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Welcome to Teklicon - pre-qualifed EXPERT WITNESSES for TECHNOLOGY
Technical expert witnesses available, continue and discover our continually updated site
or call us now toll free at 1-800-926-8972.
to help you explore how we can help with your current needs for expert witnesses for technology.
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| Services - Patent Portfolio Analysis |
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 Background |
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Recent patent infringement awards have been staggering:
- $125 million for a cookie recipe "Proctor & Gamble v. Nabisco"
- $205 million for the design of a rock drive bit "Smith Industries v. Hughes Tool"
- $873 million for the rights to an instant camera "Polaroid v. Kodak"
- $56 million for an antibiotic "Pfizer v. International Rectifier"
- $44 million for a blood oxygenator "Pfizer v. American Hospital Supply"
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Other decisions of note include:
- "Alpex Computer Corporation was awarded $208 million in Alpex Computer Corporation v. Nintendo America, Inc. for infringement of Alpex video game graphics patents," Los Angeles Times, August 2, 1994
- "Texas Instruments formed licensing agreements with 26 semiconductor companies since 1989 and reports it has more than tripled its royalties. The company's 1993 royalties on its patents reached $521 million," Electronic News, March 14, 1994
- "In a February 1994 ruling, Microsoft Corporation ordered to pay Stac Electronics $120 million in patent infringement lawsuit, Stac electronics v. Microsoft, for disk compression software," Info Canada, July 1994
- "The cost of IBM's patent license agreement royalty payments for disk drive patents adds $100 to $150 to the price of a computer," PC Week, August 16, 1993
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| Since the formation of the Court of Appeals for the Federal Circuit, trends have emerged that clearly favor the patent owner. The CAFC has concurred in nearly 90% of the cases in which the lower court found a patent to be valid or infringed. The enforcement rights extended to patent holders has been further strengthened by a 1995 CAFC ruling that juries, rather than judges, should decide whether virtual infringement had occurred, even if actual copying had not. Considering that approximately 90% of the CAFC appeal decisions already favored the inventor, this new interpretation pertaining to the doctrine of equivalents will likely encourage even more patent infringement complaints. |
| At the beginning of the 1990s decade, patent license royalties in the range of 5% were not abnormal, and patent licenses for less than 1% had become scarce. During the past five years more patent lawsuits with increasingly higher stakes have been filed. For large corporations the results have contributed hundreds of millions of dollars to bottom lines. Start-up companies trying to enter markets that utilize the technology of established companies are at risk. Patent holders like IBM, AT, Motorola and Texas Instruments have become increasingly aggressive in their pursuit of patent license agreement royalties. In semiconductor technology, for example, demands for 2% of a corporation's annual revenues are not uncommon. And, one-time license fees for consumer products can exceed these amounts by wide margins. For example, a non-recurring license fee for the Hyatt computer patents through patent licensee N.V. Phillips will cost each computer manufacturer in the neighborhood of $40 million. It is generally understood by intellectual property litigators that litigation costs can easily run at rates in excess of $100,000 per month. |
| Patent Portfolio Deployment Process |
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Patent portfolio deployment is an immensely valuable technique both for optimizing the revenue of intellectual property and for building the basis for an effective defense against the infringement claims of others.
Teklicon's approach to deployment is a phased process which analyzes, identifies, characterizes and positions components of the client's patent portfolio to optimize the effectiveness of the portfolio in accomplishing the client's offensive or defensive objectives with respect to a particular adversary. The first phase of patent portfolio analysis consists of the following tasks: |
| Technology |
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| Teklicon's consultants offer Expertise across the spectrum of comuter systems and software, electronics, semiconductor, telecommunications and related technologies. Patents are sorted by technical area to a degree necessary to match the logical and functional disciplines of individual consultants. For example, a semiconductor company could have patent sub-categories that include device physics, wafer processing, integrated circuit packaging, circuit and device or process test, design aids, circuit design, etc. |
| Team Assignment |
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| The technologies expressed in each patent within the patent portfolio are segmented into the technical classifications outlined above and assigned to a consultant with matching Expertise and engineering skill. Every attempt is made to narrow the relevant technical Expertise to precisely match the technology embodied in an individual patent. This is not a job for generalists. |
| Infringement Probability |
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Each patent is assessed and tentatively rated with respect to its suitability for assertion against products of the opposing party. The rationale for each patent selected and the claims argument is articulated in a written summary. The object of these exercises is to assign to each inventor's patent a value, in terms of degree of confidence of the likelihood that the target company's products infringe that patent according to the following criteria:
Super-high infringement category includes those patents whose claims appear clearly and unambiguously to apply directly to one or more products of the target company. Patent claims in this category force the target company to capitulate to the inventor's patent license negotiation demands, or defend itself by redesigning the product, or attempt to invalidate the patent through prior art research |
| Infringement Probability |
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Each patent is assessed and tentatively rated with respect to its suitability for assertion against products of the opposing party. The rationale for each patent selected and the claims argument is articulated in a written summary. The object of these exercises is to assign to each inventor's patent a value, in terms of degree of confidence of the likelihood that the target company's products infringe that patent according to the following criteria:
- Super-high infringement category includes those patents whose claims appear clearly and unambiguously to apply directly to one or more products of the target company. Patent claims in this category force the target company to capitulate to the inventor's patent license negotiation demands, or defend itself by redesigning the product, or attempt to invalidate the patent through prior art research
- High infringement value patents are those where paper-level and applications analysis indicate some aspect of the invention's claims can be asserted against the target company's product. Elevation of a high infringement value patent to the super-high infringement category may entail procurement of schematics, technical manuals, or purchase of product or reverse engineering analysis.
- Medium infringement value patents are those that may have negligible probability of infringement today, but a high probability of infringement or value to the target company in the future. Patents will fall into this category primarily because of the consultant's experience and intuition with regard to the target company's evolving use of technology in some class of products. It would probably not make good business sense to pursue patents whose claims fall into the category unless there is a very large market value associated with the targeted products.
- Zero infringement value patents are those whose claims do not read on any of the targeted company's products or future products, or whose claims read on products with little market value.
- Unknown infringement/high value patents are those with claims that may read on probable future products of the target company which are estimated to have a high market value.
- Unknown infringement/unknown or medium to low value patents are those where no claim product match can be determined.
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| Infringement Analysis Process |
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| While the engineers who make the initial portfolio review above may know which product or type of product may incorporate the claims of a patent, it is typically the purview of a product marketing expert to complete the next steps. This process includes: |
| The Infringement Survey |
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- Becoming technically conversant with the claims of the patent, typically in collaboration with the client's engineering personnel.
- Examining target company literature to identify the likelihood of claims infringement.
- Analyzing target company technical publications and actual product samples.
- Creating claims charts and written infringement arguments.
- Developing patent analyses including the technology subject-matter expert's interpretation of the patent's claims and structure of the invention and how the patent's claim should be asserted, vis-a-vis the target company's products.
- Company profiles are analyzed to itendify present negotiation opportunities, especially in the context of the client's marketing and development strategy. The company's strengths are assessed with regard to product technology, component technology, design tools and manufacturing technology and quality and reliability. The target's weaknesses are also appraised relative to competition, and distribution channels.
- Product profiles provide data regarding a target product's specifications, market potential and trends, i.e., an increase or decrease in market share, and other key business indicators.
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To explore how we can help with your current needs for expert witness for technology call: 1-800-926-8972
E-mail Teklicon with questions regarding this site.
3031 Tisch Way, Suite 1010 San Jose, CA 95128-2533
Toll free: 1-800-926-8972
Fax: 1-408-261-8800
Phn: 408-261-0320
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