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Intellectual
Property Strategy
Intellectual
Property Strategy for Businesses
For a major media company,
formulated and executed a strategy to avoid possible patent suit by one of
two rival digital media distribution vendors where both vendors were being
used by different divisions internationally.
For
an emerging nanotechnology company,
formulated and executed a strategy to establish certain rights over technologies
developed under Government grants, subawards and
awards to company’s subcontractors.
This involved negotiating multi-way agreements between a prime
government contractor, the company and an academic institution.
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
application process for the underlying inventions embedded in the software.
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.
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.
Technology Transactions
Software
and Technology Development
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.
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.
Software
and Technology Licensing
Representation of an early stage
company in renegotiating 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.
Patent
Licensing
Representation of a major media
company in negotiating a special license with a company holding a
patent portfolio claiming a specific audio CODEC.
Representation
of a major media company in
negotiating a patent portfolio subject to a standard setting.
Standards
Licensing
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.
Sale
and Acquisition of Technology Assets or Companies
Representation of a major media
company acquiring the intellectual assets of a music distribution
website, including rights to make copies of and distribute encoded music.
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.
Hosting
and Support Agreements
For a major media company, negotiated a hosting and
support agreement for a marketing database product long relied upon but
subject to a sunset by the new acquirer of the technology.
Joint
Venture Agreements
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.
Government
Funded Research Agreements
For a nanotechnology device company,
negotiated several government funding agreements with the prime contractor
and for the subawardee, including agreements on the disposition of
developed intellectual property.
Non
Disclosure Agreements
Negotiated for a nanotechnology
company a “materials transfer agreement” permitting
material samples to be provided with limiting covenants regarding
information derived from them while protecting the customer's interest in
its device.
Negotiated
multi-party non-disclosure agreements between prime contractor,
subcontractor and several academic institutions.
Organization
and Funding of Start-Ups
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 and
structuring disclosures in order to mitigate the risks of trade secret
impairment through due diligence.
Digital Media Transactions
On-Line
Content Distribution Agreements
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 unauthorized 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.
Intellectual
Property Litigation
Patent
Litigation
Representation of an owner of a patent in the content downloading field.
Representation
of a defendant in a patent litigation in the on-line music distribution field.
Software
License Litigation
Enforced
an exclusive software license in the data
encryption and computer security field, resulting in a successful
renegotiation of sunset terms to non-exclusivity and reversion of the
licensed intellectual property rights on a date certain.
Trademark
Oppositions
Advising U.S. fashion label on strategy regarding
opposition by European user of the mark in Europe.
Opinions
Regarding Patent Infringement or Validity
Advising a major media company
regarding threats over use of mobile phone related interactivity patent.
Advising
a computer graphics software company
regarding a threat over use of a data structure subject to patent claims.
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Patent, Trademark and Copyright
Prosecution
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Patent Prosecution
Procuring a patent in the digital
data security as part of an international strategy.
Procuring
a patent regarding detection of small illicit nuclear devices.
Procuring
patents in the nanotechnology
field.
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.
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Trademark Prosecution
Registration of trademarks in the U.S. and overseas.
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.
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