Extensive experience leading teams in patent litigation, licensing, prosecution, and acquisitions.
Patent licensing: Negotiated and drafted licenses with 35+ companies and non-practicing entities in the U.S., Europe, and Asia. Developed strategies for inbound/outbound licenses. Presented patents to license and positions on FRAND royalties, invalidity, patent exhaustion, antitrust, patent misuse, breach of warranties, and laches & estoppel. Advised executives on license obligations of standards-setting organizations and Open Source Software. Drafted IP ownership agreements.
IP litigation: As outside counsel at 2 of the 3 largest IP law firms in the country, represented clients on 10 patent cases, a trademark case, a copyright case, and a trade secret case. Drafted briefs, handled discovery, and attended court hearings. As in-house counsel, developed strategy and managed attorneys and engineers on 60+ patent cases in 5 countries, including 3 ITC trials, 2 District Court Markman hearings, a UK trial, and a German trial. Presented reasons to litigate and settle to executives. Negotiated and settled 7 cases. Developed infringement evidence and claim charts. Handled indemnity requests.
Prosecution/portfolio expansion: Drafted hundreds of patent applications and office action responses filed throughout the world. Conducted interviews with examiners. Developed strategies for drafting claims, foreign filing, and continuations.
Acquisitions: Completed 6 acquisitions and two sales. Trained attorneys and engineers on how to negotiate with sellers and conduct due diligence by analyzing claims, file histories, competitor products, previous licenses, and ownership agreements. The assessed value of patents for execs.
