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IP Monetization 2014: Maximize the Value of Your IP Assets


Speaker(s): Abha Divine, David Bilsker, Deirdre Leane, Henry C. Su, Ira Jay Levy, Jose A. Esteves, Kimberly Chotkowski, Lew Zaretzki, Marc A. Ehrlich, Michael D. Friedman, Peter D. Holden, Ph.D., Prof. Daniel B. Ravicher, Ron Laurie, Selvyn Seidel
Recorded on: Apr. 10, 2014
PLI Program #: 51654

Abha Divine’s career demonstrates proven results in the successful planning and launch of new businesses and technology-driven offerings. In 2008, Ms. Divine co-founded Techquity Capital Management, an IP investment firm devoted to unlocking value from innovation. The firm partners with IP owners to deploy untapped IP assets, broaden market reach, and provide liquidity for their IP.

Prior to Techquity, Ms. Divine launched AT&T Knowledge Ventures (KV), overseeing the worldwide IP portfolio for the AT&T family of companies. As President and CEO, she led the organization to deliver measurable EPS impact annually and established KV as one of the leading producers of IP assets and revenue in its industry. She has been recognized as one of IAM magazine’s 250 “World’s Leading IP Strategists” since the inception of their rankings.

Previously, as SBC’s VP of Corporate Strategy, Ms. Divine was responsible for the creation of SBC’s data networking, managed services, and hosting businesses, as well as the restructuring of its consumer broadband strategy to achieve SBC’s broadband leadership position.

Ms. Divine serves on the Board of the Lyle School of Engineering at Southern Methodist University and has held a variety of corporate and non-profit board positions over the years.

Ms. Divine earned an MBA from the University of Texas and a Master of Science in Electrical Engineering from MIT, where she completed her research at the Media Laboratory. Ms. Divine holds Bachelors degrees in Electrical Engineering and Applied Mathematics from Southern Methodist University.


Daniel B. Ravicher is a Lecturer in Law at Benjamin N. Cardozo School of Law and Executive Director of the Public Patent Foundation (“PUBPAT”). Labeled a modern day 'Robin Hood' by Science and named one of "The 50 Most Influential People in IP" by Managing Intellectual Property, Professor Ravicher is a registered patent attorney who writes and speaks frequently on patent law and policy, including testifying as an invited witness before Congress on the topic of patent reform. In 2013, the Supreme Court ruled in favor of Professor Ravicher’s landmark case against Myriad Genetics invalidating patents on two genes associated with hereditary breast and ovarian cancer.           

Professor Ravicher received his law degree from the University of Virginia School of Law, where he was the Franklin O'Blechman Scholar of his class, a Mortimer Caplin Public Service Award recipient and an Editor of the Virginia Journal of Law and Technology, and his bachelors degree in materials science magna cum laude with University Honors from the University of South Florida. He is admitted to the United States Supreme Court, the Courts of Appeals for the Federal, 2nd and 11th Circuits, the District Courts for the Southern and Eastern Districts of New York and the Southern District of Florida, the States of New York and Florida, and the United States Patent and Trademark Office.


Deirdre Leane brings over thirteen years of technical and commercial expertise to IPNav. She is experienced in comprehensive project analysis from concept through delivery, and is skilled in licensing technologies combined with forming and supporting start-up companies. Deirdre is comfortable with all technology; she has a strong interest in the Semiconductor and Medical Device technology fields.


Selvyn Seidel founded and chairs Fulbrook Capital Management LLC, an independent third party funding advisor on complex national and international commercial claims.  He brings to this position years of experience in litigation, teaching, and writing, referred to below.

Founder and Chair of Fulbrook Capital Management, LLC.   Fulbrook has created and occupies a special space in the funding industry, representing claimants who need assistance in:

  • evaluating their claims,
  • preparing and improving the claim for investment, and then, if agreed,, continuing with this role after funding and through resolution.
  • sourcing capital – where Fulbrook identifies and attracts potential investors for the claimant and its claim, from (a) the institutional dedicated third party funders, as well as (b) from individual investors interested in committing only a portion of their capital into litigation finance (a hedge fund, a private equity entity, a family office, and others),

Further, and in a way new to the industry, Fulbrook can and does delink its services and products, so that its role is hand-tailored to the particular needs of the  claimant.  There is  no requirement that a claimant retain the integrated service as a whole; it can choose individual parts.

If needed by the claimant and acceptable within a jurisdiction’s rules, Fulbrook will assist in buying, selling, or otherwise trading the claim or the claimant itself. 

In suitable situations, Fulbrook acts for an investor.

To achieve its goals, Fulbrook has  assembled and coordinates internal and external teams.  It has, first, a core team.  Next, and to supplement and reinforce this core, it has an extended and extensive team of quality experts.  Fulbrook draws on the experts as needed for a specific case.  Third, Fulbrook also has a network of investors that it regularly looks to, marrying the investor’s, the claimant’s, and Fulbrook’s interests.  As a fourth leg, Fulbrook has reliable and trusted relationships with selected sources of good claims -- such as lawyers and law firms -- which have (along with strong market demand and Fulbrook’s recognized and respected place in the industry) created for Fulbrook an active, continuing,  long-term inflow of attractive claims.

Fulbrook emphasizes certain areas, including:  patents and other IP; international litigation and arbitration; insolvency, and other serious financial distress situations; plus, if the claim is exceptional, added areas such as antitrust, securities fraud, insurance, and basic breach of contract. 

Beyond this, Fulbrook is equipped and committed to acting for defendants targeted with claims lacking merit. 

As to standing in the industry, Fulbrook has a recognized name.  In a recent Report by two think tanks that discussed Funders, Fulbrook was identified along with four other entities, as among the “prominent third-party funders” in the industry world wide (and, in the Report’s words, “worth knowing”) despite being a more recent entrant in the industry).  Also recently, in an international survey by a business-to-business journal, the ACQ,  of its over 50,000 subscribers, Fulbrook was awarded the 2013 ACQ Global Award as the best Third Party Litigation Advisory in the industry. 

Other Experience in Third Party Finance   Mr. Seidel is experienced in the industry.  Before Fulbrook, in 2007, he founded and chaired Burford Advisors, an expert advisor in third party finance, and then, in October of 2009, he co-founded and then chaired Burford Group Ltd., the investment manager for Burford Capital, LLC. Burford Capital went public on the UK Aim market of the London Exchange.  It is now the largest institutional litigation funder in the world. 

Standing in Industry   Mr. Seidel is recognized in the industry as a pioneering voice.  He was described in the Report referred to above as “probably the frontrunner in the industry.”

Litigation Experience   Before entering the funding industry, Mr. Seidel practiced as a litigation attorney.  He has over 40 years of experience in complex litigations and arbitrations, national and international  He represented business entities in diverse complex projects.  Until December 31, 2006 and for almost 25 years, he was a senior partner at Latham & Watkins, a premier international law firm.  At Latham Mr. Seidel was a co-founder of Latham’s New York office in 1985, now the firm’s largest office;  and was, at different times, the Chairman of its International Practice, the founder and Chairman of its International Litigation and Arbitration practice, and the Chairman of its New York Litigation Department.

Academics  Mr. Seidel was for ten years an Adjunct Professor of Law at the New York University School of Law, teaching courses related to litigation and arbitration.  He currently Chairs the Advisory Board of the Center for International Commercial and Investment Arbitration Law of Columbia University Law School.  He is an Alumnus Lecturer at Linacre College, Oxford University.  He is Chairs the Advisory Board of Oxford Law Alumni of America.  He lectures on third party finance and participates in conferences and presentations at various law schools in the U.S. and UK  (including Harvard Law School, Columbia Law School,  Oxford Law, and the University of Iowa Law School), and at various Institutes (such as the RAND Institute of Civil Justice, and the regular LEXIS NEXIS programs on litigation costing and funding).  He has authored many articles and papers in the industry. (See Fulbrook Management.com for references to lectures, presentations,  articles and papers)

Media   He is regularly referred to and cited in the media.  (See Fulbrook Management.com)

Education   Mr. Seidel is a graduate of the University of Chicago (1964, B.A., Economics), the University of California Berkeley School of Law (1967, J.D., California Law Review) and the University of Oxford (1968, Dip. Law, Linacre College).


Henry Su tries antitrust cases brought by the Federal Trade Commission’s Bureau of Competition. Prior to this position with the agency, he served as an Attorney Advisor to Commissioner J. Thomas Rosch. In that role, Henry provided advice and counsel to Commissioner Rosch on a variety of antitrust and competition matters, issues, and projects coming before the FTC. Before joining the FTC, he was a partner in the law firm of Howrey LLP in East Palo Alto, California. At Howrey, his practice involved trial and appellate work, alternative dispute resolution and strategic counseling, and he specialized in claims and disputes that involve intellectual property, antitrust and trade regulation issues. Henry was recognized by Euromoney Institutional Investor PLC as a "Litigation Star" among California attorneys in the 2011 edition of Benchmark Litigation: The Definitive Guide to America’s Leading Litigation Firms and Attorneys.

Henry is a member of the bars of the State of California, the District of Columbia and the Commonwealth of Virginia, as well as a registered patent attorney with the United States Patent and Trademark Office. He is a graduate of the University of Virginia School of Law, where he was a recipient of the John M. Olin Prize in Law and Economics, and Yale College, where he earned a B.S. degree in Biology, cum laude.

Henry is a Fellow of the American Bar Foundation and the Litigation Counsel of America. He has held leadership roles within a number of bar associations and community service organizations, including the American Bar Association, the National Asian Pacific American Bar Association, and the Federal Circuit Bar Association.

Henry strongly supports public service and pro bono publico work. While in private practice, he served as an early neutral evaluator and mediator for the Northern District of California’s ADR program and as a member of the Criminal Justice Act appellate panel for the United States District Court for the Northern District of California and the United States Court of Appeals for the Fourth Circuit. He also served as a member of the Pro Bono Panel for the United States District Court for the Eastern District of California. Pro bono cases he has handled include ones involving intellectual property, disability rights, veterans and criminal law issues. His pro bono efforts in 2009 led to his selection as a recipient of the California Lawyer’s Attorney of the Year (CLAY) Award for 2010.


Ira Levy is a senior partner in Goodwin Procter's IP Litigation Group, whose practice focuses on the litigation of patent, trademark, copyright, false advertising, trade secrets, licensing and related matters for a wide array of industries and in a variety of technical disciplines. Mr. Levy has over 25 years’ experience with disputes involving biotechnology, pharmaceuticals and chemistry; electronics, computers and telecommunications; mechanical devices; industrial and consumer products; and the Internet, new media and e-commerce.

Mr. Levy has first chaired numerous bench and jury trials in federal courts nationwide. He also has significant experience practicing before the United States Supreme Court, where he worked on the winning side of the B&B Hardware v. Hargis trademark matter, various U.S. Courts of Appeals, including the Federal Circuit and the Second Circuit, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board and Trademark Trial and Appeal Board, the World Intellectual Property Organization's arbitration board and the National Advertising Division of the Council of Better Business Bureau. 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.  Ira is a frequent lecturer on intellectual property matters, and since 2004 has been the co-chair of PLI’s Advanced Licensing program.  He is also a lecturer instructor on intellectual property strategy and licensing at the Cornell University-Technion Masters of Law Program, and teaches Intellectual Property Law as part of the Law For Non-Lawyers MBA program.

Mr. Levy has been recognized as a New York Super Lawyer every year since 2006, and has been selected for inclusion in The Legal 500 and the IAM Patent 1000, among others. In addition to his law practice, Ira serves as lead director for Stomp Out Bullying, the leading non-profit focused on eliminating bullying and cyber-bullying, and is on the New York advisory Board for BUILD, a non-profit dedicated to proving the power of experiential learning through entrepreneurship, and igniting the potential of youth in under-resourced communities.


Kimberly S. Chotkowski is an accomplished intellectual property attorney with 18 years of patent litigation, licensing and prosecution experience. For 4 years in a row, Kim has been listed in the Intellectual Asset Magazine as one of the top 300 IP Strategists in the World. She has been involved in litigating cases in a wide variety of  technologies including wireless and wired telephony (handset, air interface and base station), microprocessors, semiconductors, USB, touch screens, automotive components, active storage systems, editing software, video on demand, pharmaceutical etc. Kim is a proven leader with capabilities in building litigation teams, strategic thinking and implementing workable plans.

Kim has an established track record of litigating/negotiating complex, global IP licenses and monetization opportunities specializing in assisting clients in maximizing their financial return on research and development via licensing their technology. Kim’s experience provides significant global IP licensing knowledge having worked with a licensing firm who negotiated with more than 70 companies worldwide, obtaining licenses worth approximately over $2 billion on behalf of their clients. Kim supports her clients’ licensing efforts in a broad range of technologies including semiconductor processing and circuits, digital cameras, cell phones, optical storage, wired and wireless communications, internet applications, chemical arts, telecommunications and television, automotive, bioelectrical/biomechanical and pharmaceutical arenas.

Kim also offers strategic IP portfolio management. By tailoring her proactive IP management approach to each individual client’s business and technical goals, she develops cost-effective, value-generating portfolios that assist clients by protecting core technology, licensing and patent brokering. Kim has managed and served as an expert witness in various patent litigations. Kim is an inventor herself holding two patents in antenna technologies.

A frequent speaker, Kim has covered pertinent issues related to IP Monetization, international licensing and international patent portfolio management at the Licensing Executives Society, the American Bar Association, PLI and other independent professional conference forums. She has spoken on behalf of the US State Department on licensing in China. Kim holds a BS in electrical engineering and a BS in Humanities/History from Worcester Polytechnic Institute, a JD from the Franklin Pierce Law Center and an MBA, concentration in international business and finance, from Sacred Heart University.

Kim is a member of the Pennsylvania, Connecticut and New York and Patent Bars, a Certified Licensing Professional and a former committee member of the Intellectual Property Owners and an active participant in the Licensing Executive Society’s effort to provide standards of practice to the licensing profession.


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.


Lew founded Hamilton IPV and is recognized as an industry leader who has appeared in leading business publications and academic journals, spoken at major IP industry events, and published a number of studies of the patent transaction market.

Lew focuses on buy and sell-side IP due diligence and transaction execution for major M&A transactions and financial investments, as well as the valuation and evaluation of IP transactions including licenses, acquisitions and divestitures. Lew also develops IP strategies, benchmarks best practices, and develops licensing strategies.

Prior to establishing Hamilton IPV, Lew served as EVP of Advisory Services for ThinkFire, an IP industry boutique, and as a principal in Regis McKenna’s strategy consulting firm where he led marketing strategy development for  high tech clients and investment due diligence for private equity and venture capital funds. Before that, Lew served as a management consultant in PriceWaterhouseCoopers’ Telecom Strategy practice and Andersen Consulting’s Technology practice.

Relevant publications include:

  • A New Dataset on Mobile Phone Patent License Royalties”, The Hoover Institution at Stanford University, Galetovic, Haber & Zaretzki, Sep 25, 2016
  • The Patent Transaction Market at a Crossroads”, IAM Magazine, Zaretzki & Richardson, March/ April 2009
  • Rising Prices and Changing Strategies”, IAM Magazine, Zaretzki, February/ March 2008
  • Awards include: IAM Magazine’s “IAM 250/ 300: The World’s Leading IP Strategists”- 2009 - 2016
  • Citations include: The Wall Street Journal, Dow Jones, The Deal, The University of Chicago Law Review, The Toronto Globe & Mail, The Hastings Law Journal, The EE Times, The Hoover Institution at Stanford University
  • Speaking Engagements include: The Berkeley Center for Law & Technology, The CIP Forum, The Gathering 2.0, Duke University, The Licensing Executives Society, Ropes & Gray

Education

MBA, Fuqua School of Business, Duke University, 1999

BA Economics, University of Michigan, 1992


Marc is Senior IP Counsel for Patent Enforcement at IBM Corp., He manages the patent licensing and sales legal team responsible for generating IP income for IBM. In support of IBM's annual attainment of over $1B in IP income, the team focuses on the development and deployment of innovative patent monetization strategies including managing creation and presentation of infringement and sales collateral.

With over 15 years of experience spanning all areas of intellectual property practice, Marc's previous IP management responsibilities have included oversight of the IP law department for IBM's semiconductor design and manufacturing business as well as the patent portfolio management group tasked with the development and management of IBM's global patent portfolio.

Prior to assuming these management roles Marc was a member of IBM's corporate IP licensing team where he negotiated patent cross licenses and other IP agreements for the company. He also served on IBM's Systems and Watson Research IPLaw teams addressing the general IP needs of those business clients including prosecution, litigation, technology licensing, and general advice and counsel.

Throughout his career Marc has been actively involved in developing and deploying IP strategy at IBM including IBM's founding role in the Peer to Patent project (enacted as law as part of the AIA), IBM's open source and other patent pledges, amicus activity at the Federal Circuit and the Supreme Court as well as co-developing the "Innovation Cycle" approach to IP management that informs IBM's balance of open and proprietary innovation. Marc currently serves as the Chair of the Lawyer's Committee for Open Invention Network and as a member of the Legal Affairs Committee for OpenStack.

Marc is frequently asked to speak publicly and has done so in many fora and on many topics including patent quality, patent portfolio management, patent monetization, and collaborative innovation.


Michael recently joined Hilco Global from his position as Managing Director at Ocean Tomo, LLC, an intellectual property merchant bank. Michael led the Investments practice, which included Investment Banking, Asset Management and Investment Research.  As an IP investment banker, Michael executed IP financing, monetization and capital markets solutions for corporations and other intellectual property owners.  He also served as Chief Investment Officer of OT Asset Management, engaging in public equity, special situations, IP collateralized lending where intellectual property insight drives alpha creation.

Prior to joining Ocean Tomo in 2007, Michael founded and was Managing Partner of FHS Investments, LLC, a multi-strategy hedge fund.  Prior to that, he was a Managing Director at UBS where he ran a $3 billion portfolio as co-head of Special Situations for O’Connor hedge fund and proprietary Special Situations trading.  Mr. Friedman practiced mergers and acquisitions and securities law before entering investing and investment banking.


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 is a partner in the Intellectual Property and Technology Group at Skadden. Mr. 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, outsourcing arrangements and other complex technology transactions; stand-alone and mergers-and-acquisitions-related development, licensing, supply, marketing and support arrangements; and through IP monetization and financing transactions. 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.”


Practice Areas

Domestic Arbitration
Intellectual Property Litigation
International Arbitration
Life Sciences Litigation

Biography

David Bilsker has successfully tried numerous patent cases throughout the country. He has consistently been named a "Northern California Super Lawyer" and was selected as one of the top intellectual property attorneys by Bay Area Lawyer magazine. He has represented clients in actions covering a wide range of technologies including medical devices, biotechnology, smartphones, semiconductor design and fabrication, optics and communication systems. Prior to law school, Mr. Bilsker worked as an engineer designing pacemakers. While in engineering school, he conducted original research in microcirculation and hydrogen fuel technology.

Representative Clients

Avery Dennison Corporation
Lexicon Pharmaceuticals
Bio-Rad Laboratories
Tandy
Digene
Qiagen
Rubicor
Insmed Pharmaceuticals
Motorola Mobility
Google
 
Notable Representations

Microsoft Corp. v. Motorola Mobility. Successfully represented Motorola in a nine patent case before the ITC covering various aspects of smart phone technology.

3M Corporation v. Avery Dennison Corporation. Defeated preliminary injunction motion filed by 3M and
favorably settled thirteen patent case covering retroreflective sheeting used on street signs.

Digene v. Beckman. Counsel for Digene in arbitration before the ICDR regarding patent rights to HPV
technology in which the panel found in Digene's favor.

Gen II Orthotics v. Bledsoe. Counsel for Gen II in a jury trial on patents covering a revolutionary knee brace. The jury found the patents valid and willfully infringed, and award ultimately totaled near $10 million.

Tercica and Genentech v. Insmed. Took over as defense counsel shortly before trial on rare pediatric orphan drug case involving three patents covering recombinant IGF. Insmed had already been found to infringe one patent, and to have no validity defenses on the other two. After a four-week jury trial and eight days of jury deliberation, Insmed obtained a favorable settlement which included an ongoing business relationship with the plaintiffs.

Lexicon Genetics v. Deltagen
. Lead counsel in two cases enforcing Lexicon's patents covering methods to increase the efficiency of gene targeting in mice. One inventor and one primary witness shared the 2007 Nobel Prize in Medicine for this technology. Lexicon obtained an eight-figure settlement.

Molecular Dynamics v. Bio-Rad. Lead counsel in successful defense of Bio-Rad who was charged with infringing a patent covering a confocal microscope. The patent was invalidated and held unenforceable for inequitable conduct -- the first time Judge Ronald Whyte of the Northern District of California had ever granted summary adjudication on that issue.

Primus v. Bio-Rad. Lead counsel for Bio-Rad in a patent and antitrust case related to blood glucose monitoring equipment. Obtained summary adjudication finding that Bio-Rad had not monopolized and that it was not infringing the patents.

Neothermia v. Rubicor. Lead counsel defending Rubicor against charges that it misappropriated trade secrets and infringed a patent covering surgical biopsy equipment. After depositions of the plaintiffs primary fact witnesses and inventors, plaintiff dismissed the case in exchange for Rubicor not seeking costs and fees. This was the first case to apply California's trade secret disclosure requirement to a contract action for breach of a non-disclosure agreement.

A.C. Aukerman Co. v. R.L. Chaides Construction Co. Represented Aukerman on appeal. The Federal Circuit (en banc) reversed decades of law on estoppel and laches and established Aukerman as the seminal case in the area. Aukerman subsequently prevailed at trial.

KLA-Tencor v. TSK. Successfully defended TSK against a charge that it infringed a patent on semiconductor inspection equipment. After receiving expert testimony at the Markman hearing, the court agreed with TSK that the asserted claims were "nonsensical" and invalidated the patent.

Micron Semiconductor v. Hyundai. As a second-year lawyer, got Micron's expert to admit during crossexamination at trial that his own work anticipated the Micron patent covering anisotropic etching used in semiconductor fabrication. The case was settled favorably for Hyundai.

Education

University of Florida Fredric G. Lev in College of Law
(JD, with honors, 1990) 
    Order of the Coif 
    Phi Kappa Phi 
    Florida Law Review
        Senior Research Editor and Outstanding Board 
        Member, 1988-1990

University of Miami
 
(MS, BioMedical Engineering, 1986)

Columbia University
 
(BS, Chemical/Bio Engineering, 1984)

Prior Associations

Howrey LLP:
Partner, 2000-2010

Arnold White & Durkee (merged with Howrey):
Partner 1997-2000
Associate 1994-1997

Townsend & Townsend:
Associate 1990-1994

Admissions

Member, The State Bar of California; Member, The State Bar of Florida; United States Court of Appeals:
Federal Circuit, Ninth Circuit, Fifth Circuit; United States Patent and Trademark Office

Languages

Spanish