Maximizing IP Value Through Data Insights

Perkins Coie has redefined service by developing technology-focused solutions to better assist our clients, including proprietary patent tools and portfolio analytic capabilities. Our attorneys regularly collaborate with clients to execute critical intellectual property strategies. We regularly provide board-level presentations detailing approaches for maximizing competitive impacts using IP assets. Dedicated to cutting-edge approaches to IP legal services delivery, we employ innovation to provide vital business advice, analyzing and producing data critical to business decision-making.

We work alongside our clients to give them a strategic business advantage by simplifying and providing access to data. In our ongoing commitment to serve as strategic advisors to clients, Perkins Coie has designed IP management tools to give our clients greater visibility into data about our legal work. We help clients easily manage the IP portfolio they have partnered with us to develop. Whether tracking progress in building an IP fence around strategic technology, benchmarking against competitor efforts, or responding to due diligence requests for financing or divestitures, our clients have access to timely and accurate data.

Our efforts have earned us recognition for technology and innovation by The American Lawyer and The Financial Times. These client-service tools include

• Portfolio Dashboard, a cloud-based platform that allows clients real-time access to their patent portfolio data, increasing client control and reducing overall management costs; and
• Patent Analysis and Review Tool, which captures data and legal analysis about each patent in

Designing IP Portfolio Strategies to Drive Client Success

Perkins Coie’s IP practice combines the focus and flexibility of a boutique firm with the complementary services of one of the world’s leading technology law firms. Our more than 110 U.S. Patent and Trademark Office (USPTO)-registered attorneys and agents provide IP prosecution and strategic portfolio counseling to clients. Our collaborative approach to practicing IP law allows us to partner with innovative clients to protect and grow their brands, navigate complex IP landscapes, and maximize the value of their resources. We are dedicated to helping increase the strength, diversity, and value of our clients’ IP portfolios by helping them develop tailored strategies and programs.

Our breadth of experience includes the following:

Our strong technical background in electrical engineering, computer science, and life sciences, among other areas, supports our clients’ goals. Inventors and entrepreneurs engage us to protect and advance their innovations, turning R&D investments into strong patent assets. Our investment in clients has allowed us to become authorities in numerous cutting-edge technologies. We draw on knowledge of caselaw and industry trends to draft quality patents and develop strategic patent portfolios that can better withstand future challenges and are also attractive to potential buyers and licensees. Our attorneys are skilled in navigating patent offices worldwide.

Perkins Coie works closely with clients to identify and protect the integrity of their brands and distinguish clients from competitors. We help clients develop strategies and programs, identify and perfect IP rights, and assert or defend these rights. We have extensive experience in all areas of U.S. and international trademark prosecution and counseling and all aspects of copyright protection and enforcement, including counseling on protection strategies, registration, monetization, and enforcement. We are experienced, adaptable, and strategic counselors and litigators who represent clients of all types and sizes in a variety of industries and are adept at managing complex and high-volume registration and enforcement programs.

We assist clients with IP due diligence matters ranging from investment decisions for venture capital financing to multimillion-dollar acquisitions. We tailor our due diligence process to fit a client’s objectives and to the type and size of the transaction, and efficiently determine the total value of the IP portfolio, uncover IP roadblocks that may negatively affect the value of the deal, and develop strategic options for achieving business objectives.

Our China IP practice has deep experience supporting multinationals with the registration, prosecution, maintenance, and enforcement of IP rights. The practice is further supported by the Perkins Coie Intellectual Property Agency (Beijing) Co., Ltd. The China IP Agency, with offices in Beijing and Shenzhen, is licensed by the China National Intellectual Property Administration (CNIPA) and is staffed with consultants and paralegals who possess extensive experience in the registration, maintenance, and enforcement of trademark, copyright, domain name, and other nonpatent IP rights in the People’s Republic of China.

Informing Strategy Through Leading Legal, Technical, and Valuation Knowledge
 

At Perkins Coie, we seek to increase the strength, diversity, and value of our clients’ IP portfolios by helping to develop tailored strategies and programs. We skillfully assist companies in creating, managing, and monetizing IP portfolios by combining technical, legal, business, and valuation knowledge and experience with our custom software tools.

We are one of the most experienced firms in patent-based transactions and have led the patent marketplace for the past decade, facilitating hundreds of millions of dollars of patent purchases or sales for clients. Our experience goes far beyond technical patent assessments. Our dedicated in-house patent analysis team utilizes multiple third-party software services to help deliver outstanding portfolio analysis results, guided by our significant experience helping clients identify monetization opportunities.

Our breadth of experience includes:

• Competitor and industry landscape analysis. We evaluate industry and competitor portfolios to help our clients better understand and assess competitive impacts and to develop both defensive and offensive strategies for effective competition. We also work with our clients to identify unprotected technologies in the marketplace and strategies for acquiring those technologies to spur and protect innovation.
• Value creation and monetization models. Working closely with clients, Perkins Coie’s seasoned attorneys can build sophisticated licensing programs to reach a wide variety of goals, from enhancing financial returns to achieving strategic business relationships. We think creatively to maximize campaign potential and achieve key business strategies.
• Patent acquisitions and sales. Whether a company is looking to acquire patents to protect against litigation, to fill a portfolio gap, or for offensive purposes, our patent and transactional attorneys assist in identifying and analyzing assets of interest, ensuring antitrust compliance, and negotiating the end deal.
• Valuation services. Perkins Coie’s attorneys have significant depth in determining the economic value of clients’ intellectual property, ranging from a single asset to multimillion-dollar portfolios. Our valuation skills ensure that all business, legal, and technical issues are considered when ascertaining a proper valuation.
• Merger and acquisition due diligence. We are experienced at conducting due diligence investigations to assist with mergers and acquisitions for clients in all technology areas. Companies considering commercial transactions need to thoroughly understand the value and risks associated with the transfer of intangible assets as part of a deal, including which IP assets are included, the nature and value of those assets, and what limitations or risks are associated with those assets.
• IP Risk Management. Our collaborative approach ensures that a strategy does not run into issues outside of the IP itself. Our tax attorneys routinely assist in developing tax strategies to help maximize revenue recognition from IP assets, and we often involve our antitrust and unfair competition attorneys to help proactively identify antitrust risks inherent in portfolio acquisition, licensing, and sales.

Advancing a Client's Market Position and Integrity

Perkins Coie regularly represents clients in high-stakes IP matters in which core technologies and brands are at risk. Our team litigated over 350 patent, trademark, copyright, trade secret, and other IP cases across the country in the past two years, with outcomes that included outright wins on motions to dismiss, summary judgments, and bench and jury trials. Additionally, we have resolved disputes through the negotiation of many favorable settlements. Our IP enforcement and defense experience spans the major centers of district court litigation as well as the U.S. International Trade Commission (ITC), U.S. Patent Trial and Appeal Board (PTAB), the U.S. Court of Appeals for the Federal Circuit, and Trademark Trial and Appeal Board (TTAB).

We partner with clients to identify intellectual property risks and problems and address them at every level by executing strategies tailored to the specific issues and seek efficient and proportional resolutions. Using these strategies, we have obtained millions of dollars in settlements and judgments for clients.

Our breadth of experience includes:

• Patent litigation
• Patent appeals
• ITC Section 337 investigations
• Post-grant proceedings, including inter partes reviews
• Hatch-Waxman
• IP and brand enforcement programs
• Trademark infringement and dilution
• Copyright litigation
• Trade secret litigation
• Trade dress litigation
• Unfair competition litigation
• False advertising litigation
• Domain name litigation
• Gray market litigation
• Anti-counterfeiting
• Advertising litigation
• TTAB proceedings
• Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceedings

Our patent litigation team has significant experience in the major centers of district court litigation, including in Northern, Central, and Southern California, Delaware, Chicago, New York, and Eastern and Western Texas district courts. Other distinctions include a sophisticated ITC practice involved in several landmark investigations and a premier post-grant practice before the U.S. Patent Trial and Appeal Board in which we have handled over 700 IPRs. And when cases go up on appeal, we have one of the leading Federal Circuit practices in the country. Our practice includes several former Federal Circuit law clerks and the former solicitor and deputy general counsel for intellectual property law at the USPTO who also acted as the USPTO’s chief administrative patent judge in charge of the PTAB.

Within our Trademark, Copyright, Internet & Advertising group, our experience encompasses all phases of litigation, including ex parte seizure, temporary restraining orders, preliminary injunctions, trials, and appellate proceedings. Our team also routinely handles trademark opposition and cancellation proceedings before the TTAB. We also have deep experience in domain name arbitrations under the UDRP and litigation under the Anti-Cybersquatting Consumer Protection Act (ACPA).

Perkins Coie has extensive experience working with clients to develop and implement global IP monitoring, investigation, and enforcement programs. We partner with clients to track U.S. and international watch notices and develop systematic enforcement programs to reduce the risk of brand dilution and consumer confusion presented by worldwide trademark filings. In addition, we are broadly recognized for our capabilities and experience in the internet governance and (Internet Corporation for Assigned Names and Numbers) ICANN space.

Perkins Coie also supports clients across diverse industries with the enforcement of rights to trademarks, copyright, patents, and trade secrets before China’s administrative agencies and the People’s Courts. We regularly represent clients in high-profile IP litigation matters and advises clients on privacy, cybersecurity, internet, and other regulatory matters in China. Our China IP team also manages anti-counterfeiting and anti-piracy programs for large and small companies. We lead clients through IP customs and cross-border registration and enforcement and have extensive experience in helping global companies protect their brands in the online and offline space.

In addition to our comprehensive IP litigation experience, clients benefit from access to the sophistication of an Am Law 50 law firm known for achievements in antitrust, unfair trade practices, product liability, international trade, and other areas of law.