Cardinal offers a full range of expert and consulting services to assist you in your IP endeavors. From monetization and valuation of your IP portfolio to expert reports and testimony for your litigation matters, Cardinal has the people and experience to help you maximize your IP and ensure the job gets done correctly and on time.
Monetization & Valuation
Portfolio Monetization
Cardinal offers a full range of portfolio monetization products and services. We can perform a valuation of a single patent to valuations of entire patent portfolios. Cardinal can also conduct assertion studies and analyze your litigation risks. Our accurate and effective analysis and value assessment will help you support your licensing, asset sale, and acquisition needs.
Assertion Studies
Cardinal can conduct assertion studies using either a targeted or a broad approach. In the targeted approach, we analyze the products and services documentation of your known competitors as they relate to your patent(s). In the broad approach, we expand the search to look for unknown competitors that are practicing the claims of your patent(s). Cardinal can also perform market analysis to establish the current and projected future economic impact of the patented technologies. From this information a revenue opportunity assessment can be made for the potential licensing and litigation targets.
Cardinal has experience performing assertion studies on single patents as well as on portfolios of up to 10,000 patents. Additionally, we have helped our clients create marketing material, negotiate with third parties, and craft license and sales agreements.
IP Valuation
Whether it be patents, trademarks or copyrights, IP valuation requires a unique approach to each situation and set of goals. For your IP valuation, Cardinal IP will align your project scope with your overall goals and objectives. We will work within your budget and timing constraints.
Our consulting teams are made up of professionals with law*, business, science and engineering degrees. Our professionals have a long track record of conducting IP valuations and working within the intricacies of IP law.
IP Valuation Approaches
Income Approach
- The Income Approach provides a value indication of the IP by converting future cash flow from the IP to a single current value.
Market Approach
- The Market Approach seeks to identify comparable IP which has been bought or sold and can be used to value the asset.
Cost Approach
- The Cost Approach assigns a value based on the cost of creating the existing IP and the cost of replacing the existing IP with a new, but comparable asset.
Prosecution Services
Preissuance Submission Services
Third-Party Submissions (3PS) for Pre-Grant Review
A third party may submit any publication of potential relevance to a patent application before the earlier of (1) a notice of allowance; or (2) the later of six months after the date of first publication, or the date of the first rejection of any claim by the examiner.
This new provision allows anyone to challenge another’s filings by bringing forward prior art during prosecution, which is a more cost-effective approach to limit a competitor’s patent rights as compared to litigation or reexamination proceedings.
Citation of Prior Art and Written Statement Services
Under 37 CFR 1.501: Citation of Prior Art and Written Statements in Patent Files, anyone can add a written statement into the file of a patent at any time in order to disclose prior art that is potentially relevant to the enforceability of said patent. Cardinal IP can serve the patent owner and file the statement on behalf of the 3rd party allowing the 3rd party to remain anonymous. If the 3rd party later wishes to file a Request for Ex Parte Reexamination under 37 CFR 1.510, we may be able to assist with that filing as well.
Cardinal provides the following services for 3PS & Citation of Prior Art and Written Statements:
- Monitor competition and identify competitor patent applications, published and issued
- Invalidity Search and analysis on most current entered claims, identify most relevant art
- Assemble 3PS documents
- Document list identifying publications, or portions of publications being submitted
- For 3PS, draft concise descriptions of the asserted relevance of each document
- Legible copy of each identified documents (excluding U.S. patents/publications)
- English language translations for foreign language references
White Space Studies
When developing IP in a particular technology area, it is important to understand the existing landscape and find the “white space” where there is room for your company to innovate. Building upon a landscape study, our analysts will review existing references to determine where there are gaps in publicly disclosed and patented technology areas.
Due Diligence
Mergers and acquisitions are often complex and time-sensitive. Success depends on strategic and sound due diligence. Cardinal’s research team has the necessary skills and experience to assist you in this process.
Due Diligence Services Include
Strength Assessment
- Invalidity research ensuring you don’t overpay
Liability Assessment
- Freedom To Operate review providing ongoing risk exposure
Assignee/Ownership Review
- Title and assignee research to determine entitlement of IP
Maintenance Fee Review
- Confirm status of annuities and maintenance fees
Historical Litigation Analysis
- Court record research providing current and past assertions
or patents identified during liability assessment
Expert Estoppel Services
Skilled Searcher Reports & Testimony
Cardinal Is The Authority On What Qualifies As A “Skilled Search”
Though case law is divided regarding the breadth of estoppel, there are a number of courts requiring the party claiming estoppel to present evidence that a “skilled searcher’s diligent search would have found the” prior art for which estoppel is requested. (emphasis added). Clearlamp, LLC v. LKQ Corp., 12 C 2533 (N.D.Ill. Mar. 18, 2016); See Oil-Dri Corp v. Nestle Purina Petcare Co., No. 15-cv-1067 (N.D. Ill. Aug. 2, 2017); See also Cobalt Boats, LLC v. Sea Ray Boats, Inc., 2:15cv21 (E.D. Va. June 5, 2017).
People
Cardinal has been selected by the USPTO since 2006 to conduct PCT searches and provide written opinions. Cardinal has over 150 searchers with science/engineering degrees covering all technical areas, with most having advanced degrees.
Due to our experience, size, and credentials, Cardinal’s searchers are uniquely positioned to act as the authority on what a “skilled searcher” would have found performing a diligent search.
Process
Cardinal has a strict defensible process for all of its searches and expert reports. Cardinal provides a list of databases, classifications, keywords, search strings, and search logic, and also the reasoning behind the strategies. This process has been vetted by a decade of experience conducting tens of thousands of searches for the USPTO, Fortune 500 companies, and AM Law 100 firms.
The Basis For Estoppel Is Found In 35 U.S.C. 315 (e):
(1) PROCEEDINGS BEFORE THE OFFICE
The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
(2) CIVIL ACTIONS AND OTHER PROCEEDINGS
The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
If you are in need of an expert to act as a “skilled searcher”,
Contact Cardinal for a no-obligation consultation.
SCORE (Strategic Competitive Overview & Risk Evaluation)
Know exactly where you stand when it comes to analyzing your competitive position, with Cardinal’s SCORE service.
SCORE presents an organized view of your patents and products in relationship to your competitors’ patents and products. Offensive and defensive analyses for each competitor help you evaluate potential litigation risks, expose gaps in competitive data, and recognize new licensing opportunities.
An effective way to communicate the value of patent and product assets across your organization, SCORE translates into better corporate decisions, easier budget planning and stronger support for litigation and licensing plans.
SCORE is a powerful competitive analysis tool that provides various levels of perspective—from a company-wide view all the way down to details of an individual product or patent. Centralizing this information minimizes the loss of time and money associated with employee turnover and other human factors. SCORE also drastically reduces the time required to prepare patent and product reports.
By delivering clear visual representations of related offensive and defensive positions, SCORE helps you evaluate potential litigation risks and licensing opportunities.
To generate your SCORE, Cardinal gathers a customized research team to fill competitive information gaps or to update any other information you require. As information is collected and entered, SCORE will show you an increasingly accurate and powerful perspective of your intellectual property environment.
Corporate-Wide Summary
Uncovers cross-division and cross-technology strengths and weaknesses vs. competitors
Division or Technology Summary
Displays relative strength in a particular division or technology field
Patent Product Assertion View
Provides specific details regarding potential offensive or defensive relationships between patents and products