A pioneering medtech company in cancer diagnostics

SciBase AB is a Swedish medtech company founded in Stockholm in 1998. SciBase has developed a unique point of care device for the accurate detection of malignant melanoma (skin cancer), which significantly increases the physician’s ability to detect and monitor skin tissue alteration.

Skin cancer is the most common and one of the fastest growing form of cancer in the world, and malignant melanoma is the most dangerous form of skin cancer with a high mortality rate if not detected in time. Today, some 50-60 million annual examinations for malignant melanoma are performed, of which 5-6 million lead to excisions. Of these, some 93-97 percent are shown to be benign. With this product, the number of unnecessary interventions can be reduced by up to 40 percent.

Emerged from more than 20 years of academic research

The SciBase method is based on a technology called Electrical Impedance Spectroscopy (EIS), which uses the varying electrical properties of human tissue to categorize cellular structures and thereby detect malignancies. It has emerged from more than 20 years of academic research at Karolinska Institutet Stockholm. Through a crooked path of theoretical philosophy, applied physics and sensing technologies, Stig Ollmar, researcher and founder of SciBase, and his research colleagues established the foundation of what today is the SciBase method at Karolinska Institutet Stockholm in the early 1990s. Further research was conducted, with great improvements of the method as a result, which led to SciBase being founded in 1998. Since then, further research, a pilot study, and a number of clinical studies has improved and proved the benefits of the method.

A strong and global IP portfolio

Our Managing Partner and Head of Patent Department, Mathias Loqvist has been working with SciBase since 2002. Through a close cooperation we have assisted SciBase with patent services ranging from drafting and prosecution of their patent applications to strategical advice in connection with IPO and Due Diligence as preparation for investments. Our work has resulted in a global and comprehensive patent portfolio. We are also handling SciBase’s trademarks worldwide, acting as the lead agency and coordinating all work globally.

Improving health care for patients worldwide

Three consecutive and comprehensive clinical studies, with excellent clinical results, have been performed to date for the SciBase method. A successful pivotal study was finalized in 2012 including 1,951 patients and 2,416 lesions at 22 sites in Europe and US.

Today, SciBase is a listed company with a product on the market, approved for sales in Europe, Australia and USA.

Moving Media Nordic has invented groundbreaking technology for the TV industry

Moving Media Nordic is a premier technical service provider and rental house for broadcast equipment. The company’s most prominent service is called DOB – Distance Outside Broadcast. The invention enables broadcasting companies to produce live international sport feeds and other multi-camera productions from one control room with full signal and communication control, without degradation. This is a major breakthrough in the TV industry. Previously, a large production bus had to be brought to the filming location and used as a control room. DOB saves both costs and time without compromising the quality of the production. The invention has already received worldwide attention, for example, the Olympic Games in London 2012 was produced using Moving Media Nordic’s invention.

We, Groth & Co, have drafted and prosecuted the patent application for Moving Media Nordic’s DOB. The patent has been filed in Sweden, Europe, Eurasia, South Africa, Australia, USA, Brazil, Canada, China, India, Japan and South Korea.

Seven different oppositions was filed against the patent

At the Swedish Patent- and Registration Office, PRV, seven different oppositions were filed against the granted patent. At the EPO, the written proceedings led to oral proceedings during spring of 2016.

Moving Media Nordic were successful at the EPO and at PRV

On behalf of Moving Media Nordic, we handled both hearings at both patent offices. The fact that the opposition case in Sweden had seven different oppositions from eight different large media companies, all represented by prominent IP or general law firms, made this case both extraordinary and challenging.

The opposition proceedings in Sweden were put on hold awaiting the decision from the EPO. At the EPO, the written proceedings led to oral proceedings where we were successful and got the European patent granted.

Once the EPO announced the decision to grant the patent, PRV in Sweden held an oral hearing in August 2016. The hearing was a long process; as each attending opponent was given time to state his or her individual argumentation, which was then met by us. The ruling was announced in May 2017, that the Swedish patent was maintained. This means that Moving Media Nordic now holds a valid patent for a groundbreaking innovation on two of its most important markets.

We now assist Moving Media Nordic in the validation of the European patents as well as in licensing negotiations and drafting of related agreements.

Plantagon is a world leader in vertical farming

Plantagon International AB operates in the urban agriculture sector and is a world leader in vertical farming. Their vertical greenhouses reduce the need for energy, water and pesticides, and make use of emissions of carbon dioxide, CO2, and the waste heat from homes, industries and offices. Plantagon is a Swedish company but their concept creates the greatest benefit in multimillion cities with high population density, particularly in Asia.

Assets in tech start-ups exists mainly in IP

Plantagon is a growing tech start-up, still without established revenue streams. Therefore, traditional methods for valuation based on cash flow does not work in this type of company, where the assets are intangible and exists mainly in IP. It is therefore the IP portfolio of Plantagon that constitutes the company’s value.

Plantagon wanted to use its IP portfolio to attract further funding. We have previously valued Plantagon’s patent portfolio (read the case here). However, there was no established value for Plantagon’s brand.

Brand valuation based on the international ISO standard

We conducted a brand valuation based on Swedish Standard SS-ISO 10668:2010 (Brand valuation – Requirements for monetary brand valuation (ISO 10668:2010, IDT)). The value is calculated according to the standard by three parallel analyses; one financial, one legal, and one market analysis. The financial analysis can be done based on returns, market value or costs, and for Plantagon, cost estimate was chosen, as neither return nor market valuation had given a fair value. The legal analysis investigates issues related to both ownership and trademark protection, such as registrations, distinctiveness, competitive rights, possible ongoing disputes, etc. The market analysis examines the forecasts of market size, behavioural factors and the brand’s communicative strength. The standard also sets specific requirements regarding transparency, validity, reliability, definition, purpose and value concept. We collected the material for valuation through interviews with key people, database searches, internal policy documents and other external sources.

Through our strategic approach and our established partnerships, we could establish a value for the brand within a narrow range, based on the financial information and adjusted with regards to legal and market strengths and weaknesses.

Plantagon could, after our valuation, highlight a previously hidden asset and use this asset to attract further funding as well as basis for future strategic considerations.

IP Due Diligence in connection with a sale of a company

A large investment company was interested in buying a Swedish engineering company, Roplan International AB, which was up for sale by the founder. Through the general law firm Hamilton, we, Groth & Co, were engaged to do an IP Due Diligence of the engineering company’s patent portfolio.

We examined possible weaknesses of the patent portfolio

The patent portfolio at hand consisted of 27 patent families in Europe, USA, China, Japan and Korea. Our task was to conduct an IP Due Diligence on behalf of the potential buyer, and more specifically to find flaws in the patent portfolio, to be used as leverage in the negotiations of the purchase price.

Our qualitative research was used in the negotiations on the purchase price

Our IPDD followed our internally developed standard investigation method, where we first looked at the formalities of the portfolio for example, ownership of the patents, licensing agreements and agreements with the inventors. Secondly, we looked at the quality and substance of the patent portfolio which included factors such as the patents’ relation to the actual products, the strength of the patents and the patent claims in relation to prior art.

We completed the IP Due Diligence successfully and the parties could later reach an agreement with a purchase price of approximately 30 million Euros.

Melodifestivalen is one of the most watched TV programmes in Sweden

Sveriges Television (SVT) is the Swedish public service television company. Since 1959 SVT has been broadcasting the immensely popular music competition Melodifestivalen. Melodifestivalen is the Swedish qualification for the European Song Contest, and the programme is each year one of the most watched TV programmes in Sweden. The record was set in 2006 when the finale was watched by 4.2 million viewers. Every year since 2000, about 85% of the Swedish population between 3 and 99 years has watched any of Melodifestivalen heats or final programmes. Melodifestivalen is a registered trademark, owned by SVT, for a large number of goods and services, including entertainment, information about entertainment, and presentation of live performances.

A competing TV channel filed two competing trademark applications

Kanal 5 AB (Channel 5) filed two trademark applications for Schlagerfestivalen and Schlager-SM with the Swedish Patent and Registration Office (PTO), which the PTO approved. The trademark applications included the same goods and services as SVT’s trademark registration Melodifestivalen, and they also have a similar meaning in Swedish. Channel 5 now owned two registrations that competed with the beloved trademark Melodifestivalen.

We managed to revoke both competing applications

The new trademarks could create confusion for viewers. At the request of SVT we objected against the registrations Schlagerfestivalen and Schlager-SM, and demanded that they be revoked. We submitted extensive and strategically selected arguments and evidence in SVT’s advantage, which demonstrated the television programme’s spread and the trademark’s awareness. This was countered by Channel 5 through their legal representatives.

With our argumentation SVT was successful in the disputes. The PTO noted in its decisions that Melodifestivalen is an established trademark which is well known in the so-called relevant public. Furthermore, the PTO stated that Melodifestivalen thereby has enhanced protection regarding entertainment, information about entertainment, and presentation of live performances. The PTO noted that Schlagerfestivalen is visually, phonetically and by association similar to Melodifestivalen, at the same time as it relates to identical goods and services. Therefore, there is a likelihood of confusion between the trademarks. The PTO decided to revoke Channel 5’s registration for Schlagerfestivalen.

Regarding Schlager-SM the PTO however stated that the trademarks are not confusingly similar. However, the PTO stressed that Melodifestivalen is known in a substantial part of the relevant public and that it would make a link between the trademarks, which are conceptually similar and have a strong connection regarding entertainment. Schlager-SM would draw unlawful advantage of the reputation of Melodifestivalen, a reputation that SVT has built over many decades. The use of Schlager-SM would also be detrimental to the distinctive character of Melodifestivalen. With this in mind the PTO also revoked the registration of Schlager-SM regarding entertainment, cultural services, and artistic services.

Plantagon cultivates in urban environments to solve future food shortages

Plantagon International AB was founded to meet the challenge of producing food for the earth’s growing population. It is estimated that by 2050, 80% of the world’s population will live in cities. Plantagon’s concept is to cultivate in urban environments, that is to say, to produce and deliver fresh produce where the consumers live. Plantagon operates in the urban agriculture sector and is a world leader in vertical farming. Their vertical greenhouses reduce the need for energy, water and pesticides, and make use of emissions of carbon dioxide, CO_2, and the waste heat from homes and industry. Plantagon has won numerous awards and has recently been named in the Red Herring Top 100 Global Awards as one of the world’s most innovative companies.

Plantagon’s assets are knowledge capital

Plantagon realized they needed a strategic advisor in intellectual property to convert into valuable assets their vision of urban farming and the knowledge capital that was inherent to their concept. These assets will ensure the future of the company and its vision.

IP became a key part of Plantagon’s business strategy for global expansion

Groth & Co provided both strategic and tactical advice to Plantagon and ensured that IP became a natural part of Plantagon’s business strategy for global expansion. Through our goal-oriented strategic IP work, we strengthened the project’s prospects for future global success, and with long- term international cooperation with countries like China, India and Singapore we created the foundation for future success.  

Plantagon is a world leader in vertical farming

Plantagon International AB operates in the urban agriculture sector and is a world leader in vertical farming. Their vertical greenhouses reduce the need for energy, water and pesticides, and make use of emissions of carbon dioxide, CO₂, and the waste heat from homes, industries and offices. Plantagon is a Swedish company but their concept creates the greatest benefit in multimillion cities with high population density, particularly in Asia.

Plantagon sought capital based on their IP

Plantagon sought capital for international expansion. The company’s biggest asset is its IP portfolio, and it was the company’s IP that would be the basis for funding. nevertheless, Plantagon lacked a defined value of their intellectual assets. Traditional methods based on cash flow is not applicable on this type of company where the assets consist primarily of IP. With that background, we were asked to identify the monetary potential of Plantagon’s IP portfolio.

Plantagon used our valuation of the IP portfolio in negotiations with investors and licensees

By applying qualitative and quantitative methods, we investigated about a dozen value indicators relating to, among other things, Plantagon’s IP portfolio, organization and their business environment. We combined the outcome of these indicators with an IP Due Diligence and a Freedom-to-Operate-analysis, to identify the legal risks regarding the IP portfolio. The IP portfolio’s monetary potential was then determined by weighing the IP portfolio value indicators against its legal risks, given an existing position and a number of future conditions. Plantagon could then start substantive negotiations with investors and licensees, both in Sweden and on other continents. Groth’s work was carried out in a very professional way and the result is more concrete than when we previously used one of the three major accounting firms [in Sweden] for similar work. We wanted “no-nonsense” material without exaggeration, material that our stakeholders could understand and believe in. We got what we asked for, and benefit greatly from it in the ongoing development of Plantagon. /Hans Hassle, CEO of Plantagon International AB

Aura Light is a global company in the lighting industry

Aura Light International AB provides lighting that is smart, sustainable, economical, long lasting, high quality and environmentally friendly. The company was founded in 1930 and has an annual turnover of approximately 70 million Euros. The head office is situated in Sweden with established sales operations in eleven other countries. Aura Light’s vision is to become the global leading partner for sustainable lighting solutions.

The company would carry out a re-branding

In 2012 Aura Light decided that they wanted to rebrand and change their graphic identity. The aim was to better adapt to the market and create an identity that reflected the future of lighting solutions.

Aura Light operates in a highly competitive industry and on a global market and therefore their IP assets play an important role in their strategic expansion. Our task was to ensure that their IP continued to create competitive advantages and contributed to the success of the company, even after their re-branding. Changing a company’s brand is an extensive and expensive process so it is important to minimize the risk associated with the project.

We provided strategic advice on selecting the new design and applied for new trademark registrations

Aura Light engaged a design agency to develop proposals for the new graphic identity and logo based on market research. We received three proposals to evaluate from the design agency. We initiated a strategic process with legal investigations and analyses to determine which of these proposals would create the best conditions for the future. To eliminate future problems and create maximum flexibility for Aura Light we also examined the existing IP rights of competitors and resellers on all of Aura Light’s current and future markets. Next, we analyzed the results and concluded that one of the three proposals was significantly stronger than the other two. The strongest proposal was presented to the Aura Light board of director, who soon adopted it.

Step two in the process for us was to complement existing IP assets with the new graphic identity. Together we reviewed the current markets for sales, production and transit, and draw up a strategy for trademark registrations. Thanks to the proactive groundwork, Aura Light today has their new identity protected on a global market.

Infringement of adesign registration for chimney cap

Our client, the Swedish metalsmith Bengt Wulf, designed a chimney cap and upon application he was granted a design registration in 2005. A few years later he used the design registration as basis for a cease and desist letter directed at a competitor (JLM) for infringement. As a counteraction the competitor sued trying to invalidate the design registration. We represented Wulf in the case regarding the validity of the design registration.

Did the design met the requirement of distinctiveness?

The core issue of the case was whether Wulf’s design met the requirement of distinctiveness and novelty. That is, if the knowledgeable user’s overall impression of the product differs from prior art.

The case was granted leave to appeal to the Supreme Court but was settled out of court

The first instance, The District Court, said no, Wulf’s chimney cap didn’t differ enough from prior art and the registration should be invalidated based on lack of novelty. We appealed to the Court of appeal but they did not grant Wulf leave to appeal. So we appealed that decision to The Supreme Court and they agreed with us – the Court of appeal was forced to try the case.

Once the Court of Appeal did try the case on the merits they changed the district court´s outcome, and we were successful. The court stated that our client’s design registration was valid, and that the invalidation case was dismissed. The court stated that the functionality of the chimney cap was possible to achieve with alternative designs, and that the design therefore was not solely based on a technical solution of the product. The court also stated that the design does not lack novelty and distinctiveness.

That decision was appealed by our counterpart and, after more than a year of contemplating, the Supreme Court actually granted a leave to appeal. This was the first time in eleven years that the Supreme Court would handle a design case, and we started to prepare the procedure in the Supreme Court.

However, during the preparations of the procedure, the parties reached an extrajudicial settlement and the appeal was withdrawn.

Pfizer became the world’s largest pharmaceutical company through an acquisition

The American pharmaceutical company Pfizer aquired the former Pharmacia in 2002 and thereby took over an extensive and valuable IP portfolio. With the takeover, Pfizer became the world’s largest pharmaceutical company.

Pfizer needed to implement change of owner of 25,000 trademarks in 130 countries

In connection with the acquisition, Pfizer needed to register itself as the owner of the newly aquired IP assets with the local trademark authorities in 130 countries. This meant that 24,468 assets had to be assigned on a global market. We at Groth & Co were assigned to coordinate and execute all of the changes.

We coordinated and verified the entire project

Through our international network of partners, we created a global team of local IP law firms. By centralised coordination, instructions, and with the help of tools we had developed ourselves, each local agency was assigned to make the changes in their jurisdiction. All of the work done locally was administrated and controlled by us before reported to Pfizer. The project involved thousands of official documents, and each market has its own set of rules that needed to be considered. Extensive work of this type is done to secure the global control and the value of the assets. Pfizer was able to strengthen and optimize its entire IP portfolio through our common effort.

SSAB is a world leader in abrasion-resistant steel

SSAB is a leading producer of high strength steel. Production takes place in Sweden and in the US. Processing and finishing of the various steel products takes place in China. SSAB has approximately 9,000 employees in 45 countries and its products are sold worldwide. Since 1999, we have been assisting SSAB strategically to maximize the value of its IP assets in the global market. One of SSAB’s most valuable IP assets is the trademark HARDOX ^®, a world leading abrasion-resistant steel.

SSAB’s steel Hardox was pirated in China

During the first half of 2012 complaints about the quality of the steel were received from dissatisfied customers in China. Through extensive investigation work and laboratory analyses, it was found that the steel came from another company. The company had illegally produced and sold a low-grade abrasion-resistant steel under SSAB’s Hardox ^® trademark.

Our activities resulted in a reduction of counterfeit goods on the market

Groth & Co submitted a so-called AIC-action (a simplified court procedure) to the Chinese authorities to immediately set a stop to the trademark infringement and to prevent counterfeited goods from reaching the market. This was widely reported and led to a reduction of counterfeited goods on the market.

Through our presence in the Chinese market with Chinese-speaking employees, we are able to maintain close relationships and easy communication with the authorities and our professional colleagues. This contributes to better cooperation between Europe and China.