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IP Monetization 2013: Maximize the Value of Your IP Assets

Speaker(s): Abha Divine, Cheryl Milone, B.S.E.E., David Ruder, Gail Shulman, George S. Park, Henry C. Su, Jose A. Esteves, Joseph Yang, Robert A. Moore, Robert Aronoff, Robin Feldman, Ron Laurie, Shival Virmani, Tyson Winarski, Victoria F. Maroulis
Recorded on: Apr. 16, 2013
PLI Program #: 41954

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.

Cheryl Milone is a co-founder and chief executive officer of Article One Partners (AOP), the world's largest patent validation community.  Article One is a global online community reaching over one million that researches the validity of patents. Ms. Milone created the community to add a crucial level of review to the US patent system - strengthening legitimate patents and reducing unjust patent monopolies.  AOP's successes include 18 of the top 25 targets of NPEs, 16 Fortune 100 clients, 52 of the Forbes Global Fortune 2000 and premier law firms among 150+ clients and 100% community growth in each of 2010 and 2011 with $2.8 million paid in compensation to the community.  Article One now has offices in New York (headquarters), Boston, Palo Alto, Colorado, Chicago and London.

Ms. Milone's early success with Article One led to an invitation in January 2010 to the White House as one of the top 50 most innovative CEOs in the nation to participate in a forum on Modernizing Government. Article One also was recognized as the 2009 Startup of the Year by Business Insider - chosen by an elite judging panel of venture capitalists and top technology industry leaders.  In December 2009, Ms. Milone was included in the Silicon Alley 100 list of New York's digital business community leaders who are driving the most interesting and important work.

Article One presents research requests on behalf of its clients on its website as well as the platforms of international affiliate websites and provides compensation to its community for responding with high quality prior art. AOP has been described as the social media for patents. AOP researchers are from 188 countries and projects are translated into 9 languages to trigger foreign language research in key geographies. The success of the company led Marshall Phelps (former head of IP and licensing at IBM and Microsoft) to join Article One's Board of Directors and resulted in client feedback that in 57% of research projects, AOP provided new and valuable evidence compared to traditional research.

Prior to founding Article One Partners, Ms. Milone practiced as a patent attorney and advocated before the US Patent and Trademark Office with Darby & Darby (until 2006), Clifford Chance and Kenyon & Kenyon.  Ms. Milone is an inventor and patent holder. Her patents include a medical device and, for Article One, an issued patent and numerous pending patent applications. She earned her JD in 1992 from Georgetown University Law Center and holds a bachelor's degree in electrical engineering.

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.

Robert Aronoff is Managing Partner and Founder of Pluritas, a leading Intellectual Property advisory and transaction firm headquartered in San Francisco, California, USA. Mr. Aronoff brings more than 25 years' experience serving Fortune 500 companies, business strategy and technology consulting firms and leading small-cap public companies. He has worked as a manager or management consultant at Sun Microsystems (now part of Oracle), Eastman Kodak, Microsoft, Coopers & Lybrand and Peat Marwick. He provides clients with insight into what facilitates and impedes IP asset values, in addition to strong negotiating skills and contacts.

While at Kodak, Mr Aronoff served as founding executive director of the digital imaging group, an imaging industry consortium that had the financial and technical backing of Kodak, Fuji, Canon, Intel, HP, IBM, Adobe, Agfa and Microsoft. Earlier in his career, Mr Aronoff advised on business acquisitions and advanced technology projects in IT consulting for Peat Marwick. He subsequently developed working artificial intelligence systems at Coopers & Lybrand for clients trading foreign exchange and underwriting insurance risk.

Mr Aronoff earned Bachelors of Arts in both computer science and economics from Brandeis University, where he was recognized as a Milton Feld economics scholar, and an MBA from the MIT Sloan School of Management where he won the William L Stewart Award for outstanding contributions to the university. Mr. Aronoff is also a testifying expert on the IP Marketplace, and is a speaker and writer on strategy and trends in in IP transactions.

Robert A. Moore

As the Managing Director at IPXI Holdings LLC, Mr. Moore's primary responsibilities include leading the Company's efforts with Intellectual Property Sponsors/Owners in the valuation, marketing and pricing of Unit License Right™ (ULR™) contracts. In addition, he is IPXI's CFO.

Mr. Moore is also the principal member of RAM Capital Partners, a financial advisory firm focused on working with privately held, entrepreneurial companies and their capital and strategic issues. Over the last thirteen years, RAM Capital Partners' clients have included companies in the telecommunications, sports and entertainment, and software and technology industries. In conjunction with RAM Capital, Mr. Moore served as CEO and CFO for a technology company that specialized in supply chain management.

In addition, he was a founding member of Charleston Angel Partners and is a member of the Irish Angel network, associated with the University of Notre Dame. His role in these organizations has consisted of leading due diligence teams, negotiating term sheets and structuring investments in start-up and emerging companies in a variety of industries.

Prior to RAM Capital Partners, Mr. Moore was a Managing Director in Donaldson, Lufkin & Jenrette's Media and Telecommunications Group in Investment Banking. His capital raising experience ranged from private offerings of convertible debt and preferred equity securities for early stage companies to public offerings of common stock, including initial public offerings, preferred equity, convertible debt and high yield debt securities. His financial advisory experience included mergers and acquisitions and restructuring assignments.

Mr. Moore holds a BA from the University of Notre Dame (1981) and an MBA from the Kellogg Graduate School of Management at Northwestern University (1985). Mr. Moore is currently an adjunct professor at the Mendoza College of Business at the University of Notre Dame.  There he teaches two sections (MBA and Undergraduate) of Funding New Ventures, a course designed to prepare students for financing start-up and early stage companies. Topics include: sources of capital; due diligence; term sheets and financial modeling and statements. He also participates in lecturing in the ESTEEM program at Innovation Park at the University of Notre Dame.

Robin Feldman is a Professor of Law at U.C. Hastings. She specializes in Law and Science and is the Director of the Hastings Law & Bioscience Project (LAB Project). She has also served as the Herman Phleger Visiting Professor of Law at Stanford Law School. Professor Feldman has received the Rutter Award for Teaching Excellence and the 1066 Foundation Award for Scholarship. 

Professor Feldman's first book, The Role of Science in Law, was published by Oxford University Press in 2009. Her second book, Rethinking Patent Law, is forthcoming from Harvard University Press. Professor Feldman's articles have appeared in journals at law schools including Georgetown, Stanford, Texas, USC, UCLA and Virginia as well as in the New England Journal of Medicine. She has testified in hearings before the Federal Trade Commission and the Department of Justice and is interviewed frequently in the press, including appearances on NPR's Science Friday.  Professor Feldman has served as the Chair of the Antitrust Section of the American Association of Law Schools and has been a member of the Ethics Committee at Stanford Hospital. 

Professor Feldman received a bachelor's degree from Stanford University graduating Phi Beta Kappa, and a J.D. from Stanford Law School, graduating the Order of the Coif and receiving the Urban A. Sontheimer Award for graduating second in the class. She served in the Articles Department of the Stanford Law Review. After graduation, Professor Feldman clerked for The Honorable Joseph Sneed of the U.S. Court of Appeals for the Ninth Circuit.

Tyson Winarski is a Senior Licensing Attorney for Intellectual Ventures (IV) in Mountain View, California. Tyson develops and executes patent monetization programs through assertion based licensing strategies.

Founded in 2000, IV is a privately-held invention capital company. IV is building a market for invention by making invention a profitable activity. With more than $5 billion under management and more than 40,000 IP assets in active monetization programs, IV owns one of the world's largest and fastest-growing intellectual property portfolios, which IV licenses to the world's most innovative companies. Investors include a mix of Fortune 500 companies, individuals and institutions

Tyson's patent practice has included patent litigation in Federal District Court and the International Trade Commission under Section 337, opinions on validity and infringement, all phases of patent preparation and prosecution, portfolio due diligence for mergers and acquisitions as well as IPO S-1 statements, patent reexamination proceedings, and copyright and trademark litigation and licensing. In addition, Tyson has testified as an expert witness on licensing in Federal District Court and has served as a court appointed arbitrator.

Tyson has previously practiced at Pillsbury Winthrop Shaw Pittman LLP and Steptoe and Johnson LLP in Washington, D.C., and has also taught a course on Intellectual Property at Arizona State University. Tyson is widely published on IP matters having co-authored a chapter on Section 337 litigation for the ABA's Patent Litigation Handbook and has provided numerous articles on patent issues for Intellectual Property Today, IEEE Magazine, and other legal journals. Tyson has also been a frequent lecturer on patent matters at IEEE Conferences, European Nano Systems NSTI, and the Arizona Bar Association.

A graduate of the Sandra Day O'Connor College of Law at Arizona State University, Tyson is a registered patent attorney holding a BSME and MSEE and is a member of the Bar of the State of California, Arizona and the District of Columbia.

Tyson is also an inventor of patented technologies for magnetic media formed of magnetic nanoparticles contained in carbon nanotubes, LED memory status indicators, and solar electric windows (US Patent Nos. 7,976,966; 7,683,801; 7,687,160; 6,688,053). 

Gail Shulman
Former General Counsel of MIPS Technologies, Inc.

Gail Shulman is former General Counsel for MIPS Technologies where she negotiated the sale of the company in a unique transaction involving the sale of certain patent assets to Bridge Crossing (a subsidiary of Allied Security Trust) and of the operating business to Imagination Technologies.  Her responsibilities as general counsel included a broad range of intellectual property, corporate and commercial matters, including legal issues arising in licensing, international operations, mergers and acquisitions, employment, finance and facilities. Before joining MIPS Technologies in 1999, Ms. Shulman was the first in-house lawyer - establishing the legal department - for Axil Computer (a subsidiary of Hyundai Electronics). She also worked for Thelen, Reid, Brown, Raysman & Steiner for more than seven years, where she specialized in corporate matters, licensing and mergers and acquisitions.

Ms. Shulman received her J.D. from the University of California, Hastings College of the Law; and her B.A. from the University of California, San Diego.

She has presented various topics for the Practicing Law Institute, Women in Law Empowerment Forum and Center for Applied Innovation.  She serves on the advisory board for Blaze Mobile.

Henry Su tries antitrust cases brought by the Federal Trade Commission’s Bureau of Competition. Prior to this position with the agency, he served as an Attorney Advisor to Commissioner J. Thomas Rosch. In that role, Henry provided advice and counsel to Commissioner Rosch on a variety of antitrust and competition matters, issues, and projects coming before the FTC. Before joining the FTC, he was a partner in the law firm of Howrey LLP in East Palo Alto, California. At Howrey, his practice involved trial and appellate work, alternative dispute resolution and strategic counseling, and he specialized in claims and disputes that involve intellectual property, antitrust and trade regulation issues. Henry was recognized by Euromoney Institutional Investor PLC as a "Litigation Star" among California attorneys in the 2011 edition of Benchmark Litigation: The Definitive Guide to America’s Leading Litigation Firms and Attorneys.

Henry is a member of the bars of the State of California, the District of Columbia and the Commonwealth of Virginia, as well as a registered patent attorney with the United States Patent and Trademark Office. He is a graduate of the University of Virginia School of Law, where he was a recipient of the John M. Olin Prize in Law and Economics, and Yale College, where he earned a B.S. degree in Biology, cum laude.

Henry is a Fellow of the American Bar Foundation and the Litigation Counsel of America. He has held leadership roles within a number of bar associations and community service organizations, including the American Bar Association, the National Asian Pacific American Bar Association, and the Federal Circuit Bar Association.

Henry strongly supports public service and pro bono publico work. While in private practice, he served as an early neutral evaluator and mediator for the Northern District of California’s ADR program and as a member of the Criminal Justice Act appellate panel for the United States District Court for the Northern District of California and the United States Court of Appeals for the Fourth Circuit. He also served as a member of the Pro Bono Panel for the United States District Court for the Eastern District of California. Pro bono cases he has handled include ones involving intellectual property, disability rights, veterans and criminal law issues. His pro bono efforts in 2009 led to his selection as a recipient of the California Lawyer’s Attorney of the Year (CLAY) Award for 2010.

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.

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.

Shival Virmani is Vice President, Patent Licensing at Rockstar Consortium. He has several years  of combined patent attorney and licensing executive experience in corporate, private and federal government environments.

Prior to joining Rockstar, Shival was Vice President Intellectual Property at Vonage, where he was in charge of all intellectual property matters.  He has also served as  Associate General Patent Counsel at InterDigital, where he was a lead patent licensing negotiator responsible for reaching significant royalty-bearing deals in the wireless space in Europe, North America and Asia, and as Senior Director Licensing/Litigation for Infineon Technologies in Munich, Germany. 

Before going in-house, Shival was in Washington, D.C., where he was a litigation associate in a Chicago-based general practice firm.  He also worked in the federal government, initially as an Examiner at the Patent and Trademark Office and then as a Staff Attorney handling "Section 337" litigations at the International Trade Commission.

Shival holds a Bachelor of Science in Mechanical Engineering from Virgina Tech, a Master of Science in Electrical Engineering from George Mason University, and a Juris Doctor from Tulane University School of 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.

George Park joined IPVALUE in July 2005. Prior to IPVALUE, George was a Managing Scientist at Exponent, a national science and engineering consulting firm, where he managed the Menlo Park branch of the Technology Development practice. In that role, he led a number of national security related projects involving robotics, sensors, wireless communications, and biometrics technologies.

George also worked as a consultant at McKinsey & Company, where he provided leadership and problem solving skills to develop corporate strategy on a wide range of issues, including the identification of IP acquisition targets for an enterprise software vendor, development of a new product line for a portable IT hardware manufacturer, and formulation of a growth strategy for a major networking company. Earlier in his career, George served as a Senior Scientist for Arete Associates and a founder of MPPY, a 4-member UCLA-based consulting team. He also served as an analyst at the RAND Corporation, a think tank conducting policy and technology analyses for government and commercial clients.

George holds an MBA degree from UCLA and a Ph.D. in Physics from Stanford University.

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.”