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IP Monetization 2012: Maximize the Value of Your IP Assets


Speaker(s): Abha Divine, Bernard J. Cassidy, Clarke B. Futch, David Ruder, Edward Stone, John A. Hudson, Jose A. Esteves, Joseph Yang, Kimberly Chotkowski, Mark F. Radcliffe, Ron Laurie, Roy Maharaj, Sally M. Abel, Victoria F. Maroulis
Recorded on: Apr. 12, 2012
PLI Program #: 34263

Abha Divine’s career demonstrates proven results in the successful planning and launch of new businesses and technology-driven offerings. In 2008, Ms. Divine co-founded Techquity Capital Management, an IP investment firm devoted to unlocking value from innovation. The firm partners with IP owners to deploy untapped IP assets, broaden market reach, and provide liquidity for their IP.

Prior to Techquity, Ms. Divine launched AT&T Knowledge Ventures (KV), overseeing the worldwide IP portfolio for the AT&T family of companies. As President and CEO, she led the organization to deliver measurable EPS impact annually and established KV as one of the leading producers of IP assets and revenue in its industry. She has been recognized as one of IAM magazine’s 250 “World’s Leading IP Strategists” since the inception of their rankings.

Previously, as SBC’s VP of Corporate Strategy, Ms. Divine was responsible for the creation of SBC’s data networking, managed services, and hosting businesses, as well as the restructuring of its consumer broadband strategy to achieve SBC’s broadband leadership position.

Ms. Divine serves on the Board of the Lyle School of Engineering at Southern Methodist University and has held a variety of corporate and non-profit board positions over the years.

Ms. Divine earned an MBA from the University of Texas and a Master of Science in Electrical Engineering from MIT, where she completed her research at the Media Laboratory. Ms. Divine holds Bachelors degrees in Electrical Engineering and Applied Mathematics from Southern Methodist University.


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.


Edward Stone is President of Stone Capital Assets, consultants and advisors in the specialty finance and insurance industries. Edward Stone was previously a Managing Director at Plainfield Asset Management, LLC and President and Chairman of Caldwell Funding Corp., a Plainfield portfolio company in the insurance finance business. He is an attorney at law admitted to practice in both New York and Connecticut and an expert in esoteric asset securitization. Mr. Stone has firsthand experience in building new funding companies and structures for emerging asset classes such as structured settlements, lotteries, viatical and senior settlements, litigation funding companies and casino awards.

Prior to joining Plainfield, Mr. Stone was President of Stone International LLC, a consulting firm engaged in specialty finance consulting and servicing located in Greenwich, CT. Stone International was the U.S. based administrator of all Contingency Claims Insurance underwritten by Lloyd’s Syndicate 102 f/k/a “Goshawk” and was responsible for validating all covered policies, monitoring insureds and all administration and servicing of the covered policies.

As a pioneer in the cash flow business, Edward Stone has drafted and successfully lobbied for enactment of key legislation in a number of states and in Congress, and has played a lead role in structuring or arranging the financing and securitization of close to a billion dollars in cash flows. Mr. Stone successfully lobbied for and secured the inclusion of key capital markets friendly exemptions from licensing in the NAIC model act and has also successfully obtained no-action letters from State securities regulators and appeared before a variety of legislative bodies.

Mr. Stone graduated from Clark University (B.A.) and earned his law degree from Benjamin N. Cardozo School of Law (J.D.). Mr. Stone also studied at the Institut d’Etudes Politiques in Paris, France and taught English at the Lycee Louis le Grand in Paris. Mr. Stone speaks fluent French and proficient Spanish.


Bernard “Barney” J. Cassidy

Bernard J. “Barney” Cassidy, a nationally recognized expert on patent licensing and patent policy, speaks and writes frequently about the perspective of inventors and patent licensors.

He has testified twice on patent policy before Congress, and was an invited speaker at the joint workshop on patent and competition policy held by the U.S. Federal Trade Commission, U.S. Department of Justice, and the U.S. Patent & Trademark Office.  His operational experience includes leading patent development, litigation, and licensing at two public companies, where he structured, negotiated, and closed over forty-five patent licenses.

Barney received his J.D. from Harvard Law School, where he was an editor of the Harvard Law Review and was a research assistant to Professor Arthur R. Miller, focusing on Federal Practice and Procedure.

After law school he clerked for the Honorable John T. Noonan, Jr. of the U.S. Court of Appeals for the Ninth Circuit. and practiced law at both Skadden, Arps, Slate, Meagher & Flom and at Wilson, Sonsini, Goodrich & Rosati. He served as general counsel of both Tumbleweed Communications Corp. and of Tessera Technologies, Inc., where he was President of Tessera Intellectual Property Corp.


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.


Kimberly S. Chotkowski is an accomplished intellectual property attorney with 18 years of patent litigation, licensing and prosecution experience. For 4 years in a row, Kim has been listed in the Intellectual Asset Magazine as one of the top 300 IP Strategists in the World. She has been involved in litigating cases in a wide variety of  technologies including wireless and wired telephony (handset, air interface and base station), microprocessors, semiconductors, USB, touch screens, automotive components, active storage systems, editing software, video on demand, pharmaceutical etc. Kim is a proven leader with capabilities in building litigation teams, strategic thinking and implementing workable plans.

Kim has an established track record of litigating/negotiating complex, global IP licenses and monetization opportunities specializing in assisting clients in maximizing their financial return on research and development via licensing their technology. Kim’s experience provides significant global IP licensing knowledge having worked with a licensing firm who negotiated with more than 70 companies worldwide, obtaining licenses worth approximately over $2 billion on behalf of their clients. Kim supports her clients’ licensing efforts in a broad range of technologies including semiconductor processing and circuits, digital cameras, cell phones, optical storage, wired and wireless communications, internet applications, chemical arts, telecommunications and television, automotive, bioelectrical/biomechanical and pharmaceutical arenas.

Kim also offers strategic IP portfolio management. By tailoring her proactive IP management approach to each individual client’s business and technical goals, she develops cost-effective, value-generating portfolios that assist clients by protecting core technology, licensing and patent brokering. Kim has managed and served as an expert witness in various patent litigations. Kim is an inventor herself holding two patents in antenna technologies.

A frequent speaker, Kim has covered pertinent issues related to IP Monetization, international licensing and international patent portfolio management at the Licensing Executives Society, the American Bar Association, PLI and other independent professional conference forums. She has spoken on behalf of the US State Department on licensing in China. Kim holds a BS in electrical engineering and a BS in Humanities/History from Worcester Polytechnic Institute, a JD from the Franklin Pierce Law Center and an MBA, concentration in international business and finance, from Sacred Heart University.

Kim is a member of the Pennsylvania, Connecticut and New York and Patent Bars, a Certified Licensing Professional and a former committee member of the Intellectual Property Owners and an active participant in the Licensing Executive Society’s effort to provide standards of practice to the licensing profession.


Primary Areas of Practice: IP Licensing, Open Source Software Licensing, Venture Capital, Corporate Structuring; Corporate Collaborations

Law
School/Graduate School: Harvard Law School

Work History:

Mr. Radcliffe represents corporations in their intellectual property and finance matters. His clients include both startups and global multinationals.  He has been at the forefront of many of the major legal developments in the last three decades, including the development the first domain dispute resolution policy for Network Solutions, Inc. (which is still the basis for dispute resolution under ICANN),  the revision of the bankruptcy law to deal with the intersection between bankruptcy and intellectual property licenses, the open sourcing of the Solaris operating system for Sun Microsystems, Inc. and the development of the General Public License version 3.  He has served on the US Japan Innovation and Entrepreneurship Council and was appointed by the Department of State to be the US Private Sector Co-Chair http://japan.usembassy.gov/e/p/tp-20130225-01.html. His experience covers a wide variety of industries from web to software (particularly open source) to cloud to semiconductors. His deep experience in both venture capital financing and intellectual property makes him particularly effective in assisting companies in developing and implementing innovation strategies.

In April 2009 (the first year of the award), he was recognized for his experience in assisting companies in intellectual property strategy by Intellectual Asset Management magazine as one of the World’s Leading 250 IP Strategists.  The National Law Journal in 1997 named him one of the 100 Most Influential Lawyers in the United States.  He is consistently cited by Chambers USA: America’s Leading Lawyers for Business, as being in the first rank in California for IT and IT Outsourcing.  He has been listed in the “The Best Lawyers in America,” and as one of Northern California’s Top 100 intellectual property attorneys in “Super Lawyers.”  And he has been named as one of “America’s Leading Lawyers for Business” in Who’s Who Legal publication.  In 1998, Harvard Law School designated him a “Distinguished Alumni”.  He has been quoted on intellectual property matters in Time Magazine, the New York Times, Wall Street Journal, San Francisco Examiner, San Jose Mercury News and the Daily Variety.  Mr. Radcliffe has published articles in such legal magazines as the National Law Journal, Trademark World, Computer Lawyer, California Law Business and Copyright World

Professional Memberships: American Bar Association, International Bar Association


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.


Sally Abel is Chair of Fenwick & West’s Trademark Group, focusing her practice on international trademark and trade name counseling, including the development and management of international trademark portfolios and trademark rights online.

Sally is ranked the top trademark lawyer in the United States in Who’s Who Legal Trademarks 2015. She has repeatedly won other international, national, state and Silicon Valley accolades including:  

  • Managing Intellectual Property IP STAR and The Top 250 Women in IP (2014-2017)
  • The National Law Journal: Intellectual Property Trailblazers & Pioneers (2014)
  • World Trademark Review 1000: One of the top 7 trademark practitioners in the US (Gold ranking 2012-2017)
  • Chambers USA and Chambers Global: Band 1 (2007, 2009-2017)
  • Euromoney’s Best of the Best Expert Guide 2017: One of the Top 30 Trademarks Practitioners Worldwide and top 3 in the U.S.
  • The International Who’s Who of Trademark Lawyers: Among the world’s leading trademark lawyers.(2002-2017)Currently ranked among North America’s top 10 trademark thought leaders
  • Chambers USA Women in Law Awards: One of the top 12 women IP lawyers in the US (2012)
  • Legal Media Group’s Guide to the World’s Leading Women in Business Law (2010-2012. 2015-2016)
  • The Recorder: Women Leaders in Tech Law (2013-2015)
  • San Francisco Business Times: Most Influential Women in Business (2013)

Sally was a pioneer in the international debate over trademark rights on the Internet, including serving as INTA’s representative on the 11-member International Ad Hoc Committee (IAHC), the international body organized by the Internet Society, to restructure the domain name system. At the invitation of the World Intellectual Property Organization (WIPO), Sally also participated in WIPO’s First Meeting of Consultants on Trademarks and Internet Domain Names held in Geneva in February, 1997. Through WIPO and the National Arbitration Forum, she has served as a neutral panelist in over 60 domain name disputes brought under ICANN’s UDRP system.

Sally was a member of the INTA Board of Directors from 1998 to 2000. She chaired INTA’s Internet Subcommittee for two years, developed and chaired INTA’s Enforcement Committee, and currently serves on INTA’s Amicus Committee. She teaches trademark law annually at an IP conference for federal court judges and teaches international trademark law at Boalt Hall School of Law (Berkeley Law).


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.”