Skip to main content

Patent Licensing Today 2014: Making Money Without Getting Sued


Speaker(s): Burch A. Harper, Jake Handy, James Maccoun, James F. Brelsford, Joseph Yang, Mark S. Holmes, Meredith M. McKenzie, Nader A. Mousavi, Sara Duval Harrington, Winston E. Henderson
Recorded on: Nov. 3, 2014
PLI Program #: 51994

Jim Brelsford advises clients on complex intellectual property licensing and M&A matters, as well as monetization strategies (both offensive and defensive) and IP litigation.  He brings a strong business perspective to his practice, having served as general counsel and in senior business capacities at several public and private companies.

Mr. Brelsford is resident in Skadden's Palo Alto and Hong Kong offices and works frequently with companies in Asia on a host of cross-border transactions and strategic partnerships.

Prior to joining Skadden, Mr. Brelsford served for many years as the general counsel and senior vice president of IP licensing at SanDisk Corp., responsible for over $1 billion in licensing revenue as well as the company’s legal affairs worldwide.

He was named one of the world's leading IP strategists in Intellectual Asset Management’s “IAM 300”  in both 2014 and 2015.  Additionally, Mr. Brelsford was named as the “Best General Counsel in Silicon Valley” by the Silicon Valley Business Journal/San Francisco Business Times in 2010.


Joseph Yang is a partner at PatentEsque Law Group, LLP, where he specializes in the use of patent licensing and technology transactions (including R&D, licensing, manufacturing, JVs and IP aspects of M&A) in areas such as semiconductors, software, digital entertainment, athletics/health/fitness, medical devices and renewable energy).  He also has experience in patent strategy, portfolio management, litigation oversight, and has served as an arbitrator.

Joe previously served as VP & General Counsel of Cryptography Research, Inc., until its acquisition by Rambus Inc.  Before that, he was Counsel at Skadden Arps, where he co-founded and later led the IP transactions practice in Palo Alto.  

Here at PLI, Joe co-chairs the annual "Understanding the IP License," "Advanced Licensing Agreements" and " Patent Licensing Today" programs.  Joe has written a chapter on "IP Strategy in Joint Ventures" for the book "Start-Up & Emerging Companies”, as well as for and various journals, and he has been cited in court decisions and treatises.  Joe co-teaches the "Patent and Technology Licensing" course at Stanford Law School, and has previously co-taught "Patent Law & Policy" at U.C. Berkeley School of Law as an adjunct faculty member.

Joe has been named one of the “World’s Leading IP Strategists” and “World’s Leading IP & Technology Licensing Lawyers”, both by Intellectual Asset Management magazine.  He is also listed in Marquis’ Who’s Who in America and Marquis’ Who’s Who in American Law.  Joe holds a J.D. from Stanford and a Ph.D. in engineering from Caltech, where he has served on the Boards of the Caltech Alumni Association, and the Caltech Associates.  Before becoming an attorney, he was a research engineer in the defense and energy industries. 

Joe can be reached at joe@patentesque.com or 650-233-0822(O).


Meredith McKenzie joined Juniper Networks as the Vice President and Deputy General Counsel in 2012. She has over 20 years of Intellectual Property experience, with 18 years in-house. At Juniper Meredith manages the groups responsible for all aspects of Juniper’s Intellectual Property, including patents, licensing, privacy, open source, standards, M&A IP due diligence, trademarks, copyrights and trade secrets. In addition, she also manages the groups responsible for Litigation, Employment and Legal Operations.

Prior to joining Juniper, she spent over 5 years at Symantec Corporation as the Senior Director of Intellectual Property and 5 years at Cypress Semiconductor as the Director of Litigation, Licensing and IP.  Meredith’s previous experiences include working as an embedded microprocessor design engineer at Intel before enrolling in law school. While attending law school in the evenings, Meredith worked full-time in Intel's legal department preparing patent applications and performing patent analyses. Meredith then joined Arnold, White and Durkee (later merging with Howrey LLC) and for three years litigated patents in the United States, Europe and Asia, as well as in the International Trade Commission. Meredith then joined Enuvis, a start-up company in the area of GPS location technology, as the Director of IP and Sr. Corporate Counsel, where she was the sole attorney, performing duties including patent portfolio development and strategy, license negotiations, and employment and other agreements.

In addition, for the past 3 years, Meredith has been a Professional Mentor for the U.S. State Department program, TechWomen, and has been a mentor for the Santa Clara University School of Law’s Entrepreneur Law Clinic since its inception in 2013.

Meredith holds a BSEE from Massachusetts Institute of Technology., and a J.D. from Santa Clara University School of Law, Magna Cum Laude, with an emphasis in Intellectual Property.


Overview

Current

Past

Education

  • Cornell Law School
  • University of California, San Diego

Experience

Sr. Director Legal-IP

LinkedIn

Public Company; 1001-5000 employees; LNKD; Internet industry

April 2012 – Present (5 months) Mountain View CA

Adjunct Professor- Intellectual Property Licensing

UC Hastings College of the Law

Educational Institution; 201-500 employees; Higher Education industry

2011 – Present (1 year) San Francisco Bay Area 

Partner-Technology Transactions Group

Wilson Sonsini Goodrich & Rosati

Privately Held; 1001-5000 employees; Law Practice industry

1992 – April 2012 (20 years)

Sara Harrington was a partner in the technology transactions practice at Wilson Sonsini Goodrich & Rosati. She counseled various companies involved in the development, distribution, licensing, disposition, and acquisition of technology and intellectual property rights for various start-ups and established enterprises.

Sara represented clients in a wide range of industries, including those involved in search technology, business application software (both open source and private source), e-commerce (business-to-business and business-to-consumer), Web 2.0, entertainment/media industries, database services, consulting, networking devices, semiconductor, telecom, medical device, consumer goods, and audio services. Sara has constructed and negotiated a variety of international and domestic agreements, covering such areas as strategic alliances, marketing, development, licensing, advertising, distribution, services, outsourcing, open source, and manufacturing. She also advised companies on intellectual property matters in connection with investments, financings, asset purchases and sales, corporate structuring (spin-outs), and mergers and acquisitions.

Before joining the technology transactions practice, Sara practiced in the litigation department of Wilson Sonsini Goodrich & Rosati, where she litigated a variety of intellectual property, antitrust, and securities claims. Prior to joining the firm, Sara was an attorney at Fried, Frank, Harris, Shriver & Jacobson in New York City, where she litigated corporate change-of-control and commercial litigation matters for various multinational corporate clients.


Winston Henderson is Vice President, General Counsel of Nano Terra, Inc., a Boston-based nanotechnology company with life science and non-life science divisions. Prior to Nano Terra, Winston was Corporate Secretary of Surface Logix, Inc., a biopharmaceutical and drug development company in Boston, MA Vice President, General Counsel and Corporate Secretary of Surface Logix, Inc., a biopharmaceutical and drug development company in Boston, MA. Winston supervises all legal functions, including corporate governance, corporate legal strategy, regulatory, intellectual property and licensing, litigation, and business development support.

Prior to joining Surface Logix, Winston was an attorney with Kenyon & Kenyon, and a consultant with Andersen Consulting (now Accenture) in its Advanced Systems and Technology Integration Services groups. During that time, Mr. Henderson consulted with and advised numerous international high technology, medical device and pharmaceutical companies, including several based in the United Kingdom and Israel.

Mr. Henderson received his B.S.E. in Biomedical & Electrical Engineering from Duke University (where he was a Reginaldo Howard Scholar), and his J.D. from Duke University School of Law.


Recognized as one of the “World’s Leading Patent Practitioners” by Intellectual Asset Management (IAM) Patent 1000 (2012-2015) and named as one of the “Top 100 Lawyers in California” by Daily Journal (2012), Nader A. Mousavi is a partner, and co-head of the Firm’s Intellectual Property & Technology Group and the Firm’s Cybersecurity Group. He joined the Firm in 2010.

Mr. Mousavi’s practice includes advising clients on intellectual property, technology and data protection issues in a wide range of corporate and transactional matters, including mergers and acquisitions, joint ventures, collaborations, financings, licensing, outsourcing, monetization, manufacturing, commercialization, R&D and settlements.

Mr. Mousavi was lead IP counsel to Eastman Kodak Company in its successful global reorganization and led the sale of its portfolio of 1,100 digital imaging patents and a series of associated patent licensing transactions. He also was counsel to Silver Lake Partners and Skype in connection with the $8.5 billion sale of Skype to Microsoft.

After graduating from Stanford Law School, he joined TCS, an early-stage telecommunications software (SaaS) company, where he led strategy and legal affairs as TCS pioneered the “softswitch” and was acquired by a leading broadband equipment company. Following the acquisition, Mr. Mousavi served as senior counsel for the acquirer until joining Hale and Dorr (now Wilmer Cutler Pickering Hale and Dorr) in 2001. Mr. Mousavi later also served on secondment to Cisco Systems as lead technology counsel to Cisco’s IP communications business unit. He became a partner at Wilmer Cutler Pickering Hale and Dorr in 2008 and co-founded the firm’s Palo Alto office before joining Sullivan & Cromwell.

Awards and Recognitions

  • The American Lawyer – named as one of the “Lateral All-Stars,” a list honoring the most significant partner moves of the year (2010)
  • Chambers USA: America’s Leading Lawyers for Business – recognized for IT and Outsourcing (2008-2015)
  • Daily Journal – named as one of the “Top 100 Lawyers in California” (2012)
  • IAM Licensing 250: The World’s Leading Patent and Technology Licensing Lawyers – recognized in 2010 and 2011/2012 (the only years this recognition was given)
  • IAM Patent 1000 – The World’s Leading Patent Practitioners (2012-2015)
  • The Legal 500 United States – recognized for Patent Licensing and Transactional Law (2014, 2015)
  • Northern California Super Lawyers (2009-2014)
  • Silicon Valley/San Jose Business Journal – recognized as one of the top “40 under 40” business professionals in Silicon Valley (2007)


The founder and CEO of PatentBridge, Mark Holmes is a registered patent attorney experienced in all aspects of patent brokering and patent licensing. He has negotiated numerous patent deals, both inbound and outbound, as well as represented patent owners in the brokering of their patents. For half a decade from 2006 to 2011, Mr. Holmes served as co-chair Silicon Valley Chapter of LES (Licensing Executives Society).

Mr. Holmes has advised some of the largest companies and academic institutions in the world such as Visa, Sony, Applied Materials, Intergraph (in its settlement of Intergraph vs. Intel), University of California at Berkeley (Berkeley Lab), Biosite, Fairchild Semiconductor, Rigel Pharma and Yamanouchi Pharma, as well as sole inventors. He has been on both sides of the table -- as buyer and seller -- which has given him a unique understanding of both perspectives and the negotiating tactics employed by each party to the deal.

Mr. Holmes earned his engineering degree from Brown University. He is a member of the Institute of Electrical and Electronics Engineers (IEEE) and the IEEE Computer Society. Before founding PatentBridge, he served as counsel to Townsend & Townsend & Crew, formerly the largest intellectual property law firm west of the Mississippi.

Mr. Holmes is the author of the book Patent Licensing and Selling: Strategy, Negotiation & Forms, Practising Law Institute, New York (2000 supplemented annually). Please click the button entitled "Book" at the top of the screen for more information.

Mr. Holmes lectures nationally on the pressing issues facing patent owners in the commercialization of their intellectual property. In the past few years, he has spoken nationally over 50 times on the commercialization of intellectual property for such bodies as Renaissance Weekend, Practising Law Institute, International Society for Optical Engineering (SPIE), Patent Law Institute, Washington State Patent Law Association, Oregon Patent Law Association, Hawaii State Bar Association and other organizations.

He also serves as co-chair of the Practising Law Institute’s Advanced Patent Licensing annual program in New York, Chicago and San Francisco, where he speaks on software and patent deals.

He was a speaker on patents at the 2003, 2004 and 2008 Annual Meetings of the Licensing Executive Society (LES) and served on the meeting committee for the 2004 LES Winter Meeting in San Francisco. Since 2002, Mr. Holmes has been a member of the faculty of the Practising Law Institute’s “Advanced Licensing Agreements” annual two-day programs in San Francisco, Chicago and New York where he speaks on software licensing and the analysis of a complex technology deal.

He is the author of numerous articles and sits on the Board of Editorial Advisers for the Intellectual Property Counselor, published by West Publishing.


Jake Handy is a partner at Fenwick & West LLP and chair of the Technology Transactions group.  Jake focuses his practice on technology-based transactions, including intellectual property acquisitions and licensing strategies for technology companies.  Jake’s representative transactions include development, collaboration, license and other technology transactions for all manner of technology companies.


As Vice President and Deputy General Counsel at Rambus, Burch Harper leads the company’s transaction team, which is responsible for the negotiation and drafting of nearly all of the company’s in-bound and out-bound agreements.  While at Rambus, Burch negotiated to closure multiple patent license agreements that are valued at over one-half of a billion dollars.  These include patent license agreements with Micron, Hynix, Nanya, IBM, STMicroelectronics, LSI, Freescale, Qualcomm, Fujitsu, and Toshiba.   Since graduating from the University of Michigan Law School in 1996, Burch’s legal practice has focused primarily on patent and technology licensing transactions and intellectual property protection and enforcement in both law firm and in-house settings.


James Maccoun is patent counsel at Google, engaging in strategic patent licensing and patent strategy.  Previously, he was patent counsel at Hewlett-Packard.  Prior to HP, he was patent counsel for Motorola Inc. at Motorola’s Beijing offices, and was Motorola’s lead attorney for intellectual property matters in the Greater China Region.   His initial employment as a lawyer was with Lee and Li, a leading international commercial law firm headquartered in Taipei.  He has resided in the Silicon Valley, Beijing, Taipei and Singapore.