Law firm helps semiconductor company invalidate patents through prior use and reach a favorable settlement

“Chipworks found prior use that delivered a knock-out punch, substantially strengthening our negotiating position. It was great.”

                                                                                  - Senior patent litigator, U.S. Law Firm   

Situation

A semiconductor company was in patent licensing negotiations with a competitor twice its size. Its strategy was to try and invalidate the competitor’s patents. Knowing that it would need irrefutable evidence to reach a favorable settlement with such a strong opponent, the company sought to include prior use in its prior art search. However, neither the company nor its outside counsel had the resources to perform both types of searches. The law firm suggested contacting Chipworks, given its extensive library of existing reverse engineering reports and related product resources.   

Challenges

• Gather evidence that would invalidate the competitor’s patents
• Find a supplier capable of performing a prior use search

 
Chipworks Solution

• Performed a detailed investigation of the competitor’s patents and cited references
• Reviewed public literature resources
• Examined existing reverse engineering reports and device images maintained in-house
• Documented evidence of prior art and prior use

Results

• The company was able to invalidate more than half of the patents reviewed, substantially decreasing the amount of product-line revenue at stake
• The company was able to favorably settle with the competitor, saving millions in legal costs and royalty payments