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Startup and Growth Company Case Studies

We collaborate with company executives and legal counsel to enhance IP & raise valuations

Patent strategy | Value-driven IP portfolio development

Consumer electronics startup

Perception Partners was contacted by an advisor to a consumer electronics startup. The startup had created circuit-level improvements to an internet-of-things sensor, which it proposed to protect via patenting the circuit design, chip packaging and manufacturing methods. The startup was trying to use a limited IP budget wisely.

A patent thicket in the IP landscape. We created an IP landscape of key players in the technology area and reviewed it during a workshop with founders and advisors. A key finding was that the area was very research- and IP-intensive. Just a few circuit-level patents - especially in manufacturing methods - could make it difficult for the startup (or any acquirer) to detect infringers and enforce the IP in the future.

Recommendation - protect the device, not just the chip. By analyzing the IP landscape in a value chain context (from suppliers to manufacturers to users to aftermarket) we demonstrated that the most valuable protection options for a small patent portfolio were actually closer to the customer: patenting improved mobile devices and services powered by the novel chip design. Patents covering complete mobile devices were shown to be easier to enforce, license and sell.

Better positioning for a higher valuation. By collaborating with the executive team, we were able to suggest a patent strategy that better utilized the startup’s foundational legal budget. The leadership team was able to improve their IP value story and justify a higher valuation during their next round of funding. The advisor who referred us has also provided many referrals since.

Funding strategy | Freedom to operate and novelty study

Pharmaceutical spinout

Perception Partners was engaged by the CEO of a drug company spun out of a university. The CEO was referred by a grant-making institution that was evaluating the spinout company for funding. The company had developed a drug and delivery system for narcotic addiction, on which it had filed a broad patent application. However, the patent was not created by a “name brand” law firm, and it was vaguely drafted. Perception Partners was asked for expert (non-legal) opinions on IP risks and future patent filing strategies.

Search a century of everything. We designed expert patent and technical literature search strategies for both chemical compositions and drug delivery methods. Coverage was across multiple global territories, going back to the year 1900! Due to the vast initial disclosure, our search strategies considered chemical (Markush) structures, classifications, keywords, synonyms and drawings.

Find and fit into white spaces. During our searches we learned that enhancers or “boosters” to other similar molecules could deliver similar benefits as claimed in the client’s application. We modified the searches with client feedback to ensure that the novelty of their drug/delivery system remained justifiable to the grant-making institution, and further ruled out risks to freedom to operate by recommending which drug delivery methods would better fit into IP “white space” with fewer substitutes.

Build confidence, get funded. Based in part on our work, the IP was deemed novel and defensible enough to receive funding. Several million dollars were awarded to our client, and their company is now an independent startup with the university retaining equity.

IP monetization strategy | Patent brokerage

Family gaming business

Perception Partners was contacted by the inventors of a computerized gaming technology to monetize their patent portfolio. The inventors were experts in the casino gaming industry, but were not getting the attention they deserved from potential infringers or acquirers. They were seeking proven licensing and patent sales representation to obtain bona fide offers to acquire their IP.

IP monetization is a shoe leather business. We evaluated the IP and reached the conclusion that there were several infringers with 1-2 major players who would have the capital and motivation to “take out” the portfolio quickly, given the proper incentives. Patent brokerage is often a “shoe leather” business - personal relationships are essential and credibility is paramount. The Perception Partners team traveled to the largest casino gaming show in Las Vegas to make the case for sale. We initially walked the show floor to gather evidence of infringement by multiple firms (which we had already researched). We then visited prospective acquirers, to show not only our client’s portfolio but the stopping power it could have in the exhibit hall.

Understand patent law to get better financial results. During negotiations the main prospective acquirer suggested that the inventors were not the first to invent the patented gaming system, and valued the IP at zero. Perception Partners was able to counter this assertion by demonstrating conception and consistent reduction to practice that predated all asserted prior art. We were able to convince the prospective acquirer that the inventors could “swear behind” the prior art, thus building confidence in the strength of the IP.

Work shoulder to shoulder with counsel. We worked collaborated closely with the inventors’ counsel to collect the due diligence items, negotiate and close the sale of the patent portfolio. We brought the inventors a 7-figure sum, respect for their invention, and ongoing consulting contracts with the acquirer. Truly a win-win.

Large Organization Case Studies

We bring comfort and control to the senior leadership of global innovators

Product Development | Dispenser informatics innovation

Private consumer products company

Perception Partners was engaged by senior R&D leadership at a manufacturer of household cleaning products. The company was planning to enter the connected home space with a smart soap dispenser, and was seeking to understand where they could gain freedom to operate in the competitive IP landscape.

IP landscaping reveals what does and doesn't work. We worked with the client team to prioritize key smart dispenser features for study. Using Intellar competitive intelligence dashboards, we built an IP landscape of patents, applications, technical literature and news from the US, Europe and Asia to generate our analysis. Relevant IP was categorized by features and benefits to depict competitive trends over time.

Show, don't tell the IP strategy story. In collaboration with the client we identified IP risks & opportunities in protecting key informatic measures including refill prediction; device cleanliness and alerting. We also identified potential white space areas for new IP in e.g., image capture. The resulting dashboards were summarized in an executive summary presentation that was easy to share with senior management.

Patent the product and the refill. The client R&D leadership applied the IP landscape insights to adjust and build out their patent portfolio across new products and consumables. This lead to a Phase 1 release of new “smart refills” for automated soap dispensers. IP portfolio development continues, based on continuous updates of the categorized IP landscape.

Business development | BIO partnering optimization

Large pharmaceutical firm

Perception Partners partnered with the business development team of a global pharmaceutical firm to optimize executive time spent in onsite partnering meetings at the BIO International Annual Conference.

Know who to talk to, and why. With more than 6,000 attendees and nearly 45,000 onsite partnering meetings, there is never enough time at BIO to connect with everyone. Pharmaceutical licensing executives must carefully plan the 3 days of the event to maximize results and avoid overlooking potential blockbusters from emergent firms.

Screen prospects rapidly & proactively. Mindful of the client’s focus on “Microbiome+” we collected the names, web content and IP estates of all attending firms across relevant patents, technical literature and news. We applied several IP analytic techniques to pre-qualify partnering opportunities and plan the 3-day meeting schedules. Beyond direct microbiome players with attractive IP and scientific merit, we also identified prospective partners in gene therapy, immune modulation and regenerative medicine.

Connect & close the highest value prospects. We helped set 58 face-to-face discussions onsite, optimizing the entire BIO business development calendar for the client. Negotiations resulted from more than five of those onsite meetings.

IP Valuation | Technology & patent portfolio for license or sale

Public food & beverage leader

Perception Partners worked with the head of a business line within a large food & beverage company to value a natural dairy flavorings technology portfolio for IP monetization. The IP in the portfolio comprised US & German patents, in-process R&D and technology know-how.

Value the non-core areas for new ROI. The client was not planning to use the IP in non-core sectors, e.g., yogurt, ice-cream and other dairy products. Using an income-based valuation approach known as the profit split method and corroborated using a market-based valuation approach known as the comparable transactions method, we assisted client decision-making to determine who could be the best licensee or acquirer, and the optimal terms for a transaction.

Quantify growth, risk and profit metrics. This required identifying global target partners such as ingredient suppliers. We also evaluated market size and growth assumptions, to determine how changes could influence the needs of potential partners. We delivered a valuation report with models for four growth scenarios. These options helped frame who would likely place the most value on the IP – and when they could expect attractive returns from that investment.

Hone in on believable and attainable valuations. Based on our valuation analysis the client was able to capture a meaningful double-digit royalty from a partner that is still providing a growing base of operating income.