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| Sabety+associates
has experience in providing skills and solutions to a large range
of tasks and problems. To view the descriptions, please click on a
link below, or simply scroll downward. Patent Strategy  For an audio equipment manufacturer, advising on the claim drafting in a patent application for a digital signal processing technique, in order to provide the greatest possible protection of the invention. For an image processing technology company, formulated criteria to determine the appropriate international jurisdictions to seek patent protection in order to achieve the most cost-effective strategy. This involved careful analysis of the technology, its vulnerabilities, and the expected modes of infringement. For a growing internet messaging software company, formulated patent application strategy and directed patent applicatioin process for the underlying inventions embedded in the software.
IP Commercialization Strategies For a major audio-equipment manufacturer, analyzed a seminal invention regarding color image processing. Identified three rapidly growing product applications in the consumer electronics space, directed the development of prototype implementations for each, approached several vendors to present the technology, and conducted negotiations with one of them in order to grant rights to the technology. For an image processing software development company, development of derivative inventions that improved on their seminal patent application, including inferior patentable approximations of the invention, in order to develop an intellectual property position for a software product.
Venture Financing Representation of private equity investors: Drafted, negotiated and conducted due diligence for several private equity investments in the software technology space. Responsibilities included advising the investor on aspects of the target company's dealings that raised strategic issues, and, in several cases, assisting the investor, as a member of the board, to renegotiate the deals on behalf of the company. Representation of an emerging software technology company in its first and second round of private financing: Responsibilities included preparation of corporate documentation, structuring disclosures in order to mitigate the risks of trade secret impairment through due diligence.
Technology Acquisitions and Transfer Representation of a global semiconductor manufacturer acquiring a smaller network communication chip developer: Drafted and negotiated acquisition agreement which included specific sections regarding appropriate and technically accurate milestones for target management and other representations regarding the technology and intellectual property, "development outs," examination of patent portfolio, and examination of other intellectual property documentation. Representation of a rapidly growing communications software company: Directed the acquisition of the intellectual assets of one of its foreign contractors, where the contractor principals became employees of the company. This involved selecting appropriate local counsel in a Latin American country, coordinating due diligence in the foreign country, and structuring the acquisition in order to minimize risks with regard to legal issues in the foreign jurisdiction.
Patent and Copyright Enforcement and Litigation Polaroid v. Kodak: eight-month trial to determine the quantum of patent infringement damages. Damages awarded were just under one billion dollars. Gardner v. Ford: one month patent infringement trial concerning electronic engine controls. NRDC v. Varian: two week patent infringement trial concerning Nuclear Magnetic Resonance (“NMR”) instruments. Other Technologies: Computer software patents, laser-based optical flow cytometers, monoclonal antibodies, electro-chromic mirrors, heart pacemakers, contact lenses, satellite spin stabilization and nuclear power plant design.
Trade Secret Counseling Litigation For early stage elastomer materials manufacturer, constructed non-disclosure policies to protect trade secret that was not subject to patent protection.
Technology Licensing Strategy Representation of a Early Stage Company in Re-negotiating Distribution of its License: Analyzed existing license entered into by predecessor CEO, determined points of negotiating leverage, instituted pass-through royalty structure to better extract revenue from benefit conferred by the license. Representation of a private equity investor in a first-stage technology company: Analyzed status of ICANN contract with the U.S. government and its impact on a potential license between a portfolio company and a government contractor with control over the DNS (Domain Name System). Drafted and negotiated a domain name technology license to a company with governance level control of internet domain names. Analyzed technology development process required in order to comply with requirements of a license-in of technology, to be part of a license-out to customers of major European satellite television software technology company. Planned, drafted and negotiated a licensing program for the product line. This activity involved close interaction with the company's engineering and business management in order to provide customers with the capability to customize certain parts of the code without losing control of the intellectual property.
Joint Ventures Representation of a major European satellite television technology company: Drafted and negotiated joint venture agreement with a licensee of their interactive television software for the development of specific product attributes for licensee's consumer electronic product line.
Outsourcing / Insourcing Representation of a major European satellite television technology company: Drafted and negotiated development outsourcing and license transaction involving internet browsing software technology from a start-up computer software manufacturer, for the field of interactive television.
Copyright Licensing Analyzed requirements and determined licensing terms necessary to allocate risks associated with providing proper protection of digitally distributed content. Negotiated a series of copyright licenses between a major record label granting rights to distribute their sound recordings over the internet, where the consideration included equity participation in the licensee. These licenses required careful consideration of the copy control technologies, provisions dealing with possible failures of the technology and appropriate risk allocation and mitigation mechanisms. Analyzed technology risks and appropriate licensing terms to mitigate risks on behalf a major music publishing consortium. Drafted and negotiated a series of music publishing agreements granting rights in fixation and distribution of works through the internet, including the license portion of a settlement agreement in connection with a landmark litigation regarding un-authorized music distribution on the internet. Representation of a world-wide cable music television network. Drafted and negotiated several internet audio-visual work distribution cross licenses with a well-known live music venue that also involved equity participation.
Digital Rights Management Analyzed impact of proposed licensing terms of streaming and digital rights management technology company on strategic control of secure music distribution service on behalf of a major international media company. Negotiated the terms under which a new consortium it was participating in could outsource its digital rights management process to a major internet content streaming technology company. Analyzed technical impact of Secure Digital Music Initiative on behalf of a music publishing trade organization, representation at the Secure Digital Music Initiative in order to monitor the development of a proposed copyright protection technology standard.
Intellectual Property Counseling On behalf of a rapidly growing medical information software company, the planning of an intellectual property strategy involving the strategic planning of the patent application process, dealing with HIPAA-related requirements and their impact on licensing terms and liability issues, and the negotiation of several customer contracts.
Intellectual Property Valuation For a major audio equipment manufacturer, calculated market demand projections in several technology application areas. Calculated the present value of competitive advantage for licensees of the technology in order to derive a range of reasonable acquisition prices or royalties for licensees in these application areas, in the context of licensing negotiation. For a major satellite television technology provider, analyzed patent claims in a technology portfolio in order to formulate a cash value for a non-royalty bearing license to the portfolio. For an industry trade group that sells copies of its standard contract forms, analyzed the historical copyright licenser revenues by product line in order to calculate the cost a software-based delivery mode was incurring in the form of cannibalizing sales of the older product line. Identified a promising product combination package that would boost revenues. Analysis was further directed toward formulating a product packaging and licensing fee structure more compatible with the existing distribution mode. This work was done as part of a project with Flywheel Group (www.flywheelgroup.net).
Legislative and Regulatory Affairs On behalf of a music publishing trade organization, prepared test and analysis of streaming technology in order to demonstrate how fixed copies of sound recordings are created during streaming. Drafted comments submitted to the Copyright Office regarding technical ramifications of a proposed amendment to the Copyright Act intended to address digital distribution of music. Analyzed impact of Federal Communications Commission proposed regulation of copyright protection technology for digital television on interests of a music publishing trade organization. This effort involved participation in the drafting of comments in response to the FCC Notice of Proposed Rulemaking.
Export Control Act Analyzed a color enhancement algorithm and determined that it actually was not subject to the reqirements of the export control act. The process required recognizing what kinds of "image processing" were intended to be subject to the law, and determining that purely esthetic color enhancement appeared to be non-sensitive. This saved the client considerable time and effort.
Trademark Matters Set up international trademark filing process for New York based fashion label.
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