Case Study

Case Study 1

Patent Portfolio Management/ Claim-Chart Mapping

Client : A US-based Fortune 500 company

Scope of Assignment : Identify revenue-generating opportunities from its patent portfolio

Epiphany Solution : The study was conducted in three phases:

In the first phase, Epiphany developed a multi-tier taxonomy for categorizing patents into groups. On ascertaining the structure of the taxonomy with the client, the patents from the portfolio were bucketed into the categories of the taxonomy.

In the second phase, technology standards applicable to the pool of patents in each category of the taxonomy were identified. Based on the identified technology standards, a substantially comprehensive list of products in the market adhering to these technology standards was identified. The products were grouped based on the company offering these products.

In the third phase, products of select companies were chosen for further study based on consultation with the client. The features of the products of the selected companies were mapped onto claims of selected patents for estimating the extent of overlap/infringement.

The analysis provided by Epiphany enabled the client to build a case for licensing and thereby monetize a portion of their dormant IP.

Case Study 2

Invalidation Study

Client: A UK-based law firm

Scope of Assignment: Conduct a validity study of three patents that were used for constructing an infringement case against a client of the law-firm

Epiphany Solution:

The claims of the three patents in question were studied and an in-depth search was performed to identify results relevant to the patent claims.

The patent literature search was conducted on Thomson Innovation patent database. The patent literature search included various searching techniques, such as Keyword based search, IPC/US Class/ECLA based search, Assignee/Inventor name search, Citation Analysis based Search and File history based search to ensure comprehensiveness.

The non-patent literature search was conducted on technology specific databases like IEEE, ACM, Scirus, ScienceDirect, CiteSeer using keywords, author name and citation analysis. Further, sources like Internet Archives (also referred to as the Wayback machine) were searched to identify expired/cached web pages citing the relevant references.

A strong case for invalidating each of the three patents was built around the identified references. Further a visual mapping of the identified references and individual elements of the claims were provided to the law-firm.

Epiphany deployed a large team to complete the invalidation search of three patents within 8 working days enabling the law firm to meet the end client’s deadline. Further the law-firm was able to pass on sizable cost savings (~40%) to the end-client.

Case Study 3

Freedom-to-operate Search

Client: An India based glass-manufacturing company

Scope of Assignment: Perform a clearance search for Glass manufactured by a particular process for US & India Jurisdiction

Epiphany Solution: The process of manufacture of the glass was studied in minute detail in conjunction with the R&D Engineers at the client location. Important process steps that can be retraced from the end product were identified. A patent search restricted by Jurisdiction was conducted for India and US Jurisdiction, respectively and relevant patents for each of these important steps were identified.

Identifying relevant patents for the Indian Jurisdiction comprehensively is a sizable challenge as the digitization of the records at the Indian Patent Office is still a work in progress. Records only after 2005 are available for search on the Indian Patent Office website and further the search is limited to certain sections. For example, no full text search is possible.

In addition to performing a search on third-party database for results prior to 2005, team members visited the Delhi Patent Office library and manually checked records of publications for identifying relevant results. Further, a check was performed on Ekaswa CD records maintained by the Indian Patent Office to ensure that no record was left unchecked.

On identifying the patents relevant to the study, claims of the identified patents were mapped to the process steps for identifying the extent of overlap and the analysis provided to the client.

The analysis provided by Epiphany enabled the client to identify potential IP bottlenecks and accordingly design necessary work-around techniques for manufacturing glass by tweaking aspects of the particular process.

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