Maiorana Patent Law, PA

From Two Foundational Patents to a Strategic Patent Portfolio

Before founding MAI Labs, LLC, I had already spent years working with many technology companies. Their intellectual-property portfolios taught me a great deal about how foundational patent portfolios develop over time.

One company was Health Hero Network, Inc., an early pioneer in remote patient monitoring.

The Foundation

Health Hero's patent portfolio had its roots in technology developed in the late 1990s. At its core were a small number of foundational inventions directed to remotely interacting with patients, collecting health-related information, and using networked systems to assist in managing patient care.

What ultimately became a very large patent portfolio did not begin with dozens of unrelated inventions. Much of it grew from approximately two foundational bodies of patent disclosure.

Those original applications were prosecuted for several years before my firm became substantially involved with the portfolio.

Building the Portfolio

When my firm took over responsibility for much of the Health Hero patent portfolio, we spent approximately the next five years developing it aggressively.

This was not simply a matter of obtaining allowance of the claims already pending.

We studied the foundational disclosures, identified additional aspects of the technology that warranted protection, developed new claim strategies, and maintained extensive continuation practice. At one point, Health Hero had approximately 80 U.S. patent applications pending.

Over time, dozens of U.S. patents issued.

That experience taught me an important lesson about foundational intellectual property: the value of a good patent disclosure is not necessarily exhausted when the first patent issues. A sufficiently rich disclosure can support different claim strategies as the technology develops, competitors enter the field, and the commercial significance of particular aspects of the architecture becomes clearer.

The Patents Become Commercial Assets

Eventually, the portfolio moved beyond ordinary patent prosecution.

By 2006, Health Hero was communicating with other companies concerning its patents and potential licensing. Public court records later documented, for example, Health Hero's communications with Cardiocom concerning issued patents and related pending applications.

In 2007, Health Hero also brought patent litigation action against Alere Medical.

At that point, the patents were no longer simply assets being developed for possible future use. They were becoming part of the company's competitive and licensing strategy.

Bosch Acquires Health Hero

In 2007, Health Hero Network was acquired by Bosch.

The financial terms of the transaction were not publicly disclosed.

My firm continued working with the portfolio for a period following the acquisition. This created another stage in my experience with foundational patents: seeing what happens when patents developed through years of continuation practice become important enough to face serious scrutiny.

Reexaminations and the Beginning of Patent Warfare

As the Health Hero patents became involved in licensing and litigation, competitors began attacking them through proceedings before the U.S. Patent and Trademark Office.

My firm became involved with multiple patent reexaminations while continuing to deal with the underlying portfolio. We won several reexaminations. But more followed. At one point, five separate reexamination matters were underway in connection with the broader disputes.

This was quite different from ordinary patent prosecution.

A patent examiner considering an application during normal prosecution is trying to determine whether the claims satisfy the requirements for patentability. A well-funded adversary challenging an important patent has a very different incentive: find the best prior art available, develop the strongest possible invalidity arguments, and eliminate or narrow the claims.

That kind of scrutiny provides a very different perspective on patent drafting and portfolio development.

Bosch Takes the Portfolio Forward

Bosch subsequently used patents originating in the Health Hero portfolio in an active licensing and enforcement program.

In 2012, Bosch sued Cardiocom for infringement of six related U.S. patents. Four of those patents had issued after Health Hero's earlier communications with Cardiocom, illustrating one of the reasons continuation portfolios can become strategically important: the patent portfolio can continue developing while the underlying commercial dispute and technology evolve.

The Cardiocom dispute became extensive. Additional related patents were asserted, and the patents were subjected to reexaminations and inter partes review proceedings. A later proceeding identified two Bosch infringement actions involving two separate groups of six related patents. ([PTACTS][3])

Bosch also asserted Health Hero patents against ExpressMD. That litigation ultimately produced a commercial result. In 2015, ExpressMD and its parent entered into a license and settlement agreement with Bosch, and the infringement litigation was dismissed with prejudice. The financial terms were not publicly disclosed. ([SEC][4])

Watching a Portfolio Complete Its Lifecycle

I had taken over a portfolio based largely upon a small number of foundational inventions and spent years helping develop those disclosures into a deep collection of issued patents and pending continuation applications.

I then saw those patents move through essentially the complete lifecycle of strategically important intellectual property: foundational invention → patent prosecution → continuation development → issued portfolio → acquisition → licensing → reexamination and post-grant challenges → patent litigation. Not every patent survived every challenge, and not every dispute produced a publicly disclosed result. That is the reality of serious patent enforcement.

But patents originating from those foundational disclosures remained commercially significant many years after the original inventions were made.

A Lesson I Carried Forward

The Health Hero experience has stayed with me.

A foundational patent portfolio is not created simply by filing a large number of applications. Nor is its potential necessarily apparent from the first patent that issues.

The starting point is a sufficiently important technical idea and a sufficiently rich disclosure. From there, a portfolio can be developed over time as the technology, prior art, competitive landscape, and commercial applications become better understood.

Sometimes that process takes many years

Today, as I develop the intellectual-property portfolio associated with MAI Labs, LLC, I approach that work with the benefit of having already watched one foundational technology portfolio travel much of that journey.

The technology is entirely different.

The lesson about foundational intellectual property is not.

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