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Cases

We work with major companies and universities, start-ups, private equity firms and individual inventors to help protect, build and leverage their intellectual property. Our latest work have been in the medical device, telecommunications, bio/pharma and semi-conductors industries in IP enforcement, strategic consulting, litigation assessment, and valuation and portfolio management.Here is a sampling of some of the work we do. If you have a question or concern with your IP, please get in touch with us.

Hospital IP Enforcement

Our client, a medium sized teaching hospital, had a prominent research team who had developed a number of innovations in the treatment of kidney disease.One member of the team had developed proprietary and patent-protected medical technology and the client felt that its patents were being infringed by a major corporation. Our team thoroughly analyzed the patent claims and the associated economics and led negotiations with the infringing party with a licensing proposal. We assisted the client in litigation efforts and helped persuade the corporation to agree to take a license to our client's patents. Our client has earned over $7M in royalties since the deal was concluded.

University Patent Enforcement – Strategic Direction and Financial Damages Support

A biotechnology company with a successful product on the market had licensed the rights to the underlying technology from our client, a major U.S. university. In collaboration with our client's outside counsel, we were able to determine that additional products marketed by the company had their origins from the research team within the university, yet their researchers had not been credited and the university had not been informed. We prepared a detailed financial model of the economic damages incurred, which supported our client's claims for additional royalty revenues. Along with outside counsel, we worked with the university throughout the settlement negotiations and participated in discussions with the company. Ultimately, the company agreed to settlement with the university in excess of $20 million.

University Patent and Technical Analysis

Upstream's consultants were engaged by a major university to review the landscape of therapies, both available and under development, to treat a certain disorder. The university has several method-of-use patents in this area and the review was triggered by a request for a license to the patents by a pharmaceutical company. The university wanted to determine whether it should grant an exclusive license to the company. In addition, the university suspected that other companies might have products, in development or on the market, that infringed upon its patents.

We surveyed the landscape of marketed drugs in this area, as well as the clinical pipelines of multiple companies, and identified several likely infringing products. Upstream provided in-depth analysis on:

  • The companies' development efforts
  • The technical details on their products in development, and
  • The financial implications and potential economic returns from broad licensing efforts.

We have supported the university's licensing discussions with these parties.

See additional cases in our Strategic Portfolio Development, IP Portfolio Valuation & Value Creation, IP Enforcement and Support, and Business Formation and Management service areas.

We would be happy to talk with you about other work we have done. Please get in touch with us.