Cases
Representative Matters: Advising clients, including individuals, startup companies, universities,
multinational corporations, on securing intellectual property protection
related business strategy
Performing non-infringement, invalidity,
freedom to operate analyses
drafting legal opinions.
Advising engineering teams on designing around intellectual property rights of third parties.
Performing due diligence to assess intellectual property portfolios for venture capital investment, mergers
acquisitions, joint ventures,
licensing opportunities.
Preparing
prosecuting patent
trademark applications for individuals, startup companies, multinational corporations,
university technology transfer offices.
Advising on commercial transactions, licensing, e-commerce, website clearance, corporate policies, advertising
product packaging clearance,
regulatory compliance (e.g., FTC, CPSC).
Established guidelines
policies pertaining to press releases, advertising
product packaging claims, website content
ecommerce, product safety, unsolicited inventor relations,
FTC regulations.
Negotiated
drafted a variety of agreements including licenses, joint development agreements, joint venture agreements, asset purchase agreements, cobr
ing agreements, service agreements, distribution
sales representative agreements, manufacturing agreements, supply agreements, settlement agreements, cease
desist letters, non-disclosure/confidentiality agreements.
Conducted website clearance studies
drafted associated terms & conditions
privacy policies.
Conducted open source code clearance studies.
Drafted limited warranties
end user license agreements for client products
software.
Negotiated
drafted music licenses, including both master use
composition synchronization licenses, to include music in client produced video games
mobile software applications.
Negotiated
drafted celebrity endorsement deals
licenses for inclusion of celebrity names
likeness on client products, packaging,
promotional materials.
Negotiated
drafted licenses for famous br
properties for inclusion on client product, packaging,
promotional materials.
Negotiated
drafted licenses for third-party software for integration into client product.
Prepared
prosecuted patent applications in a wide variety of technology areas including computer & communication networks, cloud computing, computer software, cybersecurity, artificial intelligence, machine learning, IoT, robotics, data storage systems, biomedical devices including artificial implantable heart, mesh stents, drug-eluting stents, photo ablation
cardio ablation systems.
Performed patent mining, invention disclosure evaluation,
patentability assessments.
In-house experience: Executive Intellectual Property Counsel for a U.S. subsidiary of a Fortune Global 500 Company. Responsible for intellectual property
commercial legal matters pertaining to operations in North America.
General Counsel reporting to the CEO
President of three commonly owned, privately held consumer products companies with global product distribution
operations in the U.S., China, Hong Kong,
Canada. Responsible for all legal matters pertaining to all three companies worldwide.
Litigation: Gibson Guitar Corp. v. 745 LLC, Civil No. 3:11-0058 (M.D. Tenn) - as General Counsel of defendant oversaw patent litigation
provided strategy approval
Laurence Vinocur v. First Act Inc. et al ., case no. HG13679189 (Superior Court of State of California, County of Alameda) - as General Counsel of defendant oversaw California Prop 65 litigation
provided strategy approval
VoxPath Networks, Inc. v. Broadview Networks, Inc. et al., No. 9:08-cv-127-RAS (Eastern District of Texas) - member of litigation team
Whetstone Electronics, LLC. v. Agfa Corporation, et al ., Civ. No. 6:08-cv-317-LED (Eastern District of Texas) - member of litigation team
