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IP Monetization 2011

Speaker(s): Damon C. Matteo, David Ruder, Gary A. Rubin, Jeanine Hayes, Jessica D. Miller, Jin Kim, Jose A. Esteves, Joseph Yang, Mary A. Fuller, Ron Laurie, Roy Maharaj, Suzanne Harrison, Victoria F. Maroulis
Recorded on: May. 5, 2011
PLI Program #: 29781

David Ruder is Vice President of Corporate Development at RPX Corporation.  Prior to RPX, Mr. Ruder established Terrier IP Investments, LLC, a private investment firm focused on intellectual property-based investments in firms backed by hedge funds and private equity.

Mr. Ruder began his career working as an investment banker on Wall Street, helping companies in the consumer and entertainment sectors raise capital or engage in M&A transactions. He went on to practice intellectual property law for Kirkland & Ellis, working on M&A due diligence, patent licenses, and software development agreements.

He has significant intellectual property transaction experience as co-founder and CEO of River West Brands LLC as well as positions in the M&A advisory practice of Ocean Tomo and patent investment firm Altitude Capital Partners.

Mr. Ruder received his MBA from the JL Kellogg Graduate School of Management, his JD from the Northwestern University School of Law, and his BA from Williams College.

Suzanne Harrison is the CEO and Founder of Gathering2.0, the first online peer community for IP Professionals. Gathering2.0 is currently working with Fortune 500 Patent Buyers to increase information transparency and efficiency in the patent sale  market, while pricing legal risk.  Prior to her current position, she was a Director with LECG leading their Intellectual Asset Management Consulting practice comprising strategy, monetization, and valuation. Ms. Harrison is also an intellectual property expert testifying on both damages and intellectual property management activities. Ms. Harrison is a convenor of the ICM Gathering, a group of 30 companies who have been meeting since 1995 to define, create, and benchmark best practices around Intellectual Property Management (IPM) and other intangibles (I-stuff). She holds an undergraduate degree in Economics from the University of California at Davis, and an MBA from the University of Chicago. Ms Harrison has written numerous articles and is a frequent speaker about how companies can extract value from their innovations. She is the co-author of Einstein in the Boardroom published by John Wiley & Sons in 2006 and Edison in the Boardroom also published by John Wiley & Sons in 2001.

Jin Kim is a Director of Business Development with the Innovation Business Development team at United Technologies. He works across all business units which include Sikorsky, UTC Aerospace Systems, Pratt & Whitney and Building & Industrial Systems. He is leading UTC’s patent and trademark monetization activities, but is also involved in large technology transfer and corporate venture opportunities in areas such as unmanned aerial vehicles, the Internet of Things and sustainable energy. He also advises UTC and its business units on strategic IP matters, IP negotiations and IP valuations.

He is currently a member of the IP Advisory Council for Ballard Power and the Advisory Board of

Prior to joining UTC, he was a Principal at Coller Capital, a private equity firm, and a senior member of the investment team. There he conducted a number of large IP transactions, oversaw investments and managed the financial analysis of IP assets.

Previously, he held a manager position for Special Projects at IPValue Management, an IP monetization firm, responsible for strategic initiatives and large deals.

He started his career as a management consultant with The Boston Consulting Group where he specialized on the high tech and oil and gas sectors.

Jin earned a DPhil in physics from Oxford University and a Diploma in physics from the University of Cologne in Germany.

Joseph Yang is an IP transactions partner at PatentEsque Law Group, LLP.

Joe specializes in structuring & negotiating tech/IP-centric deals (technology transactions, strategic alliances, patent licensing/sales, standards body issues, IP aspects of M&A) and in using IP as strategic business assets. He has led hundreds of deals involving billions of dollars in and across the information technology, electronics, entertainment, consumer goods, healthcare, energy, chemical & manufacturing industries. Reflecting these diverse experiences, Joe is often retained to “bridge the gap” in cross-industry deals (e.g., joint ventures, IoT, SaaS & “big data” deals) between companies whose industries historically didn’t interact with each other.

Joe is also an expert witness for high stakes tech & patent licensing disputes.

Joe teaches the "Technology and Patent Licensing" course at Stanford Law School, and has taught the “Patent Law and Policy” course at U.C. Berkeley School of Law. Joe is a long-time chair of the “Advanced Licensing,” “Advanced Patent Licensing” and “Understanding the IP License” courses at the Practising Law Institute in NYC, SF and Chicago. He has written for journals & books, and been cited by courts & treatises, on licensing & patent law.

Joe previously served as VP & General Counsel of Cryptography Research, Inc. (CRI), negotiating deals under which 10+ billion devices/year are made by its licensees in the smart card/phone, semiconductor, pay TV, printer & other fields. He also developed, enforced & defended CRI’s patent portfolio, and played a key role in CRI’s successful sale in a series of M&A deals (with Macrovision & Rambus) valued at $400+ million.

Before that, Joe co-founded and later led the “IP Strategy & Transactions” practice based in the Silicon Valley office of the world’s largest law firm (Skadden, Arps). He has also practiced at other large multinational law firms, and served as an arbitrator.

Joe has been named one of the “World’s Leading IP Strategists,” “World’s Leading Patent Professionals” and “World’s Leading IP & Technology Licensing Lawyers” by Intellectual Asset Management (IAM) publications. IAM named Joe as 1 of only 10 "highly recommended" IP transactional attorneys in California -- the only one from a boutique (non-AmLaw 100) firm:

“Joseph Yang is a major-league deal maker and licensing authority” as well as “a transactional mastermind” with arbitration and litigation skills that make him a formidable negotiator.” “He … is a creative problem solver who can clearly articulate legal risks and provide effective advice to guide business decision making.”

Joe is “one of the best expert witnesses you could hope to deal with. He considers all the issues before committing to an opinion, and his positions are always rock solid”.

He is also profiled in “Marquis Who’s Who in American Law”, “Marquis Who’s Who in America” and “Marquis Who’s Who in the World”, and named to the California SuperLawyers list.

Joe also serves on the advisory board of the Licensing Executives Society - Silicon Valley chapter, and is a board member of the Asian Pacific American Bar Association of Silicon Valley.

Joe was originally a research engineer in the aerospace & energy fields. He holds a J.D. from Stanford Law School and a Ph.D. (engineering) from the California Institute of Technology, where he has been a board member of the Caltech Associates & Caltech Alumni Association.

Mary Fuller formed Fuller Tech Law after serving as an attorney and legal executive for over 20 years. She entered the Silicon Valley tech industry as an electrical engineer for Hewlett-Packard Co., where she assisted in the design of laser printers. After earning her juris doctor from the University of Notre Dame Law School, she worked in patent litigation and prosecution for the law firms of Pennie & Edmonds LLP, Carr & Ferrell LLP, and Bingham McCutchen LLP.

Mary then joined Santa Clara-based Marvell Semiconductor, Inc. as a senior patent litigation attorney. There, she rose through the ranks to become Director and Managing Counsel for Litigation. While at Marvell, she guided Marvell through a Securities and Exchange Commission investigation relating to stock option backdating, resulting in the company’s multi-year restatement of noncash expenses and management reorganization.

Following her tenure at Marvell, Mary served as Managing Director and Associate General Counsel, Intellectual Property at Maxim Integrated Products, Inc. in San Jose. As chief intellectual property counsel, Mary was responsible for IP development, licensing, acquisition, policy, standards, and disputes on a global scale. Mary was the first patent attorney at Maxim, a then 27-year-old Silicon Valley tech company with no prior patent program. She designed and implement its patent program, which grew the patent portfolio over 400%. That entailed working with other executives to implement a patent approval process, board, metrics, database, and award program, as well as the company’s first patent licensing program in over 20 years. She also provided leadership to the company’s Ethics and Compliance Group, and led its Cybersecurity Steering Group.

After more than eight years at Maxim, Mary became General Counsel and Corporate Secretary at Adaptive Spectrum and Signal Alignment, Inc. (“ASSIA”) in Redwood City. While at ASSIA, Mary drove and closed a key round of corporate financing for tens of millions of dollars that included issuing a new series of stock. She was also instrumental in closing the company’s largest single commercial deal with a significant European telecommunications company.

After working at ASSIA, Mary served as vice president, chief policy officer and head of legal at Kudelski Intellectual Property and Innovation in Mountain View.

In addition to leading Fuller Tech Law, Mary is an adjunct professor and supervising attorney at Santa Clara University School of Law’s Entrepreneurs’ Clinic, where students provide pro-bono legal services to high-tech startups. She also speaks regularly on topics such as intellectual property, patent licensing strategies, artificial intelligence, litigation management and contract law. She is a frequent presenter at the Practicing Law Institute.

Ron Laurie has worked in Silicon Valley since before it had that name, initially as a missile systems engineer at Lockheed-Sunnyvale, and then as an intellectual property lawyer and patent strategist. In 2004 he launched Inflexion Point Strategy, the first IP investment bank.  With offices in Silicon Valley, Taiwan and Singapore, Inflexion Point advises technology companies and institutional investors around the world in acquiring, divesting and investing in IP-rich companies, businesses units and technologies, and IP assets in the form of patent portfolios, exclusive field-of-use rights and related know-how.  Inflexion Point’s mission is to extract the unrealized value of strategic IP by increasing corporate valuation in M&A transactions, by building a defensive shield against litigious competitors and by generating top-line revenue via creative exclusive field-of-use licensing programs. 

Ron is also a director at Wi-LAN, Inc., one of the oldest and most successful publicly-traded patent licensing companies. He has been named as one of the World’s Leading IP Strategists by Intellectual Asset Management (IAM) Magazine and is on the advisory boards of the Silicon Valley Chapter of the Licensing Executives Society, and the Certified Patent Valuation Analyst accreditation program.

Prior to launching Inflexion Point, Ron was a founding partner of Skadden Arps' Silicon Valley office, where he chaired the firm's IP Strategy and Transactions Practice Group for six years and led IP teams in some of the largest high-tech and life sciences M&A, spin-out and joint venture deals ever done, worth over $50 billion in the aggregate.  He was also a founding partner of the Silicon Valley offices of Weil, Gotshal and Irell & Manella.

As a lawyer, Ron advised clients in the semiconductor, computer, software, communications, media and financial services industries on IP strategy -- a subject he has taught at both Stanford and Boalt (UC Berkeley) law schools.

Ron was an IP litigator for ten years, handling high-visibility patent, copyright, trade secret and trademark infringement cases in federal and state courts, including representation of Hewlett-Packard in its successful defense of the 'look and feel' copyright infringement suit filed by Apple Computer against HP and Microsoft over the Macintosh graphical user interface.

Ron is a registered patent attorney, and a substantial part of his prior law practice involved strategic planning, competitive analysis and commercial exploitation of patents on leading-edge software-based technologies such as encryption, biometrics and internet telephony. He wrote the Priceline reverse-auction patent, which was the first Internet business method patent to attract national attention.

Ron has been an advisor to the U.S. Patent & Trademark Office, the U.S. Copyright Office, the Office of Technology Assessment of the U.S. Congress, the National Research Council, the National Academy of Science and the World Intellectual Property Organization (WIPO). He is on the Executive Council of the Berkeley Center for Law & Technology and the editorial board of The Journal of Internet Law and co-edited a two-volume treatise titled International Intellectual Property.

Victoria Maroulis is the Managing Partner of the Quinn Emanuel Silicon Valley Office.  Mrs. Maroulis is also Co-Chair of the firm’s National Life Science Practice.  Her practice focuses on intellectual property litigation.  She has litigated and provided counseling for companies on a broad range of patent, copyright, trademark, and trade secrets matters.  She has extensive experience in complex patent litigation in a variety of technologies including software, hardware, semiconductors, medical devices and biotechnology.  She has tried numerous high-stakes patent cases and argued multiple appeals.  She is a member of the bars of New York and California and is admitted to the Eastern District of Texas, Trial Bar of the Northern District of Illinois, Federal Circuit and the U.S. Supreme Court.  Victoria regularly lectures on IP matters, judges regional mock trial and moot court competitions, and has taught trial practice at Stanford Law School and the in house Quinn Emanuel program.  Among other honors, Victoria was selected as one of 10 Intellectual Property Rising Stars under 40 nationwide by Law360, named as one of 20 Most Influential Women in IP by Law360, and featured in The American Lawyer’s “45 under 45” list.

Jose A. Esteves focuses on assisting clients in maximizing the value of their intellectual property and technology assets, including through strategic stand-alone transactions such as collaborations, joint ventures, cloud/outsourcing arrangements and other complex technology transactions; stand-alone and mergers-and-acquisitions-related development, licensing, supply, marketing and support arrangements; and IP monetization and financing transactions. Mr. Esteves also counsels clients on IP, technology and data legal and commercial issues, including with respect to privacy, cybersecurity and emerging issues in big data, artificial intelligence/analytics, internet of things and other key technologies, including in fintech, health care and autonomous vehicles. Mr. Esteves advises a diverse group of clients from the U.S. and abroad, including Europe, Asia and South America. Mr. Esteves also handles intellectual property and technology aspects of traditional mergers and acquisitions, financings, public offerings and commercial transactions. Intellectual Asset Management magazine, the leading trade publication focused on IP monetization, includes Mr. Esteves on its list of the “IAM Strategy 300 — The World’s Leading IP Strategists.”