Tax software copyright and trademark infringement damages analysis
Juhee Park, Director of Upstream Partners, provided analysis and an assessment of economic damages on behalf of a payroll services company that had developed one of the first software products providing electronic tax and payroll filing services within a specific industry. The dispute related to infringement of our client’s copyrighted software as well as several of its trademarks. Ms. Park provided an analysis and an expert report on economic damages related to copyright and trademark infringement in addition to claims of misleading representation, cyberpiracy and unfair competition. Ms. Park’s report was pivotal to the case settling favorably for our client
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Mining exploration company valuation with extensive portfolio of patents and trademarks
Upstream’s valuation of IP assets for a publicly traded global leader in mining exploration product and services results in capital successfully raised. Through the analysis of an extensive patent portfolio and financials, Upstream aligned the company’s IP assets with business lines and economic impact. The capital enabled the company to ramp up internal production and meet the growing demand for its technology.
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Software development company valuation analysis and licensing potential
Upstream’s strategic assessment of pricing and licensing potential was important in the future organizational planning for a software company specializing in solving complex problems with data analytics and artificial intelligence. For the valuation, Upstream reviewed financials and assed the market value to provide a strategic plan.
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Medical Device Business Plan and Financial Model
Upstream consulted for a multinational pharmaceutical company involving an infringed medical device in the molecular diagnostic space. Upstream identified a patent portfolio and companies that were likely infringing on the client’s IP. As a result, Upstream team executed royalty bearing licenses with more than ten companies. Total revenues from this program exceeded $30 million.
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Patient Care Model and Program - Sale of Assets
Upstream advised a university-based initiative to transition IP of an evidence-based patient care model to a commercial partner. The model sold in six months due to Upstream’s IP monetization analysis of developing value propositions, marketing materials, identifying strategic partners, and negotiating agreement terms.
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Royalty Stream Buyout Negotiations - Cancer Therapeutic
Upstream aided a renowned research institution to negotiate a buyout of future royalty streams for a patented cancer therapeutic technology. With Upstream’s analysis, the institute sold the royalty stream for eight figure payment with potential longer term payments. This creative deal structure was supported by Upstream’s projections, assessment of competitors, preparation of different scenarios for leadership, and development of buyout terms.
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Trade Secret Defense
Upstream worked on a trade secret violation that accused our client, the defendant, significant damages compensate for alleged harm. Through Upstream’s rebuttal damages analysis and Mark Chandler’s testimony in an arbitration proceeding, our was cleared of violating the trade secret and no financial damages were assessed.
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IP Asset Valuation in the Defense Industry
Upstream’s IP valuation of a patented technology for a defense company results in capital successfully raised. Through the analysis of an extensive patent portfolio and financials, Upstream aligned the company’s IP assets with business lines and economic impact. The capital enabled the company to ramp up internal production and meet the growing demand for its technology.
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University Technology Assessment and Management Process
Upstream conducted a full review of the technology assessment and management process for a major university. This resulted in facilitating support from board members, faculty and staff was critical to the success of this undertaking at the university.
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MUSC Institute for Applied Neuroscience
Upstream conducted a full review of the technology assessment and management process for a Medical University of South Carolina. This resulted in the creation and funding of the Medical University of South Carolina's Institute for Applied Neuroscience.
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Pharmaceutical Drug Delivery
Upstream provides a valuation on drug delivery patent assets for specific geographical territories that served as the basis of negotiations between the IP holder and licensees.
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Virtual Reality IP Asset Management and Licensing Program
Upstream assisted a virtual reality company to secure licenses to the company’s software and its patents, which allowed the client to develop collaborative relationships with a range of commercial partners. Upstream identified the client’s IP assets and entities that enabled the client’s technology, restructured the software licensing program, and valued IP assets.
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IP Identification and Catalogue, Population Health Management
Upstream conducted an IP catalogue for a company focusing on population health management through evidence-based medicine. By identifying IP assets and working with IP counsel to protect trade secrets, copyrights (algorithms and database architecture), and patentable matter, the client was able to its IP rights in partnership and other transactions.
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Commercial Assessment & Licensing, Wireless Commerce Technology - Medium Size Company
Upstream assisted a medium-sized company that develops wireless commerce technology to extract value from the consumer technology IP it was no longer using for its core business. As a result of the analysis, the client’s Board of Directors decided to explore a sale of the patent portfolio.
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Licensing Assertion - Molecular Diagnostics Technology - Major Multinational
Upstream consulted for a multinational pharmaceutical company involving an infringed medical device in the molecular diagnostic space. Upstream identified a patent portfolio and companies that were likely infringing on the client’s IP. As a result, Upstream team executed royalty bearing licenses with more than ten companies. Total revenues from this program exceeded $30 million.
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License Buyout Negotiation
Upstream assisted in negotiations for an ophthalmic device buyout with an analysis of the market, valuation, and negotiation points to help increase the amount of the buyout offer. Upstream’s analysis helped achieve a payment amount greater than five times the initial amount proposed.
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IP Assertion and Litigation - Medium-Sized Teaching Hospital
Upstream’s analysis for patent infringement of breakthrough medical technology developed by a medium-sized teaching hospital resulted in a quick litigation settlement. Upstream analyzed the patents, approached the multinational corporation was suspected to be infringing with a license, and initiated litigation. The IP owner earned $3M in royalties in the first year after the deal was concluded, and ongoing running royalties.
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