Patents

Harness Dickey Worked with Global Market Leader to Protect and Monetize their Patent Portfolio

Challenge

Our client, a major leading global supplier of automobile components, had invented many cutting edge designs. These designs were repeatedly selected for production by potential customers, but were awarded to competitors who “low balled” the price or otherwise had prior non-U.S. relationships. Believing their patents had been infringed and with many millions of dollars of revenue at stake, they turned to Harness Dickey to approach the problem from a big picture perspective.

Solution

Our team of lawyers worked closely with the client’s in-house legal department and business executives to specifically address their patent infringement problem from a variety of angles. We recognize that most patent infringement scenarios reflect underlying business issues. Thus, we worked with our client to:

  1. Identify the client’s new inventions that were most likely to be copied by competitors.
  2. Prepare, file and prosecute very high quality utility patent applications around the world, including the filing of continuation and design patent applications where appropriate. Many of these continuations were left pending during negotiations and enforcement actions to give us more flexibility in modifying their claims after the competitive landscape had better developed.
  3. Attend various tradeshows to identify infringing parties and products.
  4. Negotiate specifically tailored licenses with infringing competitors, but in a manner that did not require a cessation of current production sales and with commercially reasonable royalty payments.
  5. Aggressively proceed with litigation if the competitor did not enter into an acceptable licensing arrangement.

After we reviewed and pinpointed the legal strengths and weaknesses of the situation at hand, we then worked with the client to prepare an estimated best case, worst case and expected case analysis, as well as designed a revised ROI strategy. A lawsuit was subsequently filed against any target licensee when negotiations ceased to progress. After some negotiation, a favorable Settlement Agreement was achieved, and a public Consent Judgment and License were entered into between our client and the initial target licensee before any discovery proceeded too far in the pending lawsuit. We pursued this same strategy with target licensees involved in multiple patents over years to follow.

As a result of our proactive and multi-dimensional approach to patent management and enforcement, our client developed a fast reputation in the industry as an active patentee, aggressive enforcer and reasonable licensor. Each licensee signed a public stipulation of patent validity, and the client’s intellectual property department became an annual profit center for many years. Accordingly, we helped the client license the majority of the industry, allowing our client’s technology to become the industry standard. Not only did our client become well known in the industry for creative designs, high quality products and reasonableness, but also as a patent force to be reckoned with by competitors and customers alike.