Private Equity/Venture Capital

Unlocking the value of intellectual property assets held within an investment portfolio requires a partner with a unique combination of legal, business, and technological know-how. At Robins Kaplan LLP, our experience litigating large IP cases on both sides of the courtroom—often with investments of our own capital and resources—enhances our ability to assess the value and viability of a wide range of IP assets.

Relying on courtroom-developed insights and the scientific and business expertise of our in-house Ph.D. science advisors and financial and economic consultants, we help our clients identify and evaluate hidden value in their technology innovation assets, including finding IP value in underperforming operating companies. Then, we help them monetize that value by turning their ideas into cash or strategic leverage and thereby maximize overall return on investment. Our successes include litigation-only recoveries as well as combined litigation and licensing campaigns.

Capabilities for PE and VC Clients

Conducting IP Diligence Before Investments Are Made

When exploring a new investment, PE and VC entities do not simply need to know if a company has IP: they need to know if that IP is worth anything. Unfortunately, investors often lack insights into 1) whether a company’s IP actually covers key product offerings, thereby blocking competitors from copying those products; 2) whether the IP enforceable; 3) if the company goes belly-up, whether its IP will still be worth anything.

We provide investors with a more complete understanding of the value of a potential investment company by advising on the strength of its IP assets. By evaluating IP portfolios before investments are made, we help our clients avoid overpaying, identify critical latent weaknesses in a target company’s IP portfolio, and spot other potentially valuable assets not previously included in the acquisition or licensing model. We also identify IP investment targets by presenting litigation-based investment opportunities to our clients.

Harvesting Value from Existing IP Investments

We help our PE and VC clients unlock revenue streams from their existing IP investments by identifying valuable IP assets, selecting potential licensing targets, negotiating IP licenses or other monetization transactions, and, where necessary, enforcing IP rights against infringers. Our IP attorneys have a long history of helping PE and VC clients successfully monetize their IP assets. We have led multiple licensing and enforcement efforts on behalf of innovators that have generated recoveries exceeding $100 million in each. We have built a hard-earned reputation for zealously representing clients in complex licensing efforts, as well as patent enforcement against entire industries.

Providing ROI-Focused Advice on Potential IP Protection Strategies

Patent, trademark, copyright, and trade secret are all avenues of protecting IP assets. It is not uncommon for companies to seek out every type of protection possible— an approach that can turn IP into a cost center without any recognizable ROI. We advise PE and VC entities on which methods of protection make the most business sense and help them improve the coverage and scope of their IP protections, ultimately minimizing costs and ensuring the IP actually provides value to its owner.

Conducting Contract Risk Assessments

Most companies have a bevy of contracts they use to restrict the use of their IP and to protect confidentiality, such as End User License Agreements (“EULAs”) governing use of software or products, employee confidentiality obligations, trade secret protections, etc.

Because we see how the terms of such contracts often play out in litigation, we can quickly and efficiently analyze our clients’ existing contracts or protections in place, and provide feedback on areas of risk and recommended improvements to ensure the company’s goals are met and its IP is actually protected as intended.

Forecasting Industry-Specific IP Litigation Trends

Through our proprietary approach to patent analytics, Pinpoint IP®, our team of experienced IP attorneys, Ph.D. science and engineering advisors, and financial and economic consultants help IP owners assess their IP assets, identify licensing opportunities, and conduct licensing campaigns to unlock unrealized ROI. Leveraging this tool, we can provide a concise summary of what a current or prospective portfolio company’s industry looks like from a litigation perspective and its associated risk. In this two to three page report, and at no cost to you, we answer questions like:

• What IP litigation have our competitors faced over the last several years?
• How does our patent portfolio compare to our competitors’?
• Which assignees are citing our patents?

Enforcing and Defending Against Commercial and IP Claims

We understand the importance of maximizing value from your portfolio companies, including avoiding costly and unnecessary litigation. To the extent your portfolio companies do get involved in disputes that may lead to litigation, we leverage 80+ years of trial experience to provide rigorous representation across a wide range of IP or commercial claims.

We are proud to represent and share risk with a broad spectrum of clients, including some of world’s largest technology-oriented companies, highly innovative emerging companies, as well as individual inventors, authors, and developers. Our record of success includes trial and appellate wins in federal and state courts, the International Trade Commission, and both national and international arbitration. These results have fueled numerous practice recognitions, including being named one of BTI’s “Most Feared Law Firms in Litigation,” selection as an “A-List” firm and the first-ever “IP Litigation Department of the Year” by The American Lawyer, top rankings in Chambers USA, and selection as a “Go To Law Firm” by Corporate Counsel.

Serving as Outside General Counsel

While larger companies rely on in-house legal departments to address a host of legal and business matters, PE and VC entities and their portfolio companies require a unique approach, as well as the same level of service and sophistication for their stakeholders. For over 80 years, Robins Kaplan attorneys have served as outside general counsel to small and mid-size companies across industries. Our relationship-driven approach allows us to become ingrained in the fabric of your company as we advise and counsel over the years, while being ready to avail ourselves at a moment’s notice to handle sensitive and pressing matters. Our attorneys have experience across the full range of legal services, including:

• Corporate governance
• Contracts
• Corporate finance
• Corporate and real estate sales and acquisitions
• Employment law
• Intellectual property
• Litigation
• Privacy and cybersecurity
• Bankruptcy creditor representation and litigation

Pinpoint IP^®: Our Proprietary Approach to Patent Analytics

Part of Acumen Powered by Robins Kaplan LLP^®

Not all patents are created equal. Finding patent assets likely to drive substantial value in licensing efforts can be tricky. Getting the answer right can unlock substantial value and allow innovators to realize ROI. Making a mistake can lead to a costly waste of valuable resources.

Using our proprietary approach to patent analytics, Pinpoint IP, our IP litigation attorneys, Ph.D. science and engineering advisors, and financial and economic consultants leverage their know-how – earned litigating big IP cases on both sides of the courtroom, – to help innovators and investors evaluate IP, identify hidden value, and better maintain, defend, or monetize technology and innovation assets.

The result is an objective assessment that provides innovators and investors with valuable insights into their IP portfolio, an understanding of their relative strengths and weaknesses in the market, and recommendations for asserting, defending, or monetizing valuable IP assets.

This proprietary IP service offering contributed to the firm’s recent recognition to the National Law Journal’s Legal Technology Trailblazer list (2022), and also as a finalist for The American Lawyer Industry Awards for Best Use of Technology (2021).

Learn How Pinpoint IP Works and Read Client Case Studies >

Litigation

• Advanced Micro Devices v. Samsung: Brought to resolution patent litigation for Advanced Micro Devices (AMD) against Samsung in the Northern District of California.  The case involved allegations that Samsung's DRAM, SRAM and NAND memory products, its system logic products, and its consumer products infringed seven AMD patents covering technologies in memory architecture, processor micro-architecture, MOS-transistor fabrication and design, and user interface design for consumer products. Samsung asserted six patents against AMD's x86 processors and graphics processing units (GPUs) covering technologies in processor micro-architecture design, and semiconductor fabrication and process control. After three years of litigation and two mediations the parties resolved the matter at the close of expert discovery and dispositive motion briefing, shortly before trial.  Reputed to be the 4th largest patent case settlement and/or verdict from Jan. 2010-June 2011.
  
  
• Eolas Technologies, Inc. and The Regents of the University of California v. Microsoft Corporation: Represented Eolas Technologies, Inc. and the Regents of the University of California, in action for patent infringement of web browser technology for the delivery of interactive applications embedded in web pages. The case was tried in United States District Court, Northern District of Illinois, Eastern Division, Chicago, Illinois, Zagel, Judge. Jury verdict in favor of Eolas and the University of California, on issues of infringement, validity, and damages in the amount of $520.6 million. On January 14, 2004, the court entered judgment for $565,894,868 which includes the amount of the original verdict plus prejudgment interest. On appeal, the Federal Circuit affirmed the finding of infringement and the damages award, and ordered that Microsoft’s invalidity and inequitable conduct defenses be retried. The case settled on a confidential basis four days before the start of the invalidity trial.
  
  
• Fonar v. General Electric: Represented Fonar Corporation and Dr. Raymond V. Damadian in a patent infringement action against General Electric involving patents on magnetic resonance imaging (MRI) machines. After trial, the Court of Appeals for the Federal Circuit ordered General Electric to pay $103.4 million, at the time reportedly the largest patent infringement jury verdict ever upheld on appeal (IP Worldwide). The final payment totalled $128 million (judgment plus interest). 
  
  
• Honeywell v. Minolta: Represented Honeywell in a patent infringement case against Minolta involving patents on autofocus cameras. Jury award for Honeywell of $96.3 million, with subsequent settlement for $127.5 million and total settlements of approximately $500 million against industry.

Licensing Campaigns

• TVI v. Microsoft (N.D. Calif): TVI is the owner of several patents covering the autoplay feature of Windows. TVI sued Microsoft in the Northern District of California alleging that all versions of Microsoft Windows since Windows 95 infringed these patents. The case settled in October 2005 a little more than one week before trial. Microsoft took a license under the patents. All other terms of the settlement are confidential.
  
  
• St. Clair Intellectual Property Consultants, Inc. Digital Camera Patent Litigation (D. Del.):  Represented St. Clair in a series of patent infringement suits involving digital camera technology that started in 2002.  Three of those cases proceeded to trial and resulted in verdicts of $34.7 million, $25 million, and $3 million.  Settlements were reached prior to trials with the following defendants:  Olympus, Nikon, Minolta, Seiko-Epson, Kodak, JVC, Panasonic, Kyocera, Samsung, Sanyo, Casio, Pentax, LG, BenQ, Concord, General Imaging Co., and Pantech.  Settlements were reached after trials with Sony and Canon.  Total settlements in this litigation exceeded $240 million.
  
  
• Intergraph v. Dell, Hewlett-Packard Co. and Gateway Inc.: Represented Intergraph Corp. in patent litigation involving microprocessor system design.  Recovered, to date, a total of $500 million in settlements as follows: 
  
  
  • Hewlett-Packard $141 million, with cross licenses;
  • Dell/Intel $225 million;
  • Gateway/emachines $12 million plus ongoing royalties;
  • AMD $20 million plus potential future royalty profits;
  • IBM $10 million plus a license to IBM's portfolio;
  • Toshiba and NEC, confidential settlements 
    
    
  Licensing campaign following litigation:   
  
  
  • Fujitsu $9.75 million;
  • Sony $15 million;
  • Acer $7.5 million; and
  • Other confidential licenses

* Past results are reported to provide the reader with an indication of the type of litigation we practice. They do not and should not be construed to create an expectation of result in any other case, as all cases are dependent upon their own unique fact situation and applicable law.