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IP Monetization and Investment 2017: Maximize Your Financial and Strategic Options


Speaker(s): Aaron Slan, Corey M. Horowitz, David L. Cohen, David Rabinowitz, Ed Fish, Eric Huang, Ira Jay Levy, Jose A. Esteves, Kent Richardson, Lew Zaretzki, Marti A. Johnson, Michael D. Friedman, Prof. Lisa A. Dolak
Recorded on: Apr. 19, 2017
PLI Program #: 186799

David L. Cohen, is the President of DLCIP Corporation which provides legal advice through the law firm of David L. Cohen, P.C. and IP and Business consulting services through Kidon IP Corp.  David was admitted to practice in New York in 1999 and is also admitted to practice in New Jersey, the District of Columbia and before the USPTO.

David’s hand-on experience includes strategic litigation planning; global project management; patent monetization; FRAND licensing; building and managing legal and IP teams; patent licensing and negotiations; global anti-trust; strategic IP portfolio development and acquisition; IP strategy and opinion work; patent and trade secret assessments; and IT needs, strategy, & design.

Prior to founding David L. Cohen, P.C. and Kidon IP Corporation, David was the Chief Legal and IP Officer of FORM Holdings, Inc. (f/k/a/ Vringo, Inc.) where he created a world class in-house team that spearheaded an effective global monetization program and brought in over 40MUSD in licensing revenue while pioneering numerous cutting edge, global monetization, enforcement and structured innovation techniques.

Prior to FORM, David was senior in-house counsel at Nokia Corporation, where he participated in or managed projects that generated over 1BUSD in revenue. David worked at the law firms of Lerner David and Skadden Arps before joining Nokia and clerked for Chief Judge Carman of the Court of International Trade. 

David has a BA and M. Phil in the History and Philosophy of Science, an MA in History and an MA in Legal and Political Theory. His received his juris doctorate from Northwestern University School of Law in 1998, cum laude, where he was on law review. David has multiple publications to his credit, is a co-inventor on two patents, and is a frequent speaker at conferences.  David was listed in IAM 300 The World’s Leading IP Strategists in 2015 and 2016.


Eric Huang is a partner in Quinn Emanuel's New York office.  He represents both plaintiffs and defendants in intellectual property matters.  He specializes in building patent infringement cases on either side of the “v” in highly technical subject matter.  He has extensive experience litigating patent cases involving a wide range of technologies – smartphones, user interface software, touchscreen technology, circuits, semiconductor processing, spreading and modulation techniques used in wireless communication, various aspects of 3G and 4G cellular communications, error control coding including turbocodes and low density parity check codes, digital video compression, audio compression, pharmaceutical formulations, fiber optics, liquid crystal displays, mechanical measurement devices, electronic engine control, e-commerce, and computer systems. 

His practice encompasses all aspects of case preparation, pre-trial discovery, expert preparation, trial preparation and trial in U.S. federal district courts and before the U.S. International Trade Commission.  He served as a trial counsel for respondent Samsung in ITC investigation 337-TA-796 initiated by Apple against Samsung's smartphones, tablets and media players.  The firm successfully defended against efforts to stop the importation of Samsung devices; to date, no Samsung device was excluded or seized as a result of any order from this investigation.  Eric recently helped secure a very favorable jury verdict for Marvell Semiconductor in a case brought by France Telecom in San Francisco federal district court alleging infringement by Marvell’s 3G baseband chips.  In addition to a favorable damages verdict of a fraction of the damages sought by plaintiff, the firm recently secured judgment for Marvell Semiconductor on post-trial motions in that case.  Eric also has experience prosecuting patents and is admitted to the U.S. Patent & Trademark Office. 

Eric’s representative clients include BlackBerry, California Institute of Technology, Canon, Marvell Semiconductor, MediaTek, Monolithic Power Systems, Motorola, Reliant Pharmaceuticals, Rovi, Samsung, and Sony.

Prior to joining Quinn Emanuel, Eric was an associate with the law firm of Fish & Neave and served as a law clerk to the Honorable Eric Bruggink on the U.S. Court of Federal Claims (1997-1998).  He is a 1997 graduate of the George Washington University Law School, and has a materials science & engineering degree from the University of Michigan in Ann Arbor.  Prior to law school, Eric worked for National Semiconductor in California as an electronic packaging engineer.  He currently serves on the Board of Directors of the New York Lawyers for the Public Interest and the Board of Trustees for the Blue School, a private independent school in New York City.


Ira Levy is a senior partner in Goodwin’s Litigation Department and a member of its Intellectual Property practice. He is recognized globally for his cross-disciplinary expertise, successfully first-chairing patent, trademark, copyright, false advertising, IP licensing and related matters for a wide array of industries and in a variety of technical disciplines. Mr. Levy is fluent across a variety of product categories and technical disciplines, and has extensive experience with disputes involving biotechnology, electrochemistry, and pharmaceuticals; electronics, computers and telecommunications; mechanical devices; industrial and consumer products; and the Internet, new media and e-commerce. 

Mr. Levy has handled as first chair numerous bench and jury trials in federal and state courts nationwide. He also has significant experience practicing before the U.S. Court of Appeals for the Federal Circuit, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board, Patent Trial and Appeal Board, and the United States Supreme Court. In addition to his litigation work, Mr. Levy works closely with the firm’s Business Law Practice counseling clients on general corporate matters involving intellectual property and the Internet, as well as transactional due diligence, and other licensing issues.

Mr. Levy presently serves as the lead director for Stomp Out Bullying, the leading national anti-bullying and anti-cyber-bullying organization, and on the advisory board of BUILD, a non-profit focused on bringing entrepreneurialism skills to at-risk high school students. He is past director of Love Our Children, USA, a not-for-profit focused on breaking the cycle of violence against children.  Mr. Levy has been an active member of the New York Intellectual Property Law Association, International Trademark Association, American Intellectual Property Law Association, Pharmaceutical Trademarks Group and the Legal Aid Society. He has also acted as pro bono counsel to the United Way of New York City and cyberangels.org., and is a past member of the Board of Directors of the New York Intellectual Property Law Association.

Mr. Levy is listed in New York Super Lawyers (2006 – 2018), The International Who’s Who of Trademark Lawyers, World Trademark Review 1000, Who’s Who Legal Patents, Who’s Who Legal Life Sciences: Patent Litigation, Euromoney’s Guide to the World’s Leading Experts in Patent Law and The Legal 500 and IAM Patent 1000 – The World’s Leading Patent Professionals (2014 – 2018).

Mr. Levy is a frequent speaker and has written numerous articles on the topics of intellectual property, patent, trademark and copyright laws that have appeared in The New York Law Journal and Metropolitan Corporate Counsel. He serves as the co-chair of the Practicing Law Institutes multi-day Advanced Licensing Program, as well as presenting on license litigation for other PLI programs.  He also authored chapters in Commercial Damages (published by Matthew Bender & Co.) and the Wiley Intellectual Property Law Update (published by Aspen Law & Business). Mr. Levy is also a regular presenter at AIPLA, INTA, NYSBA and NYIPLA events. In addition, he maintains an active roster of speaking engagements on intellectual property audit, portfolio development, strategy and management, and Internet and new media matters.  He also lectures on Trademark Licensing at Cornell Law School.

 


Lisa A. Dolak is Senior Vice President and University Secretary at Syracuse University, and the Angela S. Cooney Professor of Law at the Syracuse University College of Law.  As University Secretary, Professor Dolak supports the overall work of the Board and manages the Office of the Board of Trustees. She teaches courses on patent law, civil procedure and the federal courts, and serves as an expert in patent cases, attorney malpractice cases, and practitioner disciplinary proceedings.

During a sabbatical leave from Syracuse University, she served as law clerk to the Hon. Paul R. Michel, Judge (Ret.), United States Court of Appeals for the Federal Circuit.  She served during 2005-2013 as a member of the Federal Circuit’s Advisory Council.  

Prior to attending law school, Prof. Dolak worked for several years as a synthetic organic chemist in pharmaceutical research aimed at the development of new drugs at Bristol-Myers Company and Ayerst Laboratories Research, Inc.

Prof. Dolak received her Bachelor of Science in chemistry from Duquesne University and her Juris Doctor, summa cum laude, from the Syracuse University College of Law.  She is admitted to practice in New York and before the U.S. Patent and Trademark Office.  Her research interests include issues at the intersections of patent law and judicial procedure and patent law and legal ethics.  Representative publications include:

Trial Lawyers in Trouble: Litigation Misconduct and Its Ethics Fallout, 52 U. LOUISVILLE L. REV. 225 (2014)
Litigating Inequitable Conduct after Therasense, Exergen, and the AIA:  Lessons for Litigants, Options for Owners, 13 CHI.-KENT J. INTELL. PROP. 51 (Fall 2013)
America Invents the Supplemental Examination But Retains the Duty of Candor:  Questions and Implications, 6 AKRON I.P. J. 147 (2012)
Ethics in Intellectual Property Negotiations:  Issues and Illustrations, 40 AIPLA Q.J. 197 (2012) 
One Patent, Two Paths:  Federal Circuit Review of Divergent USPTO and District Court Decisions, 4 No. 2 Landslide 22 (2011)
The United States Patent System in the Media Mirror, 58 SYR. L. REV. 459 (2008) (with Blaine T. Bettinger, Ph.D.)
Power or Prudence: Toward a Better Standard for Evaluating Patent Litigants’ Access to the Declaratory Judgment Remedy, 41 U.S.F. L. REV. 407 (2007)


Lew founded Hamilton IPV and is recognized as an industry leader who has appeared in leading business publications and academic journals, spoken at major IP industry events, and published a number of studies of the patent transaction market.

Lew focuses on buy and sell-side IP due diligence and transaction execution for major M&A transactions and financial investments, as well as the valuation and evaluation of IP transactions including licenses, acquisitions and divestitures. Lew also develops IP strategies, benchmarks best practices, and develops licensing strategies.

Prior to establishing Hamilton IPV, Lew served as EVP of Advisory Services for ThinkFire, an IP industry boutique, and as a principal in Regis McKenna’s strategy consulting firm where he led marketing strategy development for  high tech clients and investment due diligence for private equity and venture capital funds. Before that, Lew served as a management consultant in PriceWaterhouseCoopers’ Telecom Strategy practice and Andersen Consulting’s Technology practice.

Relevant publications include:

  • A New Dataset on Mobile Phone Patent License Royalties”, The Hoover Institution at Stanford University, Galetovic, Haber & Zaretzki, Sep 25, 2016
  • The Patent Transaction Market at a Crossroads”, IAM Magazine, Zaretzki & Richardson, March/ April 2009
  • Rising Prices and Changing Strategies”, IAM Magazine, Zaretzki, February/ March 2008
  • Awards include: IAM Magazine’s “IAM 250/ 300: The World’s Leading IP Strategists”- 2009 - 2016
  • Citations include: The Wall Street Journal, Dow Jones, The Deal, The University of Chicago Law Review, The Toronto Globe & Mail, The Hastings Law Journal, The EE Times, The Hoover Institution at Stanford University
  • Speaking Engagements include: The Berkeley Center for Law & Technology, The CIP Forum, The Gathering 2.0, Duke University, The Licensing Executives Society, Ropes & Gray

Education

MBA, Fuqua School of Business, Duke University, 1999

BA Economics, University of Michigan, 1992


Michael recently joined Hilco Global from his position as Managing Director at Ocean Tomo, LLC, an intellectual property merchant bank. Michael led the Investments practice, which included Investment Banking, Asset Management and Investment Research.  As an IP investment banker, Michael executed IP financing, monetization and capital markets solutions for corporations and other intellectual property owners.  He also served as Chief Investment Officer of OT Asset Management, engaging in public equity, special situations, IP collateralized lending where intellectual property insight drives alpha creation.

Prior to joining Ocean Tomo in 2007, Michael founded and was Managing Partner of FHS Investments, LLC, a multi-strategy hedge fund.  Prior to that, he was a Managing Director at UBS where he ran a $3 billion portfolio as co-head of Special Situations for O’Connor hedge fund and proprietary Special Situations trading.  Mr. Friedman practiced mergers and acquisitions and securities law before entering investing and investment banking.


Mr. Fish is responsible for IP and tech transactions and strategies. He is an experienced technology company executive and board member, and has substantial experience in patent law and litigation, capital market fund raising, and corporate/business development strategy and execution. He previously served as President and a Board member at Digital Rights Management and IP Licensing pioneer, InterTrust, President & CEO at social education company ePals Corporation (now Cricket Media, TSX: CKT) (2010- 2014), and SVP Premium Services and SVP DeskTop Messaging at AOL. Mr Fish also specialized in Patent/IP transactions and litigation in the New York and Silicon Valley offices of national law firm Weil, Gotshal & Manges, and served as a Law Clerk for Chief Judge Howard Markey on the US Court of Appeals for the Federal Circuit.

With InterTrust’s founder, Mr. Fish helped build the Company from a small start-up to a Nasdaq-listed Company (ultimately sold to Sony and Philips for US$453M). He was responsible for building and later monetizing Intertrust’s extensive patent portfolio through licensing, litigation and standards-based activities. At AOL, Mr. Fish and his teams created over a dozen highly rated products in the instant messaging, security and computing performance, digital media, and education services sectors. He served as counsel for Genentech in the landmark patent and antitrust case, Genentech v. Eli Lilly & the University of California.

Mr. Fish holds more than 20 issued and pending US patents in such diverse fields as presence and instant messaging, social networking, mobile computing and search/discover technologies. Mr. Fish holds a Bachelors of Science in Biomedical Engineering from Marquette University, and a JD magna cum laude and Order of the Coif from Wayne State University.


David Rabinowitz is co-head of the Litigation Department and a member of the Intellectual Property Department and Legal Ethics and Law Firm Practice Department at Moses & Singer, where he has been a partner since 1985.  He handles civil commercial cases of all kinds and in particular both litigates and advises clients on financial industry and intellectual property matters.  He is a frequent speaker on ethical issues concerning negotiations.  Mr. Rabinowitz has appeared in state and federal courts and in arbitrations throughout the United States.

Mr. Rabinowitz has lectured and participated on panels before the Bar Association of the City of New York, the American Bar Association, the Practicing Law Institute, the Institute of International Banking Law, the Copyright Society of the United States, the New Jersey Intellectual Property Law Association, the National Association of Recording Manufacturers, the Licensing International annual convention, the Professional Education Broadcast Network and the Massachusetts Software Council.  He has taught Copyright Law at Seton Hall Law School.  He is a member and former trustee of the Copyright Society of the United States.  Mr. Rabinowitz has published numerous articles which have appeared in Advertising Age, Entertainment Law Reporter, The Entertainment Publishing and the Arts Handbook, The Bulletin of the Copyright Society of the United States American Lawyer's Corporate Counsel Magazine and The Practical Lawyer.

Education

  • Columbia University School of Law, J.D., 1976, Harlan Fiske Stone Scholar, 1973-1976
  • Massachusetts Institute of Technology, S.B., 1972

Articles

  • "New York Resolves In-House Counsel Bar Admission Problem"
  • "Up Close and Professional with New York’s Engagement Letter Rules"
  • "Communications Decency Act"
  • "Non-Traditional Fee Arrangements and Doing Business with Clients"
  • "Everything You Ever Wanted To Know About the Copyright Act Before 1909"
  • "Web Site Story 6-Breakaway Employees Beware"
  • "Web Site Story 5-Emerging Limits to Out-of-State Jurisdiction over Web Sites"
  • "Web Site Story 4-Nationwide Internet Jurisdiction is not Ended by Blue Note"
  • "Web Site Story 3-The Emerging Tort of Domain Name Infringement"
  • "Web Site Story 2-Finding Yourself Subject to Jurisdiction Far, Far Away"
  • "Web Site Story-A Legal Primer for Web Site Owners and Designers"
  • "Copyright Preemption: New York State's Erroneous Interpretation"
  • "Copyright and Trademark Infringement: Current Techniques for Plaintiffs and Defendants"

Presentations – (last 10 years - most recent year for series)

  • 2017 Practicing Law Institute program, "Ethics for the Negotiating Lawyer"
  • 2017 Practicing Law Institute program, "Advanced Licensing Agreements"
  • 2016 Institute of International Banking Law Standby and Guaranty Forum and Law Summit, “Recent Letter of Credit Cases”
  • 2016 Practicing Law Institute program, "Understanding The Intellectual Property License"
  • 2016 New Jersey Intellectual Property Law Association, “Cases in Negotiation Ethics”
  • 2015 Practicing Law Institute program, “Outsourcing 2015: Sourcing Critical Services”
  • 2014, 2012, 2007 Copyright Society of the U.S.A., “Show Me the Money: The Essentials of Valuation of Copyrights in Transactions and Litigation,” "Basic Ethics for the Negotiating Lawyer," "Non-Traditional Fee Arrangements and Doing Business with Clients"
  • 2013 National Association of Recording Manufacturers, “Negotiation Ethics”
  • 2010 Professional Education Broadcast Network, “Ethics in Negotiations”
  • 2008 Licensing International - "Winning Ethics in Licensing"
  • 2007 Practicing Law Institute program, "Internet Law Institute"
  • 2007 CMJ Music Marathon and Film Festival, “Games Without Frontiers”
  • 2001-2004 Adjunct Professor, Copyright Law, Seton Hall Law School


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.”


Kent Richardson counsels clients on a variety of patent and business matters including patent buying, selling, licensing, valuation, prosecution and operations. Kent has licensing and marketing patent portfolio experiences resulting in more than $700M of patent license bookings and $100M in patent purchases or sales. Kent has served as an expert witness on patent monetization and licensing practices in cases in England and the United States. Richardson Oliver publish a widely read annual secondary market report on patent purchases and sales.

Prior to founding the ROL Group, Kent worked in various senior management roles with such growth businesses as ThinkFire, Sezmi, Constellation Capital, Rambus, Numerical Technologies. Kent was also an attorney in private practice at Wilson Sonsini Goodrich & Rosati.

Kent is a member of the California Bar and a United States Patent and Trademark Office registered patent attorney. He holds five US patents.

He holds a JD and a BSc in Computer Engineering from the University of Alberta, Canada.


Marti Johnson concentrates her practice on intellectual property and technology law, with a focus on patent and trade secret litigation. She has represented clients in federal and state litigation, multidistrict litigation, arbitration, and before the Patent Trial & Appeal Board.  She is a member of the Skadden group recognized by The National Law Journal as one of the country’s leading IP practices in its 2013 “IP Hot List.”

Ms. Johnson has represented clients in matters involving a wide array of technologies, including computer hardware and software, financial systems, e-commerce, Internet technologies, food processing and engineering, telecommunications systems, medical devices, data transmission, semiconductors, electronic displays (including micromirror array and LCD technology) and pharmaceuticals.

Ms. Johnson also provides guidance to her clients on a variety of issues, including intellectual property transactions, freedom to operate determinations, electronic discovery parameters and damages evaluations.

Ms. Johnson’s pro bono practice includes nonprofit intellectual property investigations, social security benefits representation, prisoner abuse cases, and work for the Innocence Project.


Skills:
Private Equity, Valuation, Investment Banking, LBO, Financial Modeling, Hedge Funds, Capital Markets, Alternative Investments, Due Diligence, Corporate Finance, Leveraged Finance, Investments, M&A experience, Mergers & Acquisitions, Loans, Restructuring, Joint Ventures, Corporate Development, Financial Structuring

Education:
University of Pennsylvania - The Wharton School   2001 – 2003
BSc, Finance and Decision Processes

Universität St. Gallen-Hochschule für Wirtschafts-, Rechts- und Sozialwissenschaften   1999 – 2001

Experience:
Fortress Investment Group   2014 – Present 
Fortress Investment Group   2010 – 2014 
Fortress Investment Group   2007 – 2010 
Bear Stearns Merchant Banking   2005 – 2007 
Credit Suisse First Boston   2003 – 2005 


Mr. Horowitz is Chairman and CEO of Network-1 Technologies, Inc. (NYSE: NTIP) and has held such positions since December 2003. Network-1 is engaged in the development, licensing and protection of its intellectual property and proprietary technologies and also works with companies and individual inventors to develop and monetize their intellectual property. Network-1 currently owns portfolios of patents covering various telecommunications and data networking technologies as well as technologies relating to document stream operating systems and the identification of media content. Network-1 currently has twenty-four licensees to its Remote Power Patent, which include license agreements with Cisco Systems, Extreme Networks, Netgear, Microsemi Corporation, Motorola Solutions, NEC Corporation and Samsung Electronics. Network-1’s Remote Power Patent has generated in excess of $90 million since licensing activities began in 2004. Mr. Horowitz oversees all development, licensing and enforcement of Network-1’s patent portfolios, including all litigation and U.S. Patent and Trademark Office activities. He is currently overseeing several pending Network-1 litigations against Hewlett-Packard, Avaya, and Google, among others.