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Patent Licensing Today 2015: Making Money Without Getting Sued


Speaker(s): Duane Valz, Jake Handy, Joseph Yang, Kathy Ku, Marcia Chang, Mark S. Holmes, Meredith M. McKenzie, Murray Vince, Nader A. Mousavi, Robert P. Taylor, Winston E. Henderson
Recorded on: Oct. 23, 2015
PLI Program #: 59488

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. 


Katharine Ku is Executive Director of the Office of Technology Licensing (OTL) at Stanford University.  OTL is responsible for the licensing of various state-of-the-art university technologies and industry sponsored research agreements, material transfer agreements and collaborations.  In FY2015, Stanford received $95M in gross royalty revenue from licensed technologies.

From 1994-98, in addition to her OTL responsibilities, Ku was responsible for Stanford’s pre-award Sponsored Projects Office. Ku was Vice President, Business Development at Protein Design Labs, Inc. in Mountain View, California from 1990-1991.  Prior to PDL, Ku spent 12 years at Stanford in various positions, worked at Monsanto and Sigma Chemical as a research scientist, administered a dialysis clinical trial at University of California, and taught chemistry and basic engineering courses.

Ku has been active in the Licensing Executive Society (LES), serving as Vice President, Western Region and Trustee of LES, IP100 Advisory Board and various committee chairs.  She also has served as President of the Association of University Technology Managers (AUTM) from 1988-90. She received the AUTM 2001 Bayh-Dole Award for her efforts in university licensing. In 1999, Stanford OTL received the Licensing Executives Society Achievement Award for licensing, the Society’s most prestigious award.  Ku was a committee member of the NAS study entitled Management of University Intellectual Property: Lessons from a Generation of Experience, Research, and Dialogue.  She also served on the Board of Governors for the Certified Licensing Professionals, Inc. (CLP) and the BIO Board. She is currently a member of the NIH Advisory Committee to the Deputy Director of Intramural Research.  She recently joined the Biomedical Engineering Society’s Industry Advisory Board.

Ku has a B.S. Chemical Engineering (Cornell University), an M.S. in Chemical Engineering (Washington University in St. Louis) and is a registered patent agent.


Marcia Chang is a Managing Director for Intellectual Property Sales & Licensing (IPSL) within the Office of the General Counsel for Hewlett Packard Company.  She and her IPSL team are responsible for managing strategic IP sales, licensing and technology transfers in a variety of technology areas.

Marcia joined HP in 2010 as a Patent Development Counsel for HP Labs and served in this role until she was named to lead the HP Labs IP team in 2013.  As Director of Patent Development for HP Labs, Marcia led a team that managed the prosecution and harvesting of HP Labs IP. 

Before joining HP, Marcia was an associate at Cooley LLP.  She graduated from the Santa Clara University School of Law, received a PhD in Electrical Engineering from Cornell University and undergraduate degrees in Computer Engineering and Economics from The University of Kansas.  Marcia was named as one of the Top 50 Women Leaders in Tech Law by The Recorder for 2014.


Murray joined Intellectual Ventures in 2013 as a Senior Director, Strategic Business Development. In this role he supports innovation through development of intellectual property solutions for large enterprise customers with complex technology challenges. Prior to joining Intellectual Ventures, Murray was in global team leadership positions at Microsoft Corporation, as general manager of OEM engineering & strategy where he managed a global engineering support team for Microsoft technologies and as the GM Business Development for MSN internet services. Before Microsoft, Murray held a variety of leadership positions including General Counsel, VP of Legal Services and Business Development Manager at industry-leading technology firms including Tropian, HearMe, Silicon Graphics, and Apple Computer as well as practicing intellectual property law at Borden & Elliott, focusing on computer law and technology issues.

For over eight years, Murray taught “Technology Contracting” at the University of San Francisco School of Law covering intellectual property, licenses, agreements, and purchasing and licensing misuse. Murray is Honorary Chair Professor at the National Taipei University of Technology.

Murray has an undergraduate degree in Government and Legal Studies from Bowdoin College, Brunswick, Maine and received his Bachelor of Laws (LLB) from Osgoode Hall Law School (York University) in Toronto, Ontario. Murray is a member of the California State Bar. He also studied French, economics and political theory at Université de Grenoble in Grenoble, France. Murray is also a Certified Patent Valuation Analyst.


Duane Valz has counseled a wide variety of privately held and public companies on law, technology and business matters. Immediately prior to Zymergen, Duane was a member of the Patent Team at Google, where he led strategic IP initiatives bearing on mobile, cloud, web and open source technologies. He was also previously Associate General Counsel in charge of patent development at Yahoo! Duane began his career at Howard Rice Nemerovski Canady Falk & Rabkin (now combined with Arnold & Porter LLP). He holds BA and JD degrees from the University of California, Berkeley.


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

 


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.