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IP Transactions

  • Semiconductor Foundry Patents: On behalf of GlobalFoundries, the nation’s largest semiconductor foundry, negotiated licenses for a substantial patent portfolio to multiple global manufacturers and a wrap-up sale of the portfolio to one of those licensees.
  • E-commerce Patents: Represented Shopify in its first patent acquisition transaction, including identifying potential portfolios based on Shopify’s criteria and negotiation of the deal.
  • Semiconductor Patents: On behalf of Advanced Silicon Technologies, acquired patents from Advanced Micro Devices and subsequently licenses them to a series of auto manufacturers and OEM suppliers.
  • Semiconductor Patents: On behalf of Advanced Silicon Technologies, acquired patents from Advanced Micro Devices and subsequently licenses them to a series of auto manufacturers and OEM suppliers.
  • Trade secrets: Represented international security company on transfer of trade secrets and patents; products were rapid testing of hazardous chemicals for homeland security and other security and law enforcement entities.
  • AI patents: Helped AI company monetize invention for machine learning technology that aids in facial recognition; international patent and trade secret licensure; drafted transaction documents to comply with complex Chinese licensing requirements.
  • Copyright: Managed the sale of a recorded book company including the diligence and assignment of thousands of audio books.
  • Open Source: Expertise in drafting open source policies; structuring open source policies for FinTech companies engaged in developing financial software; knowledge of terms and code of vast majority of open source software used within and to support the development of financial software
  • Satellite technology: developed strategy for companies developing satellite software to guarantee implementation of technology through standard setting organizations; developed standard setting organization for key companies operating in the space.
  • Biotech patents: Developed strategy for monetization of unique technology developed by start-up client for treatment of cancer, diabetes, and more; included negotiating research and monetization plans with large scientific research organizations, prosecution of IP applications, shepherding FDA approval process, trademark and trade dress strategy.
  • Telecom Infrastructure Patents: Acquired out of bankruptcy on behalf of a private equity client the patent assets of Powerwave Technologies, a pioneer in telecommunications infrastructure products. Subsequently negotiated sale of the patents to Intel in a public transaction.
Acquisition & Monetization of Semiconductor Fabrication and Packaging Patents Case Study
Mintz was hired to acquire and monetize patents from GlobalFoundries. After deploying IP mining and asset identification techniques to identify and negotiate the acquisition of 120 world-class patents, Mintz created and drove a successful licensing revenue program.
Patent Sale and License Transactions for GlobalFoundries Case Study
Mintz identified, licensed, and then sold a tranche of strategic patents for GlobalFoundries, the largest semiconductor foundry in the US.
AST Acquires Patents from AMD and Secures License Agreements Case Study
Mintz helped Advanced Silicon Technologies (AST) acquire circuit design patents from Advanced Micro Devices, identify potential infringers, and ultimately generate substantial licensing revenue through enforcement and licensing strategies targeted to each infringer.
Shopify Completes Its First-Ever Patent Acquisition Case Study
Shopify hired Mintz to identify and acquire patents to strengthen its portfolio. Mintz’s IP Transactions team identified potential patents, conducted due diligence to value the patents, and negotiated the purchase agreements, acquiring 17 patent families with 50 patents for Shopify.
Mintz Advises Gores in Patent Acquisition and Subsequent Sale to Intel Case Study
Mintz represented private equity company The Gores Group in assessing and acquiring 1,400 US and foreign patents related to telecommunications infrastructure technology from Powerwave Technologies, which was then in bankruptcy proceedings, and selling the portfolio to Intel Corporation.
Acquisition and Monetization of Wireless Portfolio Case Study
Mintz helped the Gores Group, a private equity firm, acquire and then monetize a wireless infrastructure portfolio from Powerwave Technologies, which was in bankruptcy. The sale closed less than 15 months after diligence began and returned substantial value for the client.