Navigating a safe path through the turbulent waters of Standard Essential Patents (SEPs) and Patent Pools.
Many technology companies operate in spaces covered by a wide range of standard-setting organizations (SSOs). Understanding the IP ramifications of joining a standard can make or break an IP portfolio. Further, knowing if, when, and how you can exit an SSO must be carefully managed.
Standard Essential Patents (SEPs) are patents claiming technology essential to an industry standard’s use. Understanding the technical and legal nuances of how the SEPs are handled relative to your business can be critical to your company’s success. Not all SEP Agreement obligations, RANDs, and FRANDs are created equal and failing to understand those nuances can be outcome determinative to your long-term business goals.
Patent Pooling typically refers to an arrangement where two (2) or more technology companies agree to cross-license patents and other IP relating to a particular technology. Whether you are competing with such a company, selling to such a company, selling to one of the company’s competitors, or otherwise engaged in a technology space with one or more patent pools, your success may be impacted by, or even hinge on, a technical and legal strategy for dealing with a patent pool.
Fountainhead attorneys have the technical knowledge to understand SSO and Pooled technologies as well as the legal expertise to advise you on how contractual rights and obligations of the Standards and Pools can impact your business.
Let Fountainhead develop and run a cost-effective IP department for you so you can focus your headcount on mission critical functions.
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Ensenta, Inc. (acquired by Private Equity fund)
After linking Ensenta’s core technology innovations to its target market space, Fountainhead successfully navigated Ensenta’s patents through the Patent Office to protect their innovations and markets. Over the years, Fountainhead worked with Ensenta to successfully fend off IP attacks from competitors. These efforts culminated in a successful exit when the company was sold to a private equity firm.
Power Analog Microelectronics (acquired by Diodes Inc.)
Power Analog Microelectronics (PAM) was a multinational analog and mixed signal startup. Fountainhead’s expertise in analog, mixed signal, and global IP strategy helped PAM to build a comprehensive IP program to support their global marketing efforts, leading to a successful acquisition by Diodes Inc.
Summit Microelectronics (acquired by Qualcomm Inc.)
Summit’s battery charging technology changed the world. When Summit invented a charging algorithm that reduced battery charge time by orders of magnitude (“TurboCharge”), they turned to Fountainhead to protect these vital IP assets. Knowing that companies around the world would stop at nothing to “design around” Summit’s innovations, Fountainhead worked with Summit engineers to craft numerous claim strategies to make their IP as impregnable as possible. Summit was later sold to Qualcomm for hundreds of millions of dollars based in large part on their IP portfolio, portions of which was later asserted against Apple.
SAP is a global leader in business process software. Since the seminal Supreme Court case of Alice Corp. v CLS Bank, which significantly raised the bar for patenting business process software patents, protecting these key IP assets has been no easy task. For almost two decades, Fountainhead Law has worked with SAP to lead the field in patenting business process software patents, having successfully obtained hundreds of valid and granted patents for SAP and other clients in this nuanced and challenging technology space.
When wireless titan Qualcomm launched its seminal patent lawsuit against Apple, from over 200,000 patents in their arsenal, they selected just 12 patents deemed capable of withstanding the rigors of Apple’s rigorous patent defenses. Fountainhead Law proudly prosecuted two (2) of the selected 12 Qualcomm patents, contributing to Qualcomm’s favorable settlement with Apple of this epic patent battle.
When Microsoft’s new CEO, Satya Nadella, set out to transform Microsoft’s strategic vision, the legal team turned to Fountainhead’s broad range of expertise in software, hardware, AI, and other technologies to protect the new technology areas that Microsoft was venturing into. Fountainhead has helped Microsoft preserve the wealth of innovations along their technology roadmaps from software to AI and spanning both the analog and digital semiconductor worlds.