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Advanced Patent Licensing 2019


Speaker(s): Andrea L. Gothing, Carrie M. LeRoy, Jake Handy, Joseph Yang, Kent Richardson, Khue V. Hoang, Mark S. Holmes, Marta F. Belcher, Meredith M. McKenzie, Nader A. Mousavi, Rick C. Chang, William H. Hamby, Winston E. Henderson
Recorded on: Sep. 13, 2019
PLI Program #: 252780

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.


Experience

  • Fortress Investment Group

    Director

    Oct 2020 – Present

  • Robins Kaplan LLP

    Partner

    Sep 2002 – Oct 2020

  • Leadership Council on Legal Diversity

    2015 Fellow

    Mar 2015 – Mar 2016

  • Motorola

    Semiconductor Device Engineer

    Sep 1997 – 1999

     

    Education

  • University of Minnesota Law School

    JD, Law

    Activities and Societies: Journal of Global Trade

    Magna Cum Laude

  • University of Minnesota-Twin Cities

    Master's degree, Electrical and Electronics Engineering

  • Worcester Polytechnic Institute

Bachelor's degree, Electrical and Electronics Engineering, High Distinction

Activities and Societies: Eta Kappa Nu, Tau Beta Pi


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, strategic alliances, patent licensing/sales, standards body issues, IP aspects of M&A) and in using IP as strategic business assets. He has led hundreds of deals involving billions of dollars in and across the information technology, electronics, entertainment, consumer goods, healthcare, energy, chemical & manufacturing industries. Reflecting these diverse experiences, Joe is often retained to “bridge the gap” in cross-industry deals (e.g., joint ventures, IoT, SaaS & “big data” deals) between companies whose industries historically didn’t interact with each other.

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

Joe teaches the "Technology and Patent 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 licensing & patent 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 has been named 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 California -- the only one from a boutique (non-AmLaw 100) firm:

“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 is “one of the best expert witnesses you could hope to deal with. He considers all the issues before committing to an opinion, and his positions are always rock solid”.

He is also profiled in “Marquis Who’s Who in American Law”, “Marquis Who’s Who in America” and “Marquis Who’s Who in the World”, and named to the California SuperLawyers list.

Joe also serves on the advisory board of the Licensing Executives Society - Silicon Valley chapter, and is a board member of the Asian Pacific American Bar Association of Silicon Valley.

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.


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 Hoang is a partner in Reichman Jorgensen’s New York office.  She has more than 20 years’ experience representing clients in high-stakes patent infringement and licensing disputes. A former semiconductor engineer, Khue infuses her technical background and industry insights with her courtroom skills to effectively guide clients through their most complex intellectual property issues. She works closely with clients and experts to absorb complex technologies and craft effective strategies to protect and enforce their interests. 

Khue represents companies across a broad range of sectors, including telecommunications, data storage, consumer electronics, and medical devices. Her clients include a who’s who list of industry leaders, including EMC, Google, Apple, Samsung, Motorola, RSA Security, and BioTelemetry among others. Khue also routinely advises clients on intellectual property and privacy issues affecting M&A, private equity, and complex business disputes.

Khue is a member of the National Asian Pacific American Bar Association, and ChIPS, a national nonprofit organization that advances and connects women in technology, law and policy. In 2018, she received the Legal Aid Society Pro Bono Publico Award, an special honor awarded to lawyers and institutions that have demonstrated outstanding commitment to volunteer legal services for the poor and disadvantaged. 

Khue is a graduate of the University of California, San Diego, where she earned a MS in Electrical Engineering. She received her law degree from the University of California, Berkeley Law School.


Meredith McKenzie joined Juniper Networks as the Vice President and Deputy General Counsel in 2012. She has nearly 25 years of Intellectual Property experience, with over 20 years in-house. At Juniper Ms. McKenzie is responsible for managing all aspects of Juniper’s Intellectual Property, such as patents, in-bound technology licensing, privacy, information protection, 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 Government Affairs, and has also managed the Legal Operations function.

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.  Ms. McKenzie’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, Ms. McKenzie worked full-time in Intel's legal department preparing patent applications and performing patent analyses. Ms. McKenzie then Howrey LLC and for three years litigated patents in the United States, Europe and Asia, as well as in the International Trade Commission. Ms. McKenzie 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 6 years, Ms. McKenzie 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 and for its TechEdge program since 2019. Ms. McKenzie is also a board member for the Dental Board of California (2013-present) and Healthier Kids Foundation (2018-present).

Ms. McKenzie 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.

Widely recognized as one of the top technology deal lawyers in the world, Mr. Mousavi has been described by his clients as “‘an amazing lawyer and trusted legal and business partner…[with] a unique ability to think outside the box and meet company goals. There’s nobody better when you take into account substantive knowledge, composed demeanour and negotiation ability.’”(IAM Patent 1000). Clients praise his “‘legal erudition, superlative drafting and bargaining aptitude’” and note that “‘he is a uniquely talented lawyer. You can put him on pretty much anything…’” (IAM Patent 1000).

He has been named one of the “The World’s Leading IP Strategists” by Intellectual Asset Management (IAM) and was recently named a Law360 2018 MVP in technology, and has also been recognized by The American LawyerChambers USADaily JournalThe Legal 500 United StatesNorthern California Super Lawyers and the National Law Journal, among others.

For over 20 years, Mr. Mousavi has focused his practice on technology-intensive mergers, acquisitions, divestitures, joint ventures and collaborations, as well as the licensing of patents, trademarks, trade secrets, content, pharmaceuticals, data, software and other technology. He has led deals across a wide range of industries, including technology, media, internet, telecommunications, life sciences, agtech, fintech, blockchain, consumer, and sports.  Many of these transactions have been cross-border. Mr. Mousavi also advises on the California Consumer Privacy Act (“CCPA”), as well as the transaction review process administered by the Committee on Foreign Investment in the United States (“CFIUS”). 

He has advised acquirers (such as Amazon, Anheuser-Busch InBev, AT&T, Bayer, Philips), sellers (such as Kite Pharmaceuticals, Pharmasset, Skype, Stemcentrx), investors (such as CPPIB, Goldman Sachs, and Silver Lake), and others (such as DirecTV, Dolby, Fiat, Intel, Kodak, Major League Baseball, VeriFone, Verily, Waymo) on a wide range of strategic transactions involving IP and technology. In aggregate, these transactions represent over $400 billion in M&A deal value and over $5 billion in patent licensing royalties.

A distinguished thought-leader in the field, Mr. Mousavi is a Lecturer in Law at Stanford Law School (2015-2019), where he teaches a course on Patent and Technology Licensing. Mr. Mousavi is a member of the Advisory Board for Stanford Law School’s Program in Law, Science & Technology and is the law school’s National Reunion Chair. He recently received the Stanford University Associates Governors’ Award for exemplary and long-standing volunteer service to Stanford University (2019).

Mr. Mousavi is also a member of the board of directors of PAAIA, the Public Affairs Alliance of Iranian Americans.


Rick Chang has litigated intellectual property and commercial disputes for more than 18 years. Because of his breadth of experience and expertise, he also counsels clients on transactional matters. His practice is devoted to litigation of patent, copyright, trademark, trade dress, 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 also has experience litigating complex business disputes, employment, and trade secret misappropriations matter.

Rick has advocated on behalf of clients in a wide range of technologies and industries, including smartphones, computer networking and telecommunications, wireless systems, semiconductors, batteries, expert systems, various 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 consistently obtains significant results on behalf of his clients.


William Hamby is an intellectual property attorney, recently retired from DuPont de Nemours Inc. in Wilmington, Delaware.  He has provided counsel on IP matters to several businesses on behalf of the new and the heritage DuPont companies, including the Transportation & Industrial, 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 included 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 designed and conducted 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 is registered to practice at the U.S. Patent and Trademark Office.


Winston Henderson is Vice President, General Counsel of Clear Scientific Inc. in Cambridge, Mass. Prior to Clear Scientific, where he is responsible for all legal functions, including corporate governance, corporate legal strategy, regulatory, intellectual property and licensing, litigation, and also business development support, Mr. Henderson was General Counsel of Nano Terra Inc., a Boston-based nanotechnology company with life science and non-life science divisions; and before that Mr. Henderson was Corporate Secretary and then Vice President, General Counsel of Surface Logix Inc., a biopharmaceutical and drug development company in Boston.

Prior to joining Surface Logix, Mr. Henderson 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, he 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 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.


Marta Belcher is the General Counsel and Head of Policy at Protocol Labs and the Board Chair of the Filecoin Foundation and the Filecoin Foundation for the Decentralized Web. She also serves as special counsel to the Electronic Frontier Foundation. Marta is a pioneer in cryptocurrency law and has spoken on the topic around the world, including in U.S. Congress, European Parliament, the New York Senate, the OECD, and in Davos during the World Economic Forum. Marta has drafted amicus briefs in the U.S. Supreme Court and U.S. appellate courts for high-profile public interest organizations, including EFF, the Center for Democracy & Technology, Public Knowledge, the Cato Institute, the National Consumers' League, Project Gutenberg, and the Blockchain Association. Marta has been recognized twice by the Financial Times Innovative Lawyer awards and was named to Law360's list of Top Attorneys Under 40.