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Large Company Capitalizes on Non-Core Patent

The Problem: This Fortune 500 telecommunications company was awarded a patent for a technology developed by their R&D department. However, the invention was outside the company’s core business and never deployed commercially. Executive management was hesitant to enforce patent rights as a non-practicing entity. However, management also realized the economic potential and felt a fiduciary responsibility to investors to maximize the value of their assets.

The Company: The Company had a large patent portfolio built through internal development and outside acquisition. Like most large companies, some patents in the portfolio were central to their commercially deployed products while others were issued for inventions that were considered non-core. They had revenue from licensing but didn’t have an organization focused on enforcing patent rights.

Patents have become big business. Across all industries, corporations are reaping rewards from patent portfolios. IBM, Qualcomm, AT&T, and others generate billions of dollars a year from licensing and royalties. Yet, patents remain an enigmatic and difficult pursuit. Political and perception issues constrain organizations and prevent them from thinking of intellectual property as a profit center. This failure to capitalize on patents is prevalent as companies are beset with concerns over enforcing intellectual property (IP) rights. As this Fortune 500 telecommunications company discovered, Turtle Bay offered a solution that mitigated the risks while also offering a very attractive financial opportunity.

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 generated immediate cash flow while also providing confidentiality and expertise. First, 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 share in the proceeds of the monetization efforts. Second, Turtle Bay agreed to shoulder the entire legal and operational cost burden. Finally, Turtle Bay pursued ownership rights to monetize the asset. Since Turtle Bay was the party enforcing rights, the perception and political concerns were eliminated. “Turtle Bay really solved the problem for us,” according to the company’s General Counsel, “without them, I’m not sure we would have been able to get any revenue from this patent.”

With the business arrangement in place, Turtle Bay then focused on its core goal, monetization of the IP asset. However, obtaining revenue from IP is a complex and nuanced pursuit. The approach to an infringing organization and claim positioning can have a significant impact on enforcement rights. In fact, a misstep can eliminate or dilute claims. 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. First, we utilized our extensive legal network to identify the attorneys best suited for the project. 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. Finally, we engaged with infringing companies to resolve the dispute.

The strategy implemented by Turtle Bay continues to deliver results. After identifying and verifying infringement, Turtle Bay contacted the infringing organizations and began the monetization phase. We developed and provided claim charts and analysis to document the infringement. Several organizations recognized the strength of claims and opted to negotiate a license which resulted in an immediate return in the low millions. Several other organizations are contesting the claims. “We are very pleased with the results we have been able to return for this client so far. In fact, we have started to review other patents in their portfolio to see if we can partner on additional opportunities. The potential return from these assets is just too large to ignore,” said Jeff Ronaldi, CEO of Turtle Bay. “We see similar opportunities with other clients and believe that we have the ideal combination of experience, capital, and resources to unlock the value in their patent portfolios.”
 
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