent. At the same time they wanted to gather strong evidence, as their claim should stand in the legal battle. Convinced with the pool of patent research experts and  the proven methodology used in the Evidence of use analysis, the client was happy to assign this project to us. evidence is the key and not just information. 

The Solution

The identified target player’s literature is compared against the search criteria of the patent and a final list of closer literature evidences is identified.

The validation is conducted through time line analysis by referring multiple sources to decide beyond doubt that the identified literatures are introduced after the priority date of the given patent.

Further, CLAIM CHARTING of the given patent Vs identified closer Literature Evidence is represented in PPT format.

White Space Analysis

The Client

A diversified products company, based in USA, with global presence had a need for conducting a white space analysis. As a corporate growth strategy, the company periodically assesses the possible gaps and opportunities in the different technology areas. The outcome of this study was aimed at taking important and strategy business decision to support their growth story.

Why E-Merge tech?

The study is part of the corporate strategy and so very important for the company. As a diversified product company, one of the criteria for selecting the service provider was that the service provider should have long years of experience in different technology areas. Further, the service provider should have expertise in legal, business and technology aspects related to the client’s business.

This client had approached E-Merge tech through reference from one of our existing clients. After doing quite an amount of due diligence and having understood that our capabilities will meet their expectations the client was happy to award the project to E-Merge tech.

The Solution

The client relied on our experience and wisdom to scope this project, design the process and decide deliverable to meet the project goals. The study focused on Claim-level Analysis on the identified Portfolio, Technical Features Mappings based on claims and their relevant languages, Cluster Spread for various technical fields.

Feature Combination Matrix on different technical clusters was done and possible gaps and opportunities were found.

The search provided number of matrices based on various combinations of technical features and the client was presented with report with technical suggestions and gaps/white spaces in the given technology is presented.

Technology Landscape

The Client

One of our clients wanted to diversify their business and was considering an allied business segment for the diversification strategy.

In order to take an informed decision, the client wanted to understand the emerging technology landscape surrounding this allied business segment. The client also wanted to understand the competitive landscape and the potential opportunities and threats the target business offers.

In addition, the client was also interested to know how much of the technology was protected and where was the whitespace?

The Solution

Gaps & Opportunities: Patents in a particular technology with potential for out licensing and the Technology features that are patent protected and Products present in the market for the specified technology.

Future technology Trends: Possible trends for the future for a particular technology based on the review of research activities and publications.

Market Potential: Patents that hold better market with respect to the technology and Product market potential w.r.t technology.

Competitive Landscape: Top & emerging players present in the market for particular technology and Players’ patent/product trends.

FTO Decisions: Products that can be marketed in particular technology in a given geography.

Standard Essential Patents (SEP) intelligence.

The Client

The client is a global leader in the ICT industry with more than 100 years of business history, whose patents contributed for creating standards in the ICT telecommunication technologies.  As part of their Intellectual Property Management strategy, the client needed to conduct an  Essentiality Analysis of SEP study on their competitor’s patent portfolio.

Why E-Merge tech?

The client was looking for solutions to the following questions.

1) Is the protected patent subject matter a must for the standard?

2) Are the features of the product in question read on the features of the said standard?

E-Merge tech has become a natural choice for the client as E-Merge tech is in the complementing services such as patent, technology, products and Market research, Competitive intelligence  and the expertise in the ICT technologies.

The Solution

The patent search in ETSI resulted in resulted in some elimination and finally a set of unique patents were identified. The standards mapping of essential patents/applications portfolio involves in tagging patents/applications with their respective standards.

The Technology Clustering on Essential patent portfolio was done with two stages of Bucketing namely Application based Study and Objective based Study.

The Litigation Status search was conducted both in open sources (USITC Website, E-FOIA) and in subscription databases (Questel Orbit IP Litigation, Total Patents).