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Recommended - Firms: transactions
A coal-and-ice partner to those seeking the best in patent transactions and monetisation support, Steger IP was only founded in 2018, but is already lighting up the patent world. It has a gift for ascertaining the untapped value in high-spec patent portfolios and then getting huge returns on it; the team looks way beyond simply narrowing down assets to assert in litigation. The ensemble is the brainchild of superlative strategist Steven Steger, a former chief IP counsel and “game changer who is assembling a world-class team”. In an inspired move, he recently recruited Elizabeth Rudersdorf, one of the most organised deal drivers that a client could dream of; her work – such as managing claim charting activity and outreach to potential buyers – is never less than flawless. She acts as outside general counsel to Allied Inventors and oversees the monetisation of its patent portfolio – a task that, in the past year, has seen her lead on dozens of deals involving hundreds of patents in areas such as augmented reality, social networking and automotive and financial technology.
Steger IP was founded by Steve Steger in 2018. Elizabeth Rudersdorf joined the firm in 2020. Mr Steger and Ms Rudersdorf have a combined experience of over 35 years of practising law and, more specifically, of advising clients with respect to their intellectual property and how to extract value from it. Mr Steger and Ms Rudersdorf have worked together for over 10 years, including as partners at Global IP Law Group (which Mr Steger founded and for which Ms Rudersdorf was the first attorney hired), and as counsel and client.
The firm’s approach is to counsel each client based on its business needs and risk profile, step by step through the realisation of its goals. The firm partners have acted for every type of client, ranging from individual inventors to small start-up companies, and some of the largest technology companies in the world. Steger IP’s partners have represented clients as sellers, buyers, debtors and creditors, all under the umbrella of IP counsel acting to maximise IP value. They have also played the role of client, including as chief IP counsel at a large multinational company, chief IP counsel at a start-up company and general counsel at an IP fund. From this experience, Steger IP understands how a client thinks and appreciates that IP strategy is often one part of a more complex set of business needs.
Steger IP is just shy of three years old, but its partners’ patent transaction and monetisation experience is unique. Together, the firm partners have secured billions of dollars on behalf of clients for their intellectual property. They have worked on the largest patent sale ever and the largest IP-backed secured debt financing deal in history. Each of these representations was unique both in transaction value and in the role played by now Steger IP partners. Each involved advising a client regarding its portfolio strengths, weaknesses, monetisation options and strategy, providing a valuation and acting for the client through the close of the deal.
Steger IP leverages decades of distinct experience and continues to advise clients in an improved way, from beginning to end. Currently, the firm manages a set of high-value client portfolios for which it advises on monetisation strategy and execution of those portfolios. Since its founding, the firm has closed over a dozen sale or licence deals on behalf of its clients for an aggregate value in the tens of millions of dollars.
Below are noteworthy representations by Steger IP partners over the past 10 years:
- Acting for an IP fund to manage its patent monetisation programme, which has closed more than 25 deals and is still actively monetising its portfolio. A few of those deals include:
- sale of a semiconductor portfolio to an operating company for a seven-figure price;
- transfer of IP rights related to video compression patents;
- licence of a financial transactions portfolio to a US aggregator;
- sale of a cloud portfolio to an operating company; and
- sale of an augmented reality portfolio to an operating company;
- Represented a location-based services company to license its portfolio to a leading US consumer device company for eight figures;
- Acted for an individual inventor to sell his portfolio for $6 million to a Japanese operating company;
- Represented Nortel Networks in the sale of its 6,000-asset patent portfolio for $4.5 billion to a buyer consortium including Apple, Microsoft, Ericsson, RIM, and Sony – the largest patent sale in history;
- Acted for Alcatel-Lucent and provided a valuation of its 45,000-asset patent portfolio, which was used to obtain financing in excess of €2.1 billion, where the patent assets were secured as collateral;
- Acted for a potential buyer of Blackberry by leading its IP diligence efforts and providing a portfolio valuation to financing sources;
- Acted for a large licensing entity to build a 10-year strategic licensing plan including technology and market recommendations, financial modelling and revenue projections; acted for the same entity to review, analyse, value and market one of its high-value long-term evolution patent portfolios; and
- Represented the Official Committee of Unsecured Creditors to Eastman Kodak in its Chapter 11 bankruptcy proceedings; advised the committee with respect to all IP-related issues including the sale of Kodak’s digital capture portfolio to consortium of buyers for around $525 million.