Case-Intake Survey

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Patent Enforcement Opportunity – Intake Form

Thank you very much for giving Dovel & Luner the opportunity to evaluate this patent enforcement opportunity. The lifeblood of our firm is new matters and referrals. We appreciate that you are considering our firm to pursue this matter.
We have a stellar reputation enforcing patents, and we are actively seeking new patent enforcement matters that fit within our business model. In general, we are looking to pursue opportunities that satisfy the following criteria:

a solid infringement read;
against a large revenue base (i.e., the potential damages are over $50 million);
there are no licenses or encumbrances at amounts or royalty rates that will be bad comps and anchor future defendants to low damages amounts;
an inventor of the patent(s) is associated with the plaintiff and will be actively involved in the lawsuit;
we will be able to present a compelling invention story to the jury; and
the invention claimed in the patent(s) reflects a strong paradigm shift in the field and an important advancement rather than a small incremental improvement.

To help us evaluate this patent enforcement opportunity, we would appreciate if you could provide the following information regarding the opportunity.

Providing responses to the following questions will help us evaluate whether your patent enforcement opportunity would be a good fit for our firm.
We specifically designed the questions, based on years of evaluating patent enforcement opportunities, so that we can efficiently and effectively evaluate this matter and provide feedback without wasting unnecessary time and delaying our time to decision. We appreciate that this patent intake survey is lengthy and it may seem difficult to fill out; but we are going to have to obtain the requested information from you eventually to evaluate whether we are the right firm to enforce your patents. Using our form speeds up the process in two ways. First, it allows us to respond to our potential clients (such as you) faster, because we do not have to spend hours on phone calls trying to collect this information. Second, when we schedule a follow-up call or meeting, having this consolidated information will allow us to focus on the key issues.
The responses that you provide are attorney / client privileged communications.

Contact Information

Name

First Last

Phone

Your role: (e.g., inventor, client, referring attorney, etc.):

The Parties

The proposed client:

What entity or person would be asserting the patent, i.e., be the Plaintiff in the action.

State of formation / incorporation:

Has the proposed plaintiff been involved in litigation?

Yes

Describe the circumstances and outcome of any prior litigation:

Is the inventor(s) affiliated with the proposed client?

Yes

What is the relationship between the inventor(s) and the proposed client?

Is the proposed client an operating company?

Yes

Does the proposed client practice the patent(s) to be asserted (e.g., made, used, and sold products covered by the patent)?

Yes

If Yes, what products:

Has the proposed client ever practiced the patent(s) to be asserted (e.g., made, used, and sold products covered by the patent)?

The adverse parties (who are the alleged infringers who would be defendants in the contemplated lawsuits):

Adverse Parties

Alleged Infringer:	Product(s) that infringe:	Actions

There are no Parties.

Maximum number of parties reached.

Patent(s) to assert

Patent Numbers:

What is the total number of patents in the portfolio or portfolios to assert:

What are the patent(s) to assert as part of this patent enforcement opportunity (list up to 10 patents). If there is a large patent portfolio to assert, please list one or two patents that you consider to be good options to assert:

Patent 1:

Patent Number

Filing Date

Issue Date

Best claim to assert:

Either type in a claim number or type "I don't know."

Has an infringement claim chart been prepared for this patent?

Yes

Please Attach Claim Chart

Max. file size: 50 MB.

Who was involved in preparing the claim chart (e.g., inventor, attorneys, technical experts):

Patent 2:

Patent Number

Filing Date

Issue Date

Best claim to assert:

Either type in a claim number or type "I don't know."

Has an infringement claim chart been prepared for this patent (2)?

Yes

Please Attach Claim Chart

Max. file size: 50 MB.

Who was involved in preparing the claim chart (e.g., inventor, attorneys, technical experts):

Patent 3:

Patent Number

Filing Date

Issue Date

Best claim to assert:

Either type in a claim number or type "I don't know."

Has an infringement claim chart been prepared for this patent (3)?

Yes

Please Attach Claim Chart

Max. file size: 50 MB.

Who was involved in preparing the claim chart (e.g., inventor, attorneys, technical experts):

Patent 4:

Patent Number

Filing Date

Issue Date

Best claim to assert:

Either type in a claim number or type "I don't know."

Has an infringement claim chart been prepared for this patent (4)?

Yes

Please Attach Claim Chart

Max. file size: 50 MB.

Who was involved in preparing the claim chart (e.g., inventor, attorneys, technical experts):

Patent 5:

Patent Number

Filing Date

Issue Date

Best claim to assert:

Either type in a claim number or type "I don't know."

Has an infringement claim chart been prepared for this patent (5)?

Yes

Please Attach Claim Chart

Max. file size: 50 MB.

Who was involved in preparing the claim chart (e.g., inventor, attorneys, technical experts):

Patent 6:

Patent Number

Filing Date

Issue Date

Best claim to assert:

Either type in a claim number or type "I don't know."

Has an infringement claim chart been prepared for this patent (6)?

Yes

Please Attach Claim Chart

Max. file size: 50 MB.

Who was involved in preparing the claim chart (e.g., inventor, attorneys, technical experts):

Patent 7:

Patent Number

Filing Date

Issue Date

Best claim to assert:

Either type in a claim number or type "I don't know."

Has an infringement claim chart been prepared for this patent (7)?

Yes

Please Attach Claim Chart

Max. file size: 50 MB.

Who was involved in preparing the claim chart (e.g., inventor, attorneys, technical experts):

Patent 8:

Patent Number

Filing Date

Issue Date

Best claim to assert:

Either type in a claim number or type "I don't know."

Has an infringement claim chart been prepared for this patent (8)?

Yes

Please Attach Claim Chart

Max. file size: 50 MB.

Who was involved in preparing the claim chart (e.g., inventor, attorneys, technical experts):

Patent 9:

Patent Number

Filing Date

Issue Date

Best claim to assert:

Either type in a claim number or type "I don't know."

Has an infringement claim chart been prepared for this patent (9)?

Yes

Please Attach Claim Chart

Max. file size: 50 MB.

Who was involved in preparing the claim chart (e.g., inventor, attorneys, technical experts):

Patent 10:

Patent Number

Filing Date

Issue Date

Best claim to assert:

Either type in a claim number or type "I don't know."

Has an infringement claim chart been prepared for this patent (10)?

Yes

Please Attach Claim Chart

Max. file size: 50 MB.

Who was involved in preparing the claim chart (e.g., inventor, attorneys, technical experts):

Open Continuation

Is there an open continuation currently pending at the US Patent office?

Yes

Foreign Counterparts

Are there any foreign counterparts of the U.S. patents?

Yes

In what countries are there foreign counterparts?

Comments:

Have the patents been through any post-grant proceedings (such as reexaminations, re-issues, IPRs):

Patent 1

Has this patent been through any post-grant proceedings:

Yes

What type of post-grant proceeding?

What was the result of the proceeding?

Patent 2

Has this patent (2) been through any post-grant proceedings:

Yes

What type of post-grant proceeding?

What was the result of the proceeding?

Patent 3

Has this patent (3) been through any post-grant proceedings:

Yes

What type of post-grant proceeding?

What was the result of the proceeding?

Patent 4

Has this patent (4) been through any post-grant proceedings:

Yes

What type of post-grant proceeding?

What was the result of the proceeding?

Patent 5

Has this patent (5) been through any post-grant proceedings:

Yes

What type of post-grant proceeding?

What was the result of the proceeding?

Patent 6

Has this patent (6) been through any post-grant proceedings:

Yes

What type of post-grant proceeding?

What was the result of the proceeding?

Patent 7

Has this patent (7) been through any post-grant proceedings:

Yes

What type of post-grant proceeding?

What was the result of the proceeding?

Patent 8

Has this patent (8) been through any post-grant proceedings:

Yes

What type of post-grant proceeding?

What was the result of the proceeding?

Patent 9

Has this patent (9) been through any post-grant proceedings:

Yes

What type of post-grant proceeding?

What was the result of the proceeding?

Patent 10

Has this patent (10) been through any post-grant proceedings:

Yes

What type of post-grant proceeding?

What was the result of the proceeding?

Chain of Title

Before filing a patent enforcement action, it will be important to make sure that the plaintiff in the litigation holds all right, title, and interest to assert the patent(s) and collect for past infringement. The following information will help us evaluate if there are any chain of title issues:

Original Inventors

Inventor:	From:	To:	Date:	Actions

There are no Inventors.

Maximum number of inventors reached.

Has the ownership of the patent(s) ever been disputed or challenged?

Yes

Describe the Circumstances:

Description of the Invention(s):

If we move forward with your patent enforcement opportunity, it will be important to succinctly describe the essence of the claimed invention to a judge and jury.

Here is an example of such a description:

“The ’930 patent addresses a problem for computer networks that deliver power to attached devices, such as IP phones or Wi-Fi access points. Delivering power through the same cables that transmit and receive data (e.g., Ethernet cables) can eliminate the need for a separate power supply for the device, allowing it to operate without a wall outlet. But some devices cannot accept power in that way, and sending them power over Ethernet can damage them. The ’930 patent claims a method for sensing whether attached devices can accept power through those cables."

In one paragraph, describe the invention claimed in the patents to be asserted:

It will also be important to succinctly describe how the claimed invention is a paradigm shift in the industry – that is, the invention is a shift from the conventional standard thinking in the art.

Example:

At the time of the ’930 invention, the “conventional” detection method was “to use a data signal that would carry information.” Conventional methods did not perform detection by using a non-data signal electrical “current” delivered on the path used to provide power. In fact, the conventional wisdom was to avoid sending any current on the power path to the remote device “until after the detection process determined” that the device could receive remote power. Whereas prior methods relied on data signals, the patented method uses “low level current”—with no data signal in it—to determine whether a device can accept remote power.

In one paragraph, describe the paradigm shift claimed in the patents to be asserted:

Damages

What is the infringing revenue base:

Alleged Infringers

Alleged Infringer:	Product Name:	Product Revenue:	Actions

There are no Entries.

Maximum number of entries reached.

Repeat the infringer's name if more than one product needs to be listed.

What is the value of the claimed invention over the non-infringing alternatives?

To determine an applicable royalty rate, we will need to evaluate the benefits of the claimed invention over the non-infringing alternatives. Is the invention a paradigm shift invention (rather than incremental advancement) that has significant benefits over the non-infringing alternative such that an alleged infringer would pay a significant amount to license the patent(s)?

Here is an example:

A reliable detection method is critical for a PoE system. A detection method would not be reliable if it created false negatives (determining that an access device cannot accept remote power when it can, in which case the access device will not operate) or especially if it created false positives (determining that an access device can accept remote power when it cannot, in which case the access device will receive power through the Ethernet cable even though it is not designed to do so). Both false negatives and false positives create an ineffective PoE network and customer dissatisfaction. The detection method described and claimed in the ‘930 patent includes embodiments that are more reliable than other detection methods at correctly distinguishing between access devices that can accept power and those that cannot.

Benefits Over the Non-Infinging Alternative:

Licenses or Encumbrances

Have the patents to be asserted been licensed to any other parties (or is there a covenant not to sue any other parties):

Yes

Please Provide the Following info for each License:

Patent:	Licensor:	Licensee:	Date:	Terms:	Actions

There are no Entries.

Maximum number of entries reached.

Prior / Current Litigation

Are the patents currently being asserted:

Yes

In what jurisdiction?

Who is the defendant?

Who is representing the patent holder?

Have the patents to be asserted been involved in any prior litigation?

Yes

Describe the prior litigation including (a) the parties, (b) the outcome, (c) whether there were any proceedings at the PTAB, etc.

Notice and Copying

Has the adverse party been put on notice of the patent(s)?

Yes

If yes, Describe the circumstances (e.g., was a letter sent; when was the letter sent; where there discussions, etc.):

Is there evidence that the alleged infringer copied either the patent or plaintiff?

Yes

If yes, Describe the evidence that the Adverse party copied the patent or plaintiff:

Prior Evaluations:

Has another firm evaluated this patent enforcement opportunity?

Yes

What firm?

What is the status with the other law firm?

How did you learn about our firm:

Has this patent enforcement opportunity been presented to any litigation funder(s)?

Yes

Which funder(s)?

What was the outcome?

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