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Use Cases and Best Practices in IP Analytics
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PatentSight® Enhances M&A Decision Making with IP Due Diligence Insights

How an IP law firm leverages LexisNexis® PatentSight® to make complex patent insights consumable by client’s Senior Management.

“They can now say, OK, I see that figure and I understand what it's saying, but I also understand how the data created that, and then you can have a much better discussion.”

C. G. Moore
McBee Moore & Vanik IP
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McBee, Moore & Vanik IP, LLC leverages cutting edge tools to increase efficiency and production for their clients

McBee, Moore & Vanik IP is a boutique law firm based just outside Washington D.C. The firm specializes in Intellectual Property (IP) law, with a focus on biotechnology, chemistry & materials science, medical technology, and pharmaceuticals. The partners provide a full range of patent prosecution and counselling services to corporations and help acquisitive companies understand their relative position in the innovation ecosystem.

McBee, Moore & Vanik IP has long differentiated through its use of advanced technology. The firm went completely paperless back in 2014 and has operated a remote working model since 2016.

C.G. Moore, founding partner, explains the importance of technology to the firm:

We are very much interested in leveraging technology to let us work from anywhere, increase our efficiency, increase our production, minimize errors. And we're always trying to improve on those counts.

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Chester G. (“C.G.”) Moore, Ph.D., J.D., Partner at McBee Moore & Vanik IP, LLC

Business Case

When one client came to C.G. for help with IP due diligence for a potential merger, his passion for leveraging advanced technology to improve client service was to prove invaluable.

The objective was to help the client understand its IP value relative to that of its merger target. In addition to the usual due diligence procedures, the client asked C.G. to use PatentSight to see if the IP analytics platform could help provide insight.

Already aware of PatentSight from its use by other clients, C.G. has been waiting for an opportunity to put the platform to the test. Using PatentSight, he and his team were tasked with providing the client’s in-house IP Council with the insights they needed to help their board make a decision on the merger.

Another client was interested in understanding the relative value of their intellectual property because they were bringing in a lot of patents, they were looking to get acquired, acquire others or generate a lot more IP.

Basically, do a lot of different things in the intellectual property space that require an understanding of the relative value of things.

The challenge of delivering patent insights to management

As any IP expert knows, evaluating the strengths and weaknesses of a patent portfolio can be a time-consuming and laborious affair. Manual processes require legal teams to comb through large amounts of patent filings, prosecutions, and citations to find the information they need.

In the past, such analysis has been enabled by nothing more than a spreadsheet, making it slow, error-prone, and difficult to scale.

Even once the patent analysis has been completed, presenting insights and findings in a way that is easily understandable by the board can be a challenge.

Without expertise in analytics and IP law, the analysis can be opaque and hard to understand.

It's very, very labor intensive, it's kind of a black box process.

Their job then is to take all of this IP voodoo stuff and explain it to their bosses.

So, their bosses are going to say, well, why is this valuable? Why should we keep funding you?

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As a result, IP analysis has traditionally played an under-valued role in due diligence. This is a lost opportunity for firms, as the value of an IP portfolio can make the difference between whether a firm should consider a merger.

C.G. Moore and his team were therefore challenged to deliver their insights to the clients’ IP Council in a way that both the Council and the management board could see value in and easily understand.

Translating IP Language into Actionable Insights for Mergers & Acquisitions

PatentSight helps us think about things differently and expand the conversation.

C.G. Moore and his team leveraged the PatentSight platform to run a comparative analysis of the client’s IP portfolio and that of its merger target. This analysis assessed and scored the two firms’ patent families against the key performance metrics at the heart of the PatentSight analytics algorithm: Market CoverageTM and Technology RelevanceTM.

The resulting Competitive ImpactTM score enabled the platform to index the patent families of the two firms and uncover hidden insights into the strategic value of a potential merger.

For C.G., one of the benefits of the PatentSight platform is that it adds a further element to the due diligence process, and gives him and his team intelligence against which they can review and test what they found in their analysis of licenses and prosecution history. As such, PatentSight is an important factor in a complete toolbox through which legal firms and in-house IP Councils can assess the potential value, liabilities, and scope of a merger.

What’s really beneficial about the platform is that it generates a set of clear metrics that make it easier for everyone at the client’s firm to get on the same page – whether IP experts, or not.

Making sense of large volumes of data from disparate sources, PatentSight provided a set of intuitive visualizations of analytical results. In combination with the disclosure of how the results are obtained, that facilitated C.G.’s conversations with the client:

You could simply do analyses in PatentSight and generate some very pretty diagrams and give those to a CEO and it would still be a black box to them.

The difference here is that the methodology has been published and the base assumptions are known.

They can now say, OK, I see that figure and I understand what it's saying, but I also understand how the data created that, and so then you can have a much better discussion.

 

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The simple workflow enabled by PatentSight allowed C.G. to look at the firms IP data in different ways, ask different questions, and repeatedly test assumptions.

And thanks to PatentSight’s simple to grasp visualizations, the client was able to quickly feedback to C.G. where the analysis needed to go deeper and where it could be reined in.

He was thereby able to hone the data analysis on-the-fly to tailor it more exactly to the clients’ needs:

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As a result of the PatentSight analysis, C.G. was able to identify a number of key insights into the client’s firm and its merger target.

These included

  • pertinent information on the relative size of the two company’s portfolios over time,
  • relative value of the portfolios over time,
  • technology overlaps,
  • the pace of patent filings, and
  • the relevance of the technologies (i.e. which patents are for important inventions).

The Patent Asset IndexTM score provided by PatentSight shows the exact value, size and potential of portfolios and highlights which patent families were and weren’t protecting assets that would be useful to C.G.’s client.

McBee Moore & Vanik IP and its client’s IP council used PatentSight to reduce highly complex information into easy-to-understand and digestible charts, adding value to the due diligence process and thus helping the client’s management to make a decision on the merger.

The Result

As a result of PatentSight’s analysis it was clear that IP was the major asset for both the client and the target firm. Consequential, the business was able to make the decision not to proceed with what would have been an unsuitable match.

By providing another view into the risks and benefits of a potential merger, PatentSight can save time and effort, while helping firms allocate resources better and answer the most important questions more thoroughly.

And unlike other solutions on the market, PatentSight is completely transparent. The working of the algorithms and how it reaches its conclusions are open for all to see, so when the platform provides an insight, firms understand exactly how that insight was reached.

This means that lawyers like C.G. can present their conclusions with complete confidence that the analysis stacks up.

PatentSight - A unique approach to IP analytics

  • Evaluation of Technological Fit
    Objectively evaluate upcoming merger or acquisition targets based on the quality of their technologies, potential risks and technological suitability. The Patent Asset Index™ helps in assessing patent
  • Easy-to-Grasp Visualizations
    PatentSight Business Intelligence helps you effectively communicate your findings with powerful insights and visualizations, enabling you to turn your patent department into a strategic consulting unit.
  • Transparent Approach
    The methodology has been published and the base assumptions are known.

We hadn't seen anything that could do what PatentSight can do not nearly as easily. PatentSight is really quite easy to use, it's very intuitive.

C.G. Moore is now a complete convert to PatentSight. In part, this is down to the sheer usability of the platform and the breadth of analysis it enables:

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Watch the entire interview with C.G. Moore:

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PatentSight Case Study McBee Moore & Vanik IP
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