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IP Monetization and Investment 2019: Maximize Your Financial and Strategic Options


Speaker(s): Alexandra F. Awai, David L. Cohen, David Rabinowitz, Emily Hostage, Jose A. Esteves, Kimberly Klein Cauthorn, Matt Stack, Sasha (Alexandra) Sokhis, Thomas D. Pease
Recorded on: Apr. 12, 2019
PLI Program #: 252614

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.


Emily Hostage is a Vice President at Burford.

Prior to joining Burford, Ms. Hostage was Vice President of Strategic Analytics and Policy at RPX Corporation, a leading global provider of patent risk management services. At RPX, she managed a team of researchers evaluating patent lawsuits and forecasting risk to potential licensees. Previously, Ms. Hostage practiced law at Arnold & Porter, where she represented high-tech clients in patent, copyright and trade secret litigation cases.

Ms. Hostage graduated from Boston University with Bachelors and Masters degrees in electrical engineering. She obtained her JD, cum laude, from Harvard Law School, where she also served as Executive Director of the Harvard Legal Aid Bureau.


PRACTICE

Alexandra F. Awai is an associate in the Intellectual Property Department of Willkie Farr & Gallagher LLP in New York.  Alexandra has experience in trademark law, inter partes reviews, and patent litigation and prosecution.  She has worked on cases involving pharmaceuticals, software and consumer products.  Alexandra has played a substantial role in litigations involving: Epiduo® (adapalene and benzoyl peroxide), Vascepa® (icosapent ethyl) and Neupro® (rotigotine).  She has also conducted confidential patent analyses and opinion work relating to biosimilars, as well as small molecules with antibiotic, anti-cancer, cardiovascular and immunological activity. 

 

PRIOR EXPERIENCE

Ms. Awai previously served at the United States Patent and Trademark Office as Patent Examiner for Class 376: Induced Nuclear Reactions, where she examined utility patent applications for processes, systems and manufactures relating to induced nuclear reactions, including medical and energy technologies.  She was responsible for composing and submitting Patent Office Actions such as application rejections, claim restrictions and responses to appeals.

 

BAR ADMISSIONS

Ms. Awai is admitted to the Bar of the State of New York, and is registered to practice before the U.S. Patent & Trademark Office.

 

EDUCATION

Ms. Awai received a JD from Columbia University School of Law in 2010. She received an MS and BS in Nuclear Engineering (Biomedical Engineering minor) from the Massachusetts Institute of Technology in 2005.


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.


Sasha Sokhis is a Senior Vice President with the Houlihan Lokey Tech+IP Advisory practice. The Tech+IP Advisory practice focuses on the valuing and trading of intellectual property and advanced technology assets. As head of the Business Development team, Sasha works with clients ranging from Fortune 500 companies to emerging technology companies to uncover opportunities and develop creative deal structures that address the client’s unique business goals within the evolving legal intellectual property legal landscape. Sasha is also responsible for Tech+IP Advisory practice specific content marketing development and thought leadership event planning. 

She previously served as Vice President of Business Development at Black Stone IP, a boutique investment bank, which was acquired by Houlihan Lokey in 2017.

Prior to Black Stone IP, Ms. Sokhis held several positions at Thomson Reuters, including Government Account Manager in the San Francisco Bay Area and West Account Manager in New York. She has worked with large law firms in all practice areas, as well as state government agencies, focusing on legal research, litigation assistance, and client relations. Her previous experience includes the U.S. Attorney’s Office in San Diego and District Attorney’s Office in San Francisco.

Ms. Sokhis holds a B.A. in Psychology with a minor in Political Studies from UCLA, and a J.D. from the University of California, Hastings College of the Law.


Tom Pease is a partner in Quinn Emanuel’s New York office who concentrates his law practice on intellectual property disputes, including patent and antitrust litigation relating to standard essential patents or SEPs subject to FRAND obligations.  Tom has taken a leading role litigating multiple cases involving patents that were subject to the IPR policies of ETSI, 3GPP, IEEE, H.264, JEDEC and other standard setting bodies.  He has also served as lead counsel in patent and trade secret cases involving a wide range of technologies outside the context of standards, as well as in cases involving design patents and trade secrets.

Tom has been recognized as a top patent litigator in the IAM Patent 1000guide for the past five years, with the publication recently noting that Tom is a “five-star attorney” and “master strategist,” who is "brilliant at the intersection of patent and antitrust law" and "the man to call in a standard setting context."  For the past three years, Tom has also been recognized for “his licensing expertise in connection with standard-essential patents” in recognition of the numerous FRAND licenses that he has negotiated.

Tom has also been “highly recommended” for his patent litigation work in The Legal 500 and was listed again as a top-rated Intellectual Property Litigation Attorney in New York in the current edition of Superlawyers.

Tom also has extensive licensing and counseling experience.  He has designed and implemented patent procurement and licensing programs for numerous clients ranging from start-ups to Fortune 50 companies.  In that regard, Tom has traveled around the world to help clients assert their patents both within and outside the context of litigation and arbitration, and has negotiated numerous license agreements including several FRAND licenses based on portfolios that include SEPs.  Tom has also represented clients in connection with DOJ, FTC and DG Comp. investigations. 

Tom has litigated and tried several high profile cases in the Northern District of California, the District of Delaware, the Eastern District of Texas, the Eastern District of Virginia, the Southern District of New York, and several other venues.  He also has extensive experience coordinating multi-front litigations pending in various jurisdictions around the world, including the ITC where he regularly appears.  Tom prides himself on helping the firm's clients to achieve their objectives as cost-efficiently as possible, whether through pre-suit negotiations, early dispute resolution after the filing of a strong Complaint or Answer, or after a full trial or arbitration.


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.”


Matt Stack is a founder of XLP Capital, the founding manager of the Lambda Prime Investment Incubator Fund, and the Chief Investment Officer of XLP’s technology activist fund, Devonshire Capital Fund I. He is an experienced early and seed stage investor in high tech hardware and analytics companies with over $200M in completed deals, and serves as a technology advisor to a variety of institutions and family offices overseeing and directing over $500M. Over the past decade, Matt has acquired and developed a collection of minority interests in companies across North America ranging from small university spin outs to mid-sized industrial technology companies. Matt serves as an advisor to a number of privately held companies, where he manages and supervises technology and high performance computing investments. Matt has served as the Director of Computational Science at Mars Corporation and as a Partner at 3LP – a Boston-based elite Intellectual Property advisory firm. 

Matt’s prior experiences include managing acquisitions for a $120M corporate-led technology buyout fund in Palo Alto, as well as spending 6 years at The Boston Consulting Group in the Boston and New York offices, where he worked on projects in the Health Care, IT, Retail, Industrial Goods, and Strategy practice areas. He frequently helped corporate clients with topics including corporate growth strategy, merger and acquisitions, and post-merger integration. Before BCG, Matt co-founded and invested in a health care software startup, a small electronics company, an advanced composites design firm, and a semiconductor distribution company that traded high performance semiconductor chips between Shenzhen, Tokyo, and Tecate. 

Matt holds a B.S.E. in electrical engineering from Princeton University. He is a benefactor and sponsor of the TEDx conference series, and has sponsored research at the Santa Fe Institute in New Mexico, the Strategy Institute in New York, MIT’s Broad Institute, the Highlands Forum, the University of Oxford, and the Department of Defense. He is an accomplished computer hacker and cryptanalyst, and has written and advised on state-run network cyber-warfare policy, and agility-based strategic combat. Matt was recognized in 2009 by Hackaday as one of the top 10 most influential hardware hackers, and has been featured in Wired Magazine and the Wall Street Journal for his hobby electronics projects. He is the author of 11 neuroscience patents covering devices, analytical methods, and algorithms for detecting concussion and improving cognitive performance. In his spare time, he has been an Olympic hopeful in javelin, a competitive speedskater, a motorcycle collector, and is currently a professional windsurfer.