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Emerging Company Uncovers Patent Revenue

The Problem: This small technology company was awarded a patent for technology they developed. The patent was important to the company’s success in the market. However, several large corporations also entered the market space and released competitive offerings that infringed upon the patent. Turtle Bay’s client believed it had a good infringement claim but they lacked the capital, resources, and experience to enforce their intellectual property (IP) rights.

The Company: The Company was typical of many small technology companies. As an entrepreneurial organization, they invented technology and created a market for it. The company had grown to 75 employees, mostly in engineering, sales, and marketing. The company was focused on growth and all resources were deployed toward that goal.

The patent system was created to encourage innovation and protect intellectual property. Yet, as new opportunities are created by innovators, large, incumbent organizations use their market power to dominate the space and push out the innovator. These large companies have the resources to overtake the opportunity and, often times, the smaller innovator doesn’t have the capital to fend off the attack. Even with a strong intellectual property claim assertion of IP rights can cost millions in legal expenses, capital that may not be available or that should be focused on growing the company. Turtle Bay provided this client with a solution that would allow them to generate new revenue and enforce IP rights but still remain focused on core business operations.

Turtle Bay Technologies provides strategic capital, asset management services, and guidance for intellectual property owners. We partner with companies, universities, and inventors to monetize their IP while also maximizing protection of the asset. Turtle Bay is focused solely on IP monetization so we have the resources and insight necessary to execute a successful strategy. For this company, Turtle Bay was the ideal solution.

Turtle Bay’s solution for this client allowed them to offload the legal and operational burden of enforcing the patent while maintaining the upside potential. Turtle Bay acquired the patent by structuring a partnership that included an outright purchase of the intellectual property. Yet, the client still preserved the right to use the technology and also share in the proceeds of the monetization efforts. Turtle Bay also agreed to shoulder the entire legal cost burden. Finally, Turtle Bay agreed to pursue its patent rights to monetize the asset. Since Turtle Bay was the party enforcing rights, the Company didn’t have to refocus internal resources or add subject matter expertise on patent enforcement.

The arrangement provided the Company with new capital for use in operations while still allowing them to gain from a positive outcome. “Turtle Bay really provided us with a win-win scenario,” said the CEO. “We got a substantial cash i nfusion upfront which is important to us since it could be used to grow our market presence. Plus, we still get the benefits from our intellectual property. We have a perpetual license for the technology, our competitive strategy is still in play, and we also have experts at Turtle Bay pursuing ownership enforcement. For us, there was no downside.”

Turtle Bay’s core goal was monetization of the IP asset. Turtle Bay understands the rigors of IP monetization and uses its experience to execute the most profitable strategy. Based on this philosophy, Turtle Bay immediately initiated the process. We created a team best suited for the project from our extensive legal network. Next, in conjunction with the client, we identified potential infringers, secured technical experts to affirm infringement, and then built a strategy aimed at monetizing the assets. Then, we engaged with infringing companies to resolve the dispute.

Turtle Bay’s efforts at monetization quickly led to additional revenue for the client. Of the seven companies identified as infringing, three quickly agreed to take a license. Turtle Bay provided them with analysis of the infringement developed by respected technical experts along with claim charts documenting the infringement. On the strength of the documentation, license agreements were the most attractive option. “We realized new revenue from the licenses in a very short time period. It earned us significant additional cash flow with little incremental cost”, said the Company CEO. The remaining four companies have opted to contest infringement. “We expect to be able to provide up to $5,000,000 in additional revenue for this client”, said Jeff Ronaldi, CEO of Turtle Bay. “We think we have a solution that offers similar organizations a very attractive proposition with lots of potential for both our clients and for Turtle Bay.”
 
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