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Advanced Patent Licensing 2017


Speaker(s): Andrea L. Gothing, Jake Handy, Jennifer Zanocco, Joseph Yang, Mark S. Holmes, Meredith M. McKenzie, Nader A. Mousavi, Robert P. Taylor, William H. Hamby, Winston E. Henderson
Recorded on: Sep. 27, 2017
PLI Program #: 185229

Andrea Gothing is a Partner in the Intellectual Property Litigation Department. She is an instructor in the firm's Exceptional Advocate Training Program and has served on the firm's hiring committee. She has been recognized for her professional accomplishments and leadership, being named an "Up and Coming Attorney" by Minnesota Lawyer. She is a member of the National Honor Society of Engineers and the National Honor Society of Electrical Engineers.

Ms. Gothing is registered to practice in the U.S. Patent & Trademark Office. In the courtroom, she has represented clients both as plaintiffs and as defendants, in many varying technological fields, including semiconductors, signal processing, nuclear magnetic resonance, medical devices, Internet technology, telephony, entertainment set-top boxes, shape-memory devices, artificial intelligence, database technology and optical storage devices. Ms. Gothing has significant experience running large multi-patent cases, with all of the complexity they can involve, including developing high-level case themes and nuanced details of claim construction, infringement, validity, and damages.

Ms. Gothing is adept at learning complex technologies and she draws on her extensive experience as a graduate-level teaching assistant in Electrical Engineering to explain technologies to both clients and courts. She has significant experience developing claim-construction positions as well as arguing those positions in federal court.

In addition to her intellectual property practice, Ms. Gothing is committed to the firm's pro bono efforts, focusing on juvenile protection and criminal defense.

Ms. Gothing earned her J.D., magna cum laude, from the University of Minnesota, where she was Note and Comment Editor for the Journal of Global Trade. Ms. Gothing has a Bachelor’s Degree in Electrical Engineering from Worcester Polytechnic Institute with high distinction, the highest honor bestowed. For her senior project, Ms. Gothing designed and implemented a light-seeking robot. Ms. Gothing continued her studies at the Institute of Technology at the University of Minnesota, where she earned a Master's in Electrical Engineering. Her thesis, titled "Image Reconstruction for Positron Emission Tomography," was in the areas of digital-signal processing and image reconstruction. Ms. Gothing also worked as a research assistant in the Department of Biomedical Engineering, where she designed and built a micro NMR coil on a wafer. Before law school, Ms. Gothing was an engineer at Motorola in its semiconductor product sector in Austin, Texas.


Bob Taylor is the founder and owner of RPT Legal Strategies PC in San Francisco and Palo Alto, providing legal and business advice to companies and investors with respect to all aspects of intellectual property and related fields of endeavor.  He also serves as a Venture Advisor to New Enterprise Associates and as a patent law expert for the National Venture Capital Association.

For more than 30 years, Bob focused primarily on intellectual property litigation, serving as lead trial counsel and/or appellate counsel in dozens of patent, copyright, trade secret and antitrust cases involving a wide range of technologies and industries.  He is a Fellow of the American College of Trial Lawyers,  a former chair of the Antitrust Section of American Bar Association, and a Lifetime Member of the American Law Institute.

Bob has written and lectured extensively on the business and legal problems associated with both intellectual property protection and the laws related to competition.  He served for several years as the co-chair of the Antitrust Committee of Intellectual Property Owners Association and also as a Member of IPO’s Amicus Committee.  Bob also served as a member of the 1992 Commission on Patent Law Reform.

Bob holds a J.D degree from Georgetown University Law Center and was a member of the editorial board of the Georgetown Law Journal.  He holds a B.S.E.E degree from the University of Arizona and was elected to Tau Beta Pi. 


Jennifer Zanocco is a Patent Counsel at Google, where her responsibilities include portfolio development, client counseling and IP support for commercial and product.

Prior to joining Google in 2010, Ms. Zanocco was a Principal at Fish & Richardson in Redwood City, where she focused on patent prosecution.

Ms. Zanocco is a member of the California bar, and is also a registered patent attorney.

Ms. Zanocco received her BS in Chemistry from the University of Wisconsin, Madison and her J.D. from the University of California, Hastings College of the Law.


Jake Handy is a partner at Fenwick & West LLP and chair of the Technology Transactions group.  Jake focuses his practice on technology-based transactions, including intellectual property acquisitions and licensing strategies for technology companies.  Jake’s representative transactions include development, collaboration, license and other technology transactions for all manner of technology companies.


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

Joe specializes in structuring & negotiating tech/IP-centric deals (technology transactions, JVs, patent licensing/sales, standards body issues, IP aspects of M&A) and in the use of IP as strategic business assets. He has led hundreds of deals involving billions of dollars in the computer, electronics, entertainment, consumer goods, healthcare, energy & manufacturing industries. Reflecting these diverse experiences, Joe often helps clients in cross-industry deals (e.g., IoT, SaaS & “big data” deals) with companies outside their own industry.

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

Joe teaches the "Patent and Technology 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 patent & licensing 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 is recognized as 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 all of California -- and the only one from a boutique (non-AmLaw 100) law firm. IAM states: “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 was also profiled in “Marquis Who’s Who in American Law”, “Marquis Who’s Who in America” and “Marquis Who’s Who in the World”.

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.

Contact Information: Joseph Yang, PatentEsque Law Group, LLP, 2440 Sand Hill Road, Suite 400, Menlo Park, CA 94025, joe@patentesque.com, 650-233-0822

 


Meredith McKenzie joined Juniper Networks as the Vice President and Deputy General Counsel in 2012. She has over 20 years of Intellectual Property experience, with 18 years in-house. At Juniper Meredith manages the groups responsible for all aspects of Juniper’s Intellectual Property, including patents, licensing, privacy, open source, standards, M&A IP due diligence, trademarks, copyrights and trade secrets. In addition, she also manages the groups responsible for Litigation, Employment and Legal Operations.

Prior to joining Juniper, she spent over 5 years at Symantec Corporation as the Senior Director of Intellectual Property and 5 years at Cypress Semiconductor as the Director of Litigation, Licensing and IP.  Meredith’s previous experiences include working as an embedded microprocessor design engineer at Intel before enrolling in law school. While attending law school in the evenings, Meredith worked full-time in Intel's legal department preparing patent applications and performing patent analyses. Meredith then joined Arnold, White and Durkee (later merging with Howrey LLC) and for three years litigated patents in the United States, Europe and Asia, as well as in the International Trade Commission. Meredith then joined Enuvis, a start-up company in the area of GPS location technology, as the Director of IP and Sr. Corporate Counsel, where she was the sole attorney, performing duties including patent portfolio development and strategy, license negotiations, and employment and other agreements.

In addition, for the past 3 years, Meredith has been a Professional Mentor for the U.S. State Department program, TechWomen, and has been a mentor for the Santa Clara University School of Law’s Entrepreneur Law Clinic since its inception in 2013.

Meredith holds a BSEE from Massachusetts Institute of Technology., and a J.D. from Santa Clara University School of Law, Magna Cum Laude, with an emphasis in Intellectual Property.


Nader A. Mousavi is a partner in Sullivan & Cromwell’s Palo Alto office and is co-head of the Firm’s Intellectual Property and Technology Group and the Firm’s Cybersecurity Group. A leader in the field of technology and intellectual property transactions and strategy, Mr. Mousavi has been recognized as a 2017 IP Trailblazer by the National Law Journal, as one of the “The World’s Leading IP Strategists” and “World’s Leading Patent Practitioners” byIntellectual Asset Management (IAM) for Strategy 300 (2015-2017) and Patent 1000 (2012-2017) and as one of the “Top 100 Lawyers in California” by Daily Journal (2012). He is a Lecturer in Law at Stanford Law School (2015-2017), where he teaches a course on Patent and Technology Licensing.

Mr. Mousavi focuses his practice on the intellectual property and technology aspects of high-stakes transactions, including mergers, acquisitions, spin-outs, joint ventures, collaborations, financings, licenses and settlements. He has extensive experience in the licensing and transfer of patents, trademarks, trade secrets, know-how, content, pharmaceuticals, data, software and other technology.

Prior to joining S&C, Mr. Mousavi was a partner at WilmerHale where he co-founded the firm’s Palo Alto office. Earlier in his career, he served as the general counsel to a telecommunications software (SaaS) company through its acquisition by a leading broadband equipment company.


William Hamby is an intellectual property attorney with the Specialty Products Division of DowDuPont™ in Wilmington, Delaware.  He has provided counsel on IP matters to several businesses on behalf of the heritage DuPont Company, including DuPont’s Performance Materials, Performance Polymers, Central Research & Development, and Agricultural Chemicals divisions.  His IP experience extends across numerous polymer platforms in a variety of fields, including automotive components, energy, consumer electronics, and medical applications.  His responsibilities include preparing and prosecuting patent applications globally (via the USPTO, PCT, and national-stage examinations); leading teams to monitor and evaluate third party patent positions; managing an active docket of oppositions before the European Patent Office; and, proactively engaging technology and business teams to identify inventions of strategic importance and to implement appropriate legal protection to best support business objectives.  

Mr. Hamby has structured, negotiated and prepared joint development agreements, patent licenses, university/government research contracts, and technology option agreements.  He has served as lead IP attorney for several transactions including a major divestiture, joint development programs, and technology collaborations.  He regularly designs and conducts in-house legal seminars, on topics ranging from basic patent principles to the AIA.  Mr. Hamby has managed cross-functional teams on projects of strategic business value and is Six Sigma-certified.

Mr. Hamby earned a BSE degree in chemical engineering from the University of Michigan and a JD degree from the University of Detroit.  He is a member of the State Bar of Michigan and registered to practice at the U.S. Patent and Trademark Office, and is admitted (for DuPont only) to the Delaware Bar.


Winston Henderson is Vice President, General Counsel of Nano Terra, Inc., a Boston-based nanotechnology company with life science and non-life science divisions. Prior to Nano Terra, Winston was Corporate Secretary of Surface Logix, Inc., a biopharmaceutical and drug development company in Boston, MA Vice President, General Counsel and Corporate Secretary of Surface Logix, Inc., a biopharmaceutical and drug development company in Boston, MA. Winston supervises all legal functions, including corporate governance, corporate legal strategy, regulatory, intellectual property and licensing, litigation, and business development support.

Prior to joining Surface Logix, Winston was an attorney with Kenyon & Kenyon, and a consultant with Andersen Consulting (now Accenture) in its Advanced Systems and Technology Integration Services groups. During that time, Mr. Henderson consulted with and advised numerous international high technology, medical device and pharmaceutical companies, including several based in the United Kingdom and Israel.

Mr. Henderson received his B.S.E. in Biomedical & Electrical Engineering from Duke University (where he was a Reginaldo Howard Scholar), and his J.D. from Duke University School of Law.


With over a billion dollars in patent deals under his belt, Mark Holmes is the founder and CEO of PatentBridge LLC, a privately held technology development firm in Silicon Valley that specializes in bringing to market select patented technologies covering extraordinary software and Internet-related breakthroughs. 

Mr. Holmes is the CEO and Co-Founder of RavenWhite Cybersecurity, Inc. which was selected as one of the top 10 security startups worldwide at the RSA Conference. He is also the Executive of Business Development for the DeCaf Co. which is creating the world’s first consumer instant decaffeination product.

Mr. Holmes has advised such technology savvy entities as Visa, Sony, Applied Materials, University of California at Berkeley as well as many startups startups and has been named every year to the IAM Strategy 300 – The World’s Leading IP Strategists.  He served as co-chair of the Silicon Valley Chapter of the Licensing Executives Society (LES) from 2006 to 2011.

He was the co-founder of a successful telecommunications startup which was sold in the late 1990s to a portfolio company of the Alabama state retirement fund (Retirement Systems of Alabama).

He lectures nationally on the pressing issues facing tech startups. In the past few years, he has spoken nationally over 50 times for such bodies as Renaissance Weekend, International Society for Optical Engineering (SPIE), PLI and other organizations.

He holds an engineering degree from Brown, is a member of the Institute of Electrical and Electronics Engineers (IEEE), IEEE Software Society and wrote the book PATENT LICENSING AND SELLING: STRATEGY, NEGOTIATION & FORMS.