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Advanced Patent Licensing 2018


Speaker(s): Carrie M. LeRoy, Jake Handy, Joseph Yang, Kent Richardson, Khue V. Hoang, Mark S. Holmes, Meredith M. McKenzie, Nader A. Mousavi, Rick C. Chang, Robert P. Taylor, Suzanne Y. Bell, William H. Hamby, Winston E. Henderson
Recorded on: Sep. 14, 2018
PLI Program #: 219251

Carrie LeRoy advises clients on a wide range of intellectual property, technology and sourcing transactions, including development and license agreements, patent and other technology license agreements, outsourcing, joint ventures and strategic collaborations.

Clients benefit from Carrie's experience working within a range of sectors, with a particular focus on technology and cross-border transactions. She is Co-Chair of Gibson Dunn’s Technology Transactions Group. Her extensive work for technology companies, including leading semiconductor, social media and information technology companies, involves advising on the intellectual property aspects of a range of complex transactions, including mergers, acquisitions, asset purchase, joint development and intellectual property divestitures. She also advises companies in the electronics, software, electronic storage, telecommunications, e-commerce and financial services sectors. She regularly handles a variety of commercial transactions, including original equipment manufacturer, reseller, distributor, sales representative, services, manufacturing and supply agreements. Another aspect of Carrie's practice includes intellectual property counseling, including with respect to the allocation of intellectual property ownership, protection and monetization of intellectual property rights, open source and data privacy.

Widely recognized as a leader in intellectual property transactions and an innovator in the industry, Carrie has been honored by a number of California's leading legal publications in recent years. In 2017, Carrie earned top ratings for her patent work from Intellectual Asset Management (IAM), the world’s leading intellectual property business media platform. The Daily Journal recognized Carrie as one of its 2016 "California Lawyer Attorneys of the Year" for her cutting-edge work with regard to a highly complex technology transaction valued at $37 billion. That same year, she was also named to The Recorder's list of "Women Leaders in Tech Law." In 2015, she was selected by the Silicon Valley Business Journal as one of its "2015 Women of Influence," and in 2014, The Recorder presented her with an "Innovator Award" for a pro bono program she developed to educate teens on the laws relating to social media and technology usage.

Prior to joining Gibson Dunn, Carrie was a partner at an international law firm. She has also worked in-house with Marvell Semiconductor as a senior intellectual property licensing attorney, where she negotiated and drafted a variety of inbound and outbound technology.


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. 


Rick is an experienced intellectual property and commercial litigator and has appeared in courts throughout the United States, including the ITC. His practice is devoted to litigation of patent, trademark, trade dress, trade secret, and unfair competition matters, contested proceedings before the Patent Trial and Appeal Board, and counseling clients on IP-related issues, including patent monetization and licensing. Rick has represented clients in a variety of technologies, including smartphones, networks, wireless systems, semiconductor manufacturing, CMOS, batteries, expert systems, mechanical devices, software applications, power controllers, disk drives, biotechnology, pharmaceutics, laboratory equipment, and wind tunnels. He routinely takes leading roles in all aspects of his cases and has significant experience briefing and arguing claim construction and dispositive motions. He is registered with the USPTO.

Rick has taught as an Adjunct Professor at Golden Gate University and Santa Clara Law School, and has served as Judge Pro Tem in Santa Clara Superior Court.


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

 


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.


Khue V. Hoang is a partner in the firm’s Intellectual Property and Technology Practice group. She has nearly two decades of experience representing clients in patent infringement, patent prosecution and licensing proceedings.  A former process and product engineer for Rockwell Semiconductor Systems, Khue brings an understanding of industrial and corporate knowledge that leads to effective and efficient legal solutions for high-stakes litigation and patent enforcement work. EMC, LGE, Motorola, BioTelemetry and other well-known companies in diverse technology areas have relied upon Khue to conduct complex litigation and implement effective licensing strategies in numerous marketplaces. Khue also handles trademark and copyright procurement and enforcement.

Education
• University of California, Berkeley Law School, J.D., 1999, American Jurisprudence Award
• University of California, San Diego, Msc, Electrical Engineering, 1993
• University of California, Irvine, B.S., 1991

Bar Admissions
• California, 2000
• New York, 2003

Languages
• Vietnamese

Areas of Focus
• Life Sciences
• Litigation
• Patent, Trademark & Copyright Litigation


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.


Suzanne Bell has more than 20 years of experience representing some of the world’s most prominent technology companies in their most significant technology and intellectual property transactions. Recognized as a leading practitioner in Chambers USA for her "wealth of experience," clients describe her as "service-oriented, delivering high-quality work product in a practical and friendly manner."

Ms. Bell focuses on technology and IP transactions—with an emphasis on complex strategic alliances—for a wide range of software, electronics, AI, IoT, autonomous vehicle, telecommunications, cloud computing, digital media, Internet, fintech, digital health, and clean technology companies. Her practice also includes strategic intellectual property asset purchases and sales; technology mergers, acquisitions, and spin-offs; and intellectual property litigation settlement agreements. In addition to her transactional work, she provides product counseling and advice on structuring business models for emerging technology companies and traditional companies that are embracing technology. Ms. Bell works with both growth and mature companies, and she has advised many of Silicon Valley's most prominent companies from start-up to maturity.


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.