Challenge
Yahoo was renamed Altaba following Verizon’s acquisition of Yahoo’s operating business in 2017, and, along with other activities, assumed responsibility for maximizing the financial return of the remaining 2000+ patent assets in Yahoo’s portfolio.
Altaba required patent monetization experts to help develop and support the execution of a successful monetization strategy. After an extensive selection process, Altaba chose UnitedLex because of its broad technology domain coverage, reliable program execution capabilities, and a track record of successful portfolio monetization strategies.
"Given the incredible amount of innovative technologies developed by Yahoo, we were thrilled to have the opportunity to work with Altaba to develop comprehensive licensing strategies and create material value for the company overall."
– Joseph F. Dearing, Executive Vice President of UnitedLex’s Intellectual Property practice
Solution
To fully realize the value of the patent assets for both licensing and litigation purposes, the project was organized into four key phases:
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Patent Portfolio Evaluation: UnitedLex’s team of IP experts mined Altaba’s patent portfolio to identify the high-value patents and the breadth of industries to which they apply.
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Licensee/Buyer Research and Assessment: Our experts conducted in-depth investigation on the high-value patents and within the relevant industries to determine a range of companies that potentially had a dependency on Altaba’s patents. This enabled Altaba’s executive team to visualize the portfolio as a matrix of patents and potentially relevant companies.
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Prioritization and Due Diligence: After discussing its findings with the Altaba leadership, UnitedLex created a prioritized shortlist of potential licensees and buyers. We performed detailed due diligence on the selected companies, including software reverse engineering, to conclusively identify evidence of use to prove infringement and maximize the chances of successfully licensing the patent assets.
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Negotiation Consultation: UnitedLex also served as the client’s technical experts during the licensing and sales negotiations. Presenting the portfolio’s technical strengths, including claim charts, we helped drive fair value for Altaba’s IP with prospective licensees and buyers.
"The UnitedLex team were partners in every sense. Our in-house licensing team was very small and internal resources were limited. The expertise and resources provided by UnitedLex allowed us to operate on a much larger scale and cover a lot of ground in a relatively short time. They were flexible, professional, candid and reliable."
– Paul Reidy, Excalibur IP LLC, an Altaba company
Impact
UnitedLex identified the high-value patent assets, developed a monetization strategy, and led a significant part of the licensing discussions throughout the monetization process, highlighting the value of a patent license by providing:
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Technical expertise to present the overlap of licensee’s products with the portfolio
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Deep domain knowledge to create and explain complex infringement charts
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Rebuttal of non-infringement and invalidity claims raised by the potential licensees
Over a period of two years, UnitedLex helped Altaba close patent licensing deals worth over $100M in total, including several transactions with leading-edge technology companies.
UnitedLex’s work product also proved to be instrumental in the recent divesture of the entire portfolio to Acacia Research.
To learn more, visit Patent Monetization page and click here to download a copy of this case study.
