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IP Monetization and Investment 2018: Maximize Your Financial and Strategic Options


Speaker(s): Ami Patel Shah, David Yurkerwich, Elvir Causevic, Ira Jay Levy, John Veschi, Jose A. Esteves, Katharine Wolanyk, Kimberly Klein Cauthorn, Marla A. Decker, Victoria F. Maroulis
Recorded on: Apr. 18, 2018
PLI Program #: 219205

David Yurkerwich is a Managing Director and the Leader of the Navigant’s Intellectual Property team (“Navigant IP”).  He operates from offices in New York, San Francisco and Germany.  David and Navigant IP’s team of seasoned experts assist clients with the challenges and opportunities associated with assessing, valuing and managing IP assets in today’s global innovation economy.  They combine timely competitive information and state of the art valuation methodologies using advanced data and analytical tools to deliver practical business solutions.  David has been recognized by his peer group as one of the IAM Strategy 300 – The World’s Leading IP Strategists since 2008.

David works closely with inventors, owners and attorneys to assess patentability and markets for technologies to build and maintain competitive IP portfolios.  He actively negotiates IP based transactions and structures and manages joint development, licensing and enforcement activities.  David also provides expert valuation testimony in patent infringement cases, international arbitration and other business disputes involving companies in Asia, Europe, South America and the United States. This has included expert testimony in over 90 matters involving a broad range of technologies and markets.

David’s areas of expertise include:

Strategy
• Competitive benchmarking for portfolio development.
• Identifying and valuing tangible and intangible assets.
• Portfolio analysis for evidence of market use and potential value.
• Screening portfolios for patents in use or with future market applicability.
• Ongoing support to identify patents with value in non-core markets.

Transactions 
• Valuation opinions for mergers, acquisitions and divestitures.
• Assisting with business planning and capital raising activities.
• Developing joint ventures to commercialize new technologies.
• Preparing technology valuation sale and license models.
• Performing outreach, facilitating discussions and negotiating transactions.

Disputes
• Analysis of invention scope, markets and alternatives.
• Assistance with research and discovery to support damage models.
• Design and execution of apportionment models.
• Preparation of expert damage reports.
• Delivery of expert damage testimony.

 


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.

 


Role

Kim is the Global Intellectual Property Leader, Tech Media & Telecom at Willis Towers Watson.  Kim leads the team responsible for assisting clients with assessing, quantifying, and managing the financial impact of intellectual property risks, including use of risk transfer vehicles.

Relevant Experience

Kim is an attorney with 30 years of experience in insurance, consulting, academia, and law.  She has focused on IP risk management and insurance for the past 18 years. Kim served on the leadership teams, assisted with product development and wording, developed broker and market relationships, and led the claims division for three different IP insurance programs. In addition, Kim has provided specialist IP consultancy in licensing and monetization, risk assessment, litigation management, and damages analysis. Clients and insureds have included a range of large, public, private, and start-up companies in numerous sectors including networking, software, mobile communications, consumer electronics, media, financial services, and retail.

Prior to joining Willis Towers Watson, Kim was Vice President of Insurance Services at RPX Corporation.  She previously provided consulting services at Duff & Phelps, Marsh, and Kroll, taught at South Texas College of Law-Houston, and practiced law at Baker Botts.

Education and Credentials

Kim received a B.A. with High Honors (Plan II/English Honors) from the University of Texas at Austin, and a J.D. with Distinction from St. Mary’s University School of Law. She is licensed to practice law in the State of Texas and has a Texas P&C insurance license.


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.


John Veschi is the COO of Hilco IP Merchant Banking. Previously, Mr. Veschi was the CEO of Marquis Technologies, a full-service IP and technology consulting business. Prior to that, he was the founding CEO of the Rockstar Consortium from 2011 to 2015. While at Rockstar and as Nortel Networks’ Chief Intellectual Property Officer, Mr. Veschi was instrumental in its historic $4.5B IP portfolio sale. Prior to Nortel, Mr. Veschi was the General Manager of the Intellectual Property business at LSI Corporation, and had similar responsibilities at Agere Systems during the Lucent Microelectronics spinoff. Mr. Veschi began his in-house IP experience with the formation of Lucent, and was previously in private practice with Foley & Lardner. Mr. Veschi’s IP experience includes patent prosecution, reverse engineering and claim chart development, assertion-based licensing, IP litigation, and strategy development. In total, Mr. Veschi has created more than $6B of IP value for creditors or shareholders.


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.”


Katharine Wolanyk is a Managing Director of Burford Capital, where she is the head of the Chicago Office as well as of Burford’s Intellectual Property business. With experience spanning the business, legal and engineering sectors, she has been President of Soverain Software, an attorney at Latham & Watkins LLP and a systems engineer at Hughes Aircraft Company. She was named a World’s Leading IP Strategist by Intellectual Asset Management (IAM) in 2015, 2016 and 2017.


Marla Decker has been a Managing Director of Lake Whillans Litigation Finance since 2015.  Lake Whillans is a commercial litigation finance firm providing funding for companies in litigation or arbitration (both domestic and internationally).  Between 2007 and 2015, Marla was a litigator at Cleary Gottlieb Steen & Hamilton, where she represented financial institutions and major corporations in complex commercial litigations and government investigations.  Prior to attending law school, Marla was a senior consultant at WinMill Software where she provided software development services to an array of companies.  Marla has a J.D. from Benjamin N. Cardozo School of Law and a B.S. in Agricultural and Biological Engineering from Cornell University.


Dr. Causevic is a Managing Director and Co-Head of Houlihan Lokey’s Tech+IP Advisory practice.

Dr. Causevic was formerly the founder and CEO of Black Stone IP, a boutique investment bank focused on valuing and trading Tech+IP assets, which was acquired by Houlihan Lokey in 2017. Prior to Black Stone, he was instrumental in the MIPS semiconductors $350 million patent transaction while he served as the Head of IP Strategy Practice at Ocean Tomo. Before Ocean Tomo, Dr. Causevic founded several industrial, medical, and high-tech businesses, raising over $50 million in premier venture capital, two of which were ultimately acquired by Fortune 500 companies.

Dr. Causevic is a named inventor on more than 20 patents and patent applications, and was a J.W. Gibbs Assistant Professor of Applied Mathematics at Yale University. 

Dr. Causevic holds a B.S., an M.S., and a Doctor of Science in Electrical Engineering from Washington University in St. Louis, and a J.D. from the University of California, Hastings College of the Law.


Ms. Shah is Managing Director at Fortress Investment Group and a partner of Fortress’ IP Investment Group, a $70+ Billion dollar hedge fund providing the U.S.’s first structured patent debt financing platform, providing companies unique access to capital based upon the asset value of their patent portfolios.

Prior to joining Fortress, she was head of Global Wireless, Patents, for Intel Corporation for over 10 years where she oversaw the company’s patent procurement, licensing, transaction and monetization activities for Intel and Intel’s development partners. Before joining Intel, she was an associate in the law firms of Dorsey & Whitney, and Fish & Richardson. Ms. Shah began her career as an Examiner in the United States Patent Office.

Ms. Shah is recognized as one of The World’s Leading IP Strategists by Intellectual Asset Magazine in the IAM 300, awarded to individuals with an established track record in developing and rolling out world-class IP value creation programs.

She holds a juris doctorate and degrees in Electrical and Computer Engineering. She maintains an office in the Washington D.C. area with Fortress, where she is a member of both Maryland Bar and is registered to practice before the United States Patent and Trademark Office.