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Monetization of Telephony Portfolio Through ITC

Industry: Technology

Key Facts

  • Patents at issue: U.S. Patent 5,870,610; 6,594,366; 6,691,302; 7,454,201
  • Technology involves auto-configurable method & system having automated downloading, a headset/radio auto-sensing jack, interfacing a service component to a native API, & a system for providing message services through a private network & mobile station

The Situation

Enterprise Systems Technologies (EST) owns a portfolio of more than 500 patents focused on enterprise telephony developed by the German technology giant, Siemens AG. The company approached Mintz to help monetize that portfolio, and the firm developed and implemented a strategy.

The Approach

Mintz vetted the company’s portfolio and identified the strongest patent families and individual patents. The team then conducted a complex assessment to determine which of those patents had the greatest revenue generation potential for EST. Ultimately, the firm and EST decided to enforce four of the patents, chosen from very different patent families, against leading companies in integrated devices.

The Outcome

After eight months of litigation, the first respondents, including Apple, settled on terms favorable to EST.  With only days before the trial was set to begin, the remaining respondents, including Samsung, LG and Google, also settled. The final defendants settled in June 2015.

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