Intellectual Property

Patent Monetization & Optimization

Mintz Levin helps clients make the most of their patent holdings. We work with sophisticated patent holders who own high-value patent assets. Our proven approach to creating and maximizing revenue streams has generated more than a half billion-dollars for those clients. Monetizing a portfolio is not simply about building the portfolio and licensing patents. It requires making strategic decisions about clients’ patent assets, identifying which assets are core to their ongoing business and which are not — and knowing how to maximize even the non-core assets that have value in today’s global marketplace. This is what the team at Mintz Levin does.

We have developed an efficient process and put together an experienced team to assess portfolios in relation to current product offerings and the marketplace, identify assets that may be used to enhance defensive positioning, expand product lines or features, and generate revenue. And because we have a number of monetization options at our disposal, we develop programs specific to the assets, market, and our particular client’s appetite for risk.

Your Mintz Levin team will help appraise market conditions, identify value-driver assets, locate potential targets, and assess the best option for generating revenue. This may be through a negotiated sale or license, an enforcement program using Federal District Courts, the U.S. International Trade Commission, international enforcement, or a coordinated campaign involving several of these options.

Quick Facts

  • Generated more than $500 million for clients in the past 5 years through brokerage and enforcement proceedings.
  • Established a first-of-its kind United States International Trade Commission–based enforcement model.
  • Earned a rare General Exclusion Order from the ITC in enforcing a client’s right to market exclusivity for their innovative LED lighting technology.
  • Craft and leverage global enforcement strategies.
  • Work with sophisticated patent portfolios and conduct comprehensive technical and financial risk assessments.

Rankings & Recognitions

  • IAM Patent 1000 (2016)
    • Patent Litigation Practice and 7 attorneys recognized among the "World's Leading Patent Practitioners"
  • IAM Strategy 300 (2015/2016)
    • Michael T. Renaud, Division Head for IP and Leader of the Patent Monetization & Optimization Practice, identified among "The World's Leading IP Strategists"
  • Chambers USA (2016)
    • 3 IP attorneys identified as leaders in their respective patent fields, including Michael T. Renaud, the Division Head for IP and Leader of the Patent Monetization & Optimization Practice
  • BTI Consulting Group's 2016 Litigation Outlook
    • IP litigation practice ranked in top 5% of all law firms by corporate counsel
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Michael T. Renaud

Michael T. Renaud

Member / Chair, Intellectual Property Division

ITC Probe Boosts Licensing Revenues for Advanced Silicon Technologies

Mintz Levin represented Advanced Silicon Technologies (AST) in asserting four patents against leading automobile and original equipment manufacturers in an investigation before the International Trade Commission. The patents generally relate to 3D video graphics processing and intelligent memory control, and are practiced by, for example, infotainment systems, head-end units, navigation systems, graphics processors, microprocessors, integrated circuits, and other computing and/or graphics-capable electronic devices. Working in concert with Advanced Silicon’s licensing experts, Mintz Levin’s litigation and strategy team was able to resolve the ITC investigation favorably prior to the close of expert discovery. In exchange for licenses to its portfolio, Advanced Silicon received significant licensing revenue valued in the high eight digits.  Mintz Levin achieved this result less than eight months after Advanced Silicon initiated the first phase of its licensing program.

The matters below combined to help generate more than a half billion dollars in licensing revenue for our clients.

  • Advanced Silicon Technologies Inc. – Memory controller and GPU architecture in automotive space. AST is a patent licensing company that acquired assets from an operating corporation seeking to leverage value from its substantial non-core patent portfolio. Using a mixed ITC, district court and European strategy, we asserted several patents across different patent families against automotive manufacturers and OEMs. All respondents settled prior to the completion of expert discovery. (Completed 2016)
  • Enterprise Systems Technologies S.a.r.l. – Enterprise telephony, including operating systems, intelligent analog and digital circuit architecture, and mobile communication systems. EST was a non-practicing patent licensing arm of the Gores Group. Using both the ITC and district court, we asserted several patents across separate patent families. All respondents settled after the close of expert discovery and before trial. (Completed 2016)
  • Acquisition and Monetization of Powerwave Patents – Conducted substantial diligence on behalf of client The Gores Group prior to the client’s successful bid to acquire approximately 1500 U.S. and foreign patents and patent applications formerly owned by Powerwave. Our team mined the portfolio, identified value drivers, created evidence-of-use charts, assessed the market, identified potential licensing targets and potential buyers, and conducted a sale process, ultimately negotiating and closing a Patent Purchase Agreement with Intel Corporation, returning significant value to The Gores Group. (Completed 2014)
  • Graphics Properties Holdings, Inc. two-phase program – GPU and microprocessor architecture, and LCD structure, in consumer electronics such as smart TVs and tablets. GPH is a privately-held assertion entity, formerly known as Silicon Graphics.
    • Phase I –Using both the ITC and district court, we asserted several patents across different patent families against leading consumer electronics manufacturers. All respondents settled after the close of expert discovery and before trial. (Completed 2012)
    • Phase II –Many targets in Phase II took a license without being swept up into the ITC investigation. We asserted several patents from multiple patent families at the ITC against additional leading manufacturers. All respondents but 1 settled after the close of expert discovery and before trial. The ITC investigation concluded with an Initial Determination finding a domestic industry and that the remaining respondent infringed several valid and infringed claims. The remaining respondent settled before the Commission completed its review. (Completed 2014)
  • Digitude Innovations – Operating systems for smart phones/portable communications devices. Digitude was a privately held non-practicing entity. Using a mixed ITC and district court initial phase, we asserted multiple patents in separate families against global manufacturers. All respondents settled prior to the close of fact discovery. (Completed 2012)
  • FlashPoint Technology, Inc. – Electronic imaging devices. FlashPoint was a privately held non-practicing entity spun out of Apple. Using a district court initial phase, that was later complemented by ITC enforcement, we asserted a number of patents from different patent families against global manufacturers producing smart phones with integrated cameras. All defendants settled after the close of expert discovery. (Completed 2012)