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Advanced Patent Licensing 2012: Current Developments and Best Practices


Speaker(s): Anthony K. Greene, Christopher Pickett, Joseph Yang, Mark S. Holmes, Meredith M. McKenzie, Michael Farn, Nader A. Mousavi, Sara Duval Harrington, Winston E. Henderson
Recorded on: Oct. 22, 2012
PLI Program #: 37466

Christopher ('Chris') Pickett is a seasoned senior executive and business strategist in both private and public company environments. During his more than 20 years of experience, Pickett has helped to drive adoption and create financial success for companies with technologies spanning semiconductor packaging, camera modules, LCD displays, general lighting, cryptography, and memory systems. Most recently, Pickett was the senior vice president of corporate licensing for Rambus - joining Rambus as part of the acquisition of Global Lighting Technologies where he was the president of the licensing division. At Rambus, he was responsible for global technology and patent licensing and helped grow Rambus' aggregate revenue more than 50% during his two and a half year tenure. At Global Lighting Technologies, Pickett developed the licensing, marketing and revenue plan resulting in acquisition by Rambus and market adoption of its technology by General Electric, Cooper Industries and others, as well as a broad array of contract manufacturers that act as a vibrant partner ecosystem. Before Global Lighting Technologies, Pickett was the executive vice president of licensing at Tessera Technologies, bringing the company from start up phase to a successful mid-cap public company. During Pickett's 13 year tenure, Tessera achieved compound revenue and operating profit growth exceeding 50% annually which led to Tessera being cited in 2006 by Business Week as the Second Hottest Growth Company in America and by Electronic Business as the 4th Best Small Electronics Company in the US also in 2006. He is the inventor on nine issued US patents.

Pickett has a JD from the University of San Francisco School of Law and a BSEE from the California Polytechnic State University, San Luis Obispo.


Mike Farn is a partner in the Intellectual Property Group at Fenwick & West LLP, a law firm specializing in high technology matters. Fenwick & West is headquartered in Mountain View, California, with offices in San Francisco, California. Mr. Farn's practice emphasizes the development of intellectual property assets for high technology corporations, with particular focus on building, acquiring and managing patent portfolios and licensing technology.

Mr. Farn has experience counseling clients in a variety of high technology industries, including optical devices, medical devices, signal and image processing, telecommunications, EDA and semiconductors. Among the clients he has represented are:

  • Cisco Systems
  • Google
  • Ricoh
  • Silicon Image
  • Synopsys

Before embarking on his legal career, Mr. Farn was a member of the technical staff at M.I.T./Lincoln Laboratory from 1990 to 1994. There, his primary responsibilities were to invent new optical technologies and then transfer these technologies to private corporations for commercialization. He entered the legal field in part because the attorneys supporting Mr. Farn's activities as a scientist did not adequately understand the commercial world. There was and continues to be a significant need for legal specialists who can understand and solve legal problems from the client's point of view not from a lawyer's point of view, who can explain legal concepts in ordinary English, and who can relate these concepts to the marketplace and to the client's commercial risk and reward.

Mr. Farn attended law school at Stanford University, graduating with distinction in 1997. He also received his graduate education at Stanford University as an NSF graduate fellow, receiving his Ph.D. in electrical engineering in 1990. Mr. Farn received his undergraduate degrees from Penn State, where he double majored in electrical engineering and mechanical engineering. He is a member of both the California Bar and the U.S. Patent Bar.


Anthony Greene is a Senior Vice President at Herbert L. Jamison & Co., L.L.C., which has offices in New York, New Jersey, Pennsylvania and Washington DC. Anthony is a member of the Professional Liability Underwriting Society and American Bar Association National Legal Malpractice Data Center.

He is Immediate Past President of the Insurance Brokers Association of New York ( www.ibany.org ) and serves on the Board of the Minority Corporate Counsel Association ( www.mcca.com )

Anthony maintains the following professional designations: "Certified Risk Manager" and "Certified Insurance Counselor". He is a graduate of New York Military Academy, holds a Bachelors of Business Administration Degree from the St. Johns University School of Risk Management & Actuarial Science.

He previously served as the "First" President of the American Intellectual Property Education Law Foundation and on the Boards of: the National Insurance Industry Association , Association of Professionals in Risk Related Disciplines and the South Orange \ Maplewood Board of Education in New Jersey

Since beginning his career at Johnson & Higgins in 1977 has developed Risk Management & Insurance programs to address the exposures of; Directors and Officers of Corporations & Non-Profit Organizations, 1500 Accounting Firms and 2500 Law Firms including over 600 Intellectual Property Firms.

He has developed continuing education programs and risk management seminars for the Hinshaw Legal Malpractice & Risk Management Conference, Practising Law Institute and numerous associations


Overview

Current

Past

Education

  • Cornell Law School
  • University of California, San Diego

Experience

Sr. Director Legal-IP

LinkedIn

Public Company; 1001-5000 employees; LNKD; Internet industry

April 2012 – Present (5 months) Mountain View CA

Adjunct Professor- Intellectual Property Licensing

UC Hastings College of the Law

Educational Institution; 201-500 employees; Higher Education industry

2011 – Present (1 year) San Francisco Bay Area 

Partner-Technology Transactions Group

Wilson Sonsini Goodrich & Rosati

Privately Held; 1001-5000 employees; Law Practice industry

1992 – April 2012 (20 years)

Sara Harrington was a partner in the technology transactions practice at Wilson Sonsini Goodrich & Rosati. She counseled various companies involved in the development, distribution, licensing, disposition, and acquisition of technology and intellectual property rights for various start-ups and established enterprises.

Sara represented clients in a wide range of industries, including those involved in search technology, business application software (both open source and private source), e-commerce (business-to-business and business-to-consumer), Web 2.0, entertainment/media industries, database services, consulting, networking devices, semiconductor, telecom, medical device, consumer goods, and audio services. Sara has constructed and negotiated a variety of international and domestic agreements, covering such areas as strategic alliances, marketing, development, licensing, advertising, distribution, services, outsourcing, open source, and manufacturing. She also advised companies on intellectual property matters in connection with investments, financings, asset purchases and sales, corporate structuring (spin-outs), and mergers and acquisitions.

Before joining the technology transactions practice, Sara practiced in the litigation department of Wilson Sonsini Goodrich & Rosati, where she litigated a variety of intellectual property, antitrust, and securities claims. Prior to joining the firm, Sara was an attorney at Fried, Frank, Harris, Shriver & Jacobson in New York City, where she litigated corporate change-of-control and commercial litigation matters for various multinational corporate clients.


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

 


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.


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.