The following are examples of our experience working with IP owners, licensors and licensees:
- Technology Consulting - We were approached by a private equity syndicate that was evaluating a potential investment in an early stage company which was developing holographic data storage components based upon an emerging chalcogenide technology. The investor syndicate was seeking an independent and objective view of the technological approach, the market landscape and the potential risks presented by competing techniques. Invotex professionals provided a technology and intellectual property survey report in a two-week timeframe, which the investors relied upon for their investment and valuation decisions. We later provided advice on licensing selected IP rights to third party companies.
- IP Litigation Financing - Invotex is actively assisting a client raising capital to sustain an ongoing IP litigation. Our client is asserting its patent rights against a prominent company, and will use the capital raised to sustain business operations, develop its IP assets and cover litigation-related expenses. Invotex is facilitating these fundraising efforts through its extensive network of financial players with activity in alternative areas of investment.
- Patent Assertion and Licensing - A prominent teaching hospital had developed medical device technology and IP it claimed was being infringed by a major corporation. Invotex’s professionals thoroughly analyzed the patent claims and license economics and approached the corporation with a licensing proposal. When this was rejected, litigation against the company was initiated. This litigation was quickly settled, the corporation took a license to the IP, and the IP owner has earned $4 million in royalties in the two years since the deal was concluded.
- License Management - Invotex was hired by a Fortune 100 company to manage its license portfolio. As with all engagements, our first step was to inventory the licensee’s assets to assure that the client was receiving the full amount of royalties due. Royalty streams ranged from $0 to $20 million for the past three years. Along with identifying the larger licenses to be brought into compliance, Invotex also selected a license that was initiated based on a settlement agreement with a competitor that had evolved from a patent infringement matter. The annual royalties reported were just below $100,000 per year during the past three years. Invotex initiated contact with the licensee, requested appropriate documentation, and worked through many issues concerning the production of confidential information. Invotex ultimately discovered over $650,000 of under-reported royalties or more than two times the amount actually reported for the past three years.
- Royalty Audit - Invotex conducted a royalty audit for a Fortune 200 client on a license that had been in existence for more than 10 years. The licensor had never considered auditing any of its licensees but had recently decided to commence a best practices initiative and to begin more closely monitoring its licenses. During Invotex’s investigation, it was determined that the licensee’s record keeping was so poor it was unclear as to the number of actual royalty bearing products that had been sold. With no ability to confirm the level of sales, the licensee and the licensor are currently involved in protracted settlement discussions. Both the licensor and licensee agree that had Invotex been involved at the outset and set up a royalty reporting process, the licensor/licensee relationship would have been much better served. Invotex is now working with both parties as an impartial third party to develop internal processes that will alleviate any future ambiguities relating to royalty reporting and tracking.
- Expert Testimony - Members of the Invotex team testified on behalf of a patent holder in the construction industry that had previously settled an infringement dispute resulting in a restricted license. After completing a royalty investigation, Invotex determined that the licensee was not paying the correct royalty amount to the patent holder. Based on this work, the patent holder filed suit. Following expert testimony presented by Invotex, the licensee agreed to settle the suit and paid the full amount of royalties identified by the investigation. Initially, the licensor believed that poor record keeping would prevent the underpayment from being exposed. Invotex was able to develop alternative methodologies of investigation and successfully uncovered the licensee’s underpayments. Because the licensor and licensee were competitors, Invotex played a critical role in ensuring that the investigation and negotiations were conducted in a professional, impartial manner.
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