Skip to main content

IP Monetization 2015: Maximize the Value of Your IP Assets


Speaker(s): David L. Cohen, David Morland, Edward Klaris, Eric M. Reifschneider, Erica S. Mintzer, Ingrid Vandenborre, Ira Jay Levy, Jin Kim, Jose A. Esteves, Mikael F. Nabati, N. Darius Sankey, Ph.D., Peter D. Holden, Ph.D., Ron Laurie, Tracey R. Thomas, Victoria F. Maroulis
Recorded on: Apr. 29, 2015
PLI Program #: 59516

Darius Sankey is a Managing Director at Ocean Tomo, overseeing the Innovation Management Business Unit, which is composed of Venture Development, License Compliance and the Ocean Tomo Ratings™ System. Established in 2003, Ocean Tomo, LLC, is an Intellectual Capital Merchant Banc™ firm, providing an industry leading financial products and services related to intellectual property including financial expert testimony, valuation, strategy consulting, proprietary research products, investment services, risk management products and transaction brokerage. Ocean Tomo assists clients – corporations, law firms, governments and institutional investors – in realizing Intellectual Capital Equity® value broadly defined.

Prior to joining Ocean Tomo, Dr. Sankey was Senior Director of Portfolio Management at Intellectual Ventures where he managed the Investment Strategy, acquisitions, divestitures and developing licensing programs for the Invention Investment Fund. He also served as a Managing Director at Zone Ventures, an affiliate of Draper Fisher Jurvetson. During his 10 years there, Dr. Sankey led technology assessment efforts and managed portfolio investments. He also served as a board member for several companies including Microfabrica and Neven Vision. He also has held a position as a visiting professor at several prestigious universities. Dr. Sankey holds B.S. degrees in Physics and Electrical Engineering from MIT and a Ph.D. in Optical Engineering from the Institute of Optics, University of Rochester.


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.


David is a Partner of 3LP, which he joined at its founding in 2008.  Over the past six years, the 3LP team has advised participants in dozens of IP transactions, with a cumulative transaction value in the hundreds of millions of dollars.  Through 3LP Capital, the firm also serves as a principal investor in IP-driven assets.  David’s areas of focus include advising clients on IP monetization strategy, leading technology and IP diligence, and serving as a transaction advisor for buyers and sellers of IP assets.  Both at 3LP and in prior roles, David has worked extensively with companies in high technology, medical technology and industrial industries. 

Prior to joining the founding team of 3LP, David was a Project Leader at The Boston Consulting Group, where he advised large and mid-size companies on a broad range of strategic issues.  David graduated Phi Beta Kappa from Dartmouth College with a BA in Engineering Sciences.  He also earned a BE in Electrical and Computer Engineering from the Thayer School of Engineering at Dartmouth College and an MBA from Harvard Business School.  He lives in Cambridge, Massachusetts.


Eric Reifschneider serves as senior vice president and general manager of Qualcomm Technology Licensing (QTL) where he is responsible for managing the day-to-day operations and providing oversight and strategic direction to QTL’s Business Development, Legal, Finance, Market Analysis, Contract Compliance, and Audit organizations. He also plays a leading role in negotiating Qualcomm’s significant licensing deals and driving continued growth in QTL’s existing and future licensing programs.

Before joining Qualcomm, Reifschneider was a partner in the Palo Alto, California office of an international law firm, where he chaired the global technology and intellectual property group.  Earlier in his career, Reifschneider was the head of the technology transactions group of a major Silicon Valley-based law firm.

Reifschneider holds a Juris Doctor from Harvard Law School, where he graduated magna cum laude and served as Executive Editor of the Harvard Law Review, and bachelor of science degrees in physics and mathematics from M.I.T., where he graduated first in his class and was named the top male scholar-athlete in his senior class. He has served on the board of directors of the M.I.T. Club of Northern California and was the director of the Club’s semiconductor entrepreneurship program.


Erica Mintzer is Senior Counsel for Competition and Technology in the Antitrust Division at the U.S. Department of Justice where she focuses on civil investigations involving high-technology and IP-intensive industries, and advising the Division on issues where intellectual property and antitrust laws and policies intersect.  Ms. Mintzer was one of the lead organizers of the joint DOJ/FTC workshop on patent assertion entity activities. 

Before joining the Antitrust Division in January 2010, Ms. Mintzer was an attorney at Hogan & Hartson (now Hogan Lovells), where she worked with high-technology clients on a wide range of antitrust issues, including mergers and acquisitions, IP licensing, patent settlements, patent pools and standard setting activities.  Before joining Hogan & Hartson, Ms. Mintzer was an attorney at the Federal Trade Commission, where she focused on merger and non-merger investigations in high-technology, Internet and media and entertainment industries. 

Ms. Mintzer graduated magna cum laude and Phi Beta Kappa from Tufts University, before receiving a law degree from The University of Pennsylvania, and a Masters’ of Science from The California Institute of Technology. 


Ira Levy is a senior partner in Goodwin’s Litigation Department and a member of its Intellectual Property practice. He is recognized globally for his cross-disciplinary expertise, successfully first-chairing patent, trademark, copyright, false advertising, IP licensing and related matters for a wide array of industries and in a variety of technical disciplines. Mr. Levy is fluent across a variety of product categories and technical disciplines, and has extensive experience with disputes involving biotechnology, electrochemistry, and pharmaceuticals; electronics, computers and telecommunications; mechanical devices; industrial and consumer products; and the Internet, new media and e-commerce. 

Mr. Levy has handled as first chair numerous bench and jury trials in federal and state courts nationwide. He also has significant experience practicing before the U.S. Court of Appeals for the Federal Circuit, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board, Patent Trial and Appeal Board, and the United States Supreme Court. In addition to his litigation work, Mr. Levy works closely with the firm’s Business Law Practice counseling clients on general corporate matters involving intellectual property and the Internet, as well as transactional due diligence, and other licensing issues.

Mr. Levy presently serves as the lead director for Stomp Out Bullying, the leading national anti-bullying and anti-cyber-bullying organization, and on the advisory board of BUILD, a non-profit focused on bringing entrepreneurialism skills to at-risk high school students. He is past director of Love Our Children, USA, a not-for-profit focused on breaking the cycle of violence against children.  Mr. Levy has been an active member of the New York Intellectual Property Law Association, International Trademark Association, American Intellectual Property Law Association, Pharmaceutical Trademarks Group and the Legal Aid Society. He has also acted as pro bono counsel to the United Way of New York City and cyberangels.org., and is a past member of the Board of Directors of the New York Intellectual Property Law Association.

Mr. Levy is listed in New York Super Lawyers (2006 – 2018), The International Who’s Who of Trademark Lawyers, World Trademark Review 1000, Who’s Who Legal Patents, Who’s Who Legal Life Sciences: Patent Litigation, Euromoney’s Guide to the World’s Leading Experts in Patent Law and The Legal 500 and IAM Patent 1000 – The World’s Leading Patent Professionals (2014 – 2018).

Mr. Levy is a frequent speaker and has written numerous articles on the topics of intellectual property, patent, trademark and copyright laws that have appeared in The New York Law Journal and Metropolitan Corporate Counsel. He serves as the co-chair of the Practicing Law Institutes multi-day Advanced Licensing Program, as well as presenting on license litigation for other PLI programs.  He also authored chapters in Commercial Damages (published by Matthew Bender & Co.) and the Wiley Intellectual Property Law Update (published by Aspen Law & Business). Mr. Levy is also a regular presenter at AIPLA, INTA, NYSBA and NYIPLA events. In addition, he maintains an active roster of speaking engagements on intellectual property audit, portfolio development, strategy and management, and Internet and new media matters.  He also lectures on Trademark Licensing at Cornell Law School.

 


Jin Kim is a Director of Business Development with the Innovation Business Development team at United Technologies. He works across all business units which include Sikorsky, UTC Aerospace Systems, Pratt & Whitney and Building & Industrial Systems. He is leading UTC’s patent and trademark monetization activities, but is also involved in large technology transfer and corporate venture opportunities in areas such as unmanned aerial vehicles, the Internet of Things and sustainable energy. He also advises UTC and its business units on strategic IP matters, IP negotiations and IP valuations.

He is currently a member of the IP Advisory Council for Ballard Power and the Advisory Board of Autoharvest.org.

Prior to joining UTC, he was a Principal at Coller Capital, a private equity firm, and a senior member of the investment team. There he conducted a number of large IP transactions, oversaw investments and managed the financial analysis of IP assets.

Previously, he held a manager position for Special Projects at IPValue Management, an IP monetization firm, responsible for strategic initiatives and large deals.

He started his career as a management consultant with The Boston Consulting Group where he specialized on the high tech and oil and gas sectors.

Jin earned a DPhil in physics from Oxford University and a Diploma in physics from the University of Cologne in Germany.


Ron Laurie has worked in Silicon Valley since before it had that name, initially as a missile systems engineer at Lockheed-Sunnyvale, and then as an intellectual property lawyer and patent strategist. In 2004 he launched Inflexion Point Strategy, the first IP investment bank.  With offices in Silicon Valley, Taiwan and Singapore, Inflexion Point advises technology companies and institutional investors around the world in acquiring, divesting and investing in IP-rich companies, businesses units and technologies, and IP assets in the form of patent portfolios, exclusive field-of-use rights and related know-how.  Inflexion Point’s mission is to extract the unrealized value of strategic IP by increasing corporate valuation in M&A transactions, by building a defensive shield against litigious competitors and by generating top-line revenue via creative exclusive field-of-use licensing programs. 

Ron is also a director at Wi-LAN, Inc., one of the oldest and most successful publicly-traded patent licensing companies. He has been named as one of the World’s Leading IP Strategists by Intellectual Asset Management (IAM) Magazine and is on the advisory boards of the Silicon Valley Chapter of the Licensing Executives Society, and the Certified Patent Valuation Analyst accreditation program.

Prior to launching Inflexion Point, Ron was a founding partner of Skadden Arps' Silicon Valley office, where he chaired the firm's IP Strategy and Transactions Practice Group for six years and led IP teams in some of the largest high-tech and life sciences M&A, spin-out and joint venture deals ever done, worth over $50 billion in the aggregate.  He was also a founding partner of the Silicon Valley offices of Weil, Gotshal and Irell & Manella.

As a lawyer, Ron advised clients in the semiconductor, computer, software, communications, media and financial services industries on IP strategy -- a subject he has taught at both Stanford and Boalt (UC Berkeley) law schools.

Ron was an IP litigator for ten years, handling high-visibility patent, copyright, trade secret and trademark infringement cases in federal and state courts, including representation of Hewlett-Packard in its successful defense of the 'look and feel' copyright infringement suit filed by Apple Computer against HP and Microsoft over the Macintosh graphical user interface.

Ron is a registered patent attorney, and a substantial part of his prior law practice involved strategic planning, competitive analysis and commercial exploitation of patents on leading-edge software-based technologies such as encryption, biometrics and internet telephony. He wrote the Priceline reverse-auction patent, which was the first Internet business method patent to attract national attention.

Ron has been an advisor to the U.S. Patent & Trademark Office, the U.S. Copyright Office, the Office of Technology Assessment of the U.S. Congress, the National Research Council, the National Academy of Science and the World Intellectual Property Organization (WIPO). He is on the Executive Council of the Berkeley Center for Law & Technology and the editorial board of The Journal of Internet Law and co-edited a two-volume treatise titled International Intellectual Property.


Tracey Thomas is presently Chief IP Strategist and License Negotiator at American Express in New York City. He is also CEO of the IP Zone, an American Express business that facilitates commercialization of technology.  In his current role, Mr. Thomas runs the IP Licensing Business and is primarily responsible for commercializing American Express’s global intellectual property (IP) portfolio, including the development and implementation of intellectual property and technology licensing and protection strategies.

Prior to joining American Express, Mr. Thomas practiced in the Chicago offices of McDermott, Will & Emery, Rudnick and Wolfe, and Brinks Hofer Gilson & Lione, where he focused on all aspects of intellectual property law, including IP licensing, litigation and patent preparation and prosecution.   While in private practice, he also practiced sports and entertainment law representing over 20 professional athletes and artists, record labels, music producers and musicians.

Mr. Thomas is admitted to the New York, Illinois and Wisconsin bars, and is registered to practice before the United States Patent and Trademark Office.  Prior to attending law school, Mr. Thomas was an electrical engineer at Wisconsin Electric Power Company in Milwaukee and a software engineer at Bear Automotive in New Berlin, Wisconsin. 

Mr. Thomas received his J.D. from the University of Wisconsin-Madison Law School School (1993), where he was a Managing Editor of the Law Review, and his B.S. in Electrical Engineering and Computer Science from Marquette University (1986).

Mr. Thomas frequently speaks and writes on issues relating to intellectual property best practices, licensing and litigation-avoidance strategies.  He serves in an advisory capacity to the Consumer and Merchant Awareness Foundation, a foundation established by American Express to educate consumers and merchants about fraud, identity theft and other security-related issues in the payments industry leveraging intellectual property contributed by American Express.  Mr. Thomas previously served on the board of the Upper Manhattan Empowerment Zone (UMEZ) and founded and led the American Express e-Mentoring program where American Express employees mentored Manhattan-based elementary school students over the Internet. 

Mr. Thomas is the author of “Driving IP Deals: Internal Decisions and Processes” and is working on a follow-up book focusing on the execution of intellectual property transactions.  He resides in New Jersey with his wife and kids.


Victoria Maroulis is the Managing Partner of the Quinn Emanuel Silicon Valley Office.  Mrs. Maroulis is also Co-Chair of the firm’s National Life Science Practice.  Her practice focuses on intellectual property litigation.  She has litigated and provided counseling for companies on a broad range of patent, copyright, trademark, and trade secrets matters.  She has extensive experience in complex patent litigation in a variety of technologies including software, hardware, semiconductors, medical devices and biotechnology.  She has tried numerous high-stakes patent cases and argued multiple appeals.  She is a member of the bars of New York and California and is admitted to the Eastern District of Texas, Trial Bar of the Northern District of Illinois, Federal Circuit and the U.S. Supreme Court.  Victoria regularly lectures on IP matters, judges regional mock trial and moot court competitions, and has taught trial practice at Stanford Law School and the in house Quinn Emanuel program.  Among other honors, Victoria was selected as one of 10 Intellectual Property Rising Stars under 40 nationwide by Law360, named as one of 20 Most Influential Women in IP by Law360, and featured in The American Lawyer’s “45 under 45” list.


As Senior Vice President at Condé Nast for more than eight years, Ed conducted business in 28 countries, forging deals with foreign companies to start ventures such as events, schools, product licensing, and digital platforms. Domestically, Ed led business affairs for the company and built the first corporate development department, working on carve outs, potential JVs, and the sale of magazine brands. His corporate counterparts included News Ltd, Naspers, Penske Media, and JCPenney. As a member of the Senior Management Team, Ed worked extensively on digital transformation, global advertising, and the launch of Condé Nast Entertainment.

In addition to his role at DeSilva & Phillips, Ed teaches Media Law as an Adjunct Professor of Law at Columbia Law School and serves as Chairman of the Board of Pilobolus, a prominent arts organization.

Ed was General Counsel of The New Yorker for six years and media counsel at ABC for 3 years. He also speaks around the country on topics involving digital and traditional media, advertising and marketing.

 


Ms. Vandenborre’s practice focuses on EU and international merger control and competition law enforcement.

Ms. Vandenborre repeatedly has been selected for inclusion in Chambers Global: The World’s Leading Lawyers for Business, and in the 2014 edition, she is described as “a technically excellent lawyer who holds her own at oral hearings, and has excellent contacts.” She also was named a leading practitioner in her field by Chambers Europe 2013, Who’s Who Legal: Competition Lawyers & Economists 2013, The International Who’s Who of Competition Lawyers & Economists 2014 and Who’s Who Legal: Competition 2015. She was chosen as a “Rising Legal Star” for antitrust by Law360, and recognized by Global Competition Review on various occasions, including being profiled as a leading antitrust attorney in its 2013 “Women in Antitrust” issue, selected in its 2012 “40 Under 40” list and shortlisted in the “Lawyer of the Year — 40 and Under” at the GCR Awards 2013.


Peter, President of ipCreate, has more than 25 years in the investment and monetization of IP, from tech and patent licensing, to patent sales, IP venturing and IP Fund formation. He has a worldwide reputation for creating IP value and delivering top-quartile returns without litigation.

Prior to joining ipCreate, Peter was the Senior Vice President of Investments and Acquisitions at IPVALUE Management, Inc., a Goldman Sachs / General Atlantic backed IP monetization company which has generated over $1.3 Billion of IP revenues. In 2007, he was the founder and Managing Director of the IP Investment Group at Coller Capital Inc., a global Private Equity firm with over $18 Billion under management. In 1999, he was the founder and Managing Director of Invisible Hand LLC, a $48 Million IP venturing fund. In 1995, he was the SVP & Officer with University Patents, Inc., an AMEX listed outsourced university technology and patent licensing organization representing 30+ universities.

In 1990, Peter was the Global Technology Acquisitions & Partnerships Manager with Matsushita Electric (Panasonic) in Osaka, Japan. In 2014, he was chosen by Intellectual Asset Management Journal as the global top 40 most influential people in IP. In 2014, Peter was honored and awarded by The Korean Government for contributions to the monetization of Korean R&D globally.

Peter was also formerly a Research Fellow at Tokyo University and Senior Fellow at Wharton Business 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.”


Mikael Nabati is a Vice President within the Structured Finance group at Deutsche Bank.   He is part of the Credit Structuring team, a team that focuses on the origination, structuring, execution and distribution of a wide spectrum of customized credit products across all industries and asset classes, with a focus on illiquid credit, hard asset financing, event-driven and special situations.  Clients include hedge funds, private equity sponsors, insurance companies, banks, corporations and ultra high-net-worth individuals.  Prior to joining Deutsche Bank, Mikael worked at Latham & Watkins in New York from 2006-2010, where he represented investment banks, hedge funds, financial institutions, borrowers and sponsors in leveraged and project finance transactions, including acquisition financings, leveraged buyouts, senior secured credit financings, mezzanine financings, debtor-in-possession financings, exit facility financings and second lien loans.