David Herring

Of Counsel

herring@watershediplaw.com

David Herring is an IP professional with over 26 years of experience in legal and business roles in the IP career field in both law firms and corporate in-house departments. David has extensive experience in both offensive and defensive IP licensing (patents, technology, software, trade secrets, etc.), corporate strategy, standards IP, protection of IP assets, mergers/acquisitions and litigation. David received his Bachelors degree in Aeronautical and Astronautical Engineering from the Ohio State University, a Masters degree in Strategic Intelligence from the National Intelligence University and his J.D. from George Mason University. His technical background spans a broad spectrum of diverse technologies, including wireless networking, mobile communications, optical networking systems and components, audio coding, video coding, nanotechnology, imaging systems, digital processor architecture, error detection and protection, laser manufacture and design, consumer device design/functionality and semiconductor processing. Over his career, David has served in senior legal and business roles in various organizations managing both legal and business teams to achieve revenue and other business objectives.

  • Education

    Education

    • GEORGE MASON UNIVERSITY SCHOOL OF LAW, Arlington, VA
      • J.D., (Intellectual Property Sequence), July 1999
        Activities: Journal of International Legal Studies, George Mason American Inn of Court
    • NATIONAL INTELLIGENCE UNIVERSITY, Washington, DC
      • M.S., Strategic Intelligence, August 1994
    • OHIO STATE UNIVERSITY, Columbus, OH
      • B.S., Aeronautical and Astronautical Engineering, June 1989
        Activities: Reserve Officers’ Training Corps (US Air Force)
  • Experience

    Experience

    WATERSHED IP LAW, New Philadelphia, OH

    Of Counsel, June 2022 – Present

    Provide patent assertion/licensing support in negotiations related to cellular/3GPP systems (e.g., cellular telephones and networks) and other technologies/markets. Assess patent assets for potential use in licensing negotiations. Advise technical staff on reverse engineering procedures to provide evidence of infringement. Provide support for litigation activities. Identify and pursue business development opportunities related to potential new sources of revenue.

    REDRIDGE IP, New Philadelphia, OH

    President and Founder, April 2020 – Present

    Provide licensing and other intellectual property support and advisory services to a wide variety of local, national and international organizations, including large and small corporations, financial institutions and startups. Services include the development of corporate IP strategy tailored to the IP goals of both small and large enterprises, including enterprise IP strategy development, patent licensing, patent portfolio and trade secret program management, standards bodies/IP engagements, as well as complex transaction and license agreement negotiations.

    INTERDIGITAL, Wilmington, DE

    Director, Licensing, April 2018 – April 2020

    Lead licensing executive responsible for the consumer electronics licensing program directed at the DSTB, DTV, PC and OTT markets. Program focused on the licensing of core intellectual property consisting of implementation and standards essential patents related to video coding (e.g., AVC, HEVC), HDR, wireless communications (e.g., cellular, WiFi, Bluetooth, etc.), audio coding, and other technologies related to consumer electronics products. Led and directed licensing discussions (including enforcement, as required), including managing negotiations, business/license proposals and negotiation of deal terms. Provided direction to supporting technical, legal & market/business analysts. Responsible for providing annual, quarterly, and monthly revenue forecasts.

    TECHNICOLOR S.A./THOMSON LICENSING, Princeton, NJ

    Director, Licensing In and Standards Intellectual Property, March 2003 – April 2018

    Responsible for defending business and legal interests across all corporate business divisions and products against incoming patent licensing assertions representing hundreds of millions of dollars of risk annually. Developed, maintained and ensured compliance with Technicolor standards-related intellectual property policy. Determined need for and negotiated license contract provisions to obtain necessary intellectual property licenses for company products under most advantageous terms possible. Drafted and reviewed intellectual property provisions in a wide variety of business transactions. Developed and implemented corporate policy related to the protection of all intellectual property assets.

    AGERE SYSTEMS/LSI CORPORATION, Allentown, PA

    Corporate Counsel – Patent Assertion and Licensing, October 2006 – March 2010

    Primary attorney responsible for providing legal and technical support to patent assertion/licensing negotiations in the application areas of mobility systems (e.g., cellular telephones and networks), acoustics, optical disc players/recorders, computer and gaming systems, digital TV/set top boxes, and still and video cameras. Prepared and presented patent assertions to enforce intellectual property rights and generate patent licensing revenue in diverse technical fields such as wireless networking, mobile communications, audio coding, video coding (e.g., MPEG), imaging systems, digital processor architecture, error detection and protection, laser manufacture and design, consumer device design/functionality and semiconductor processing. Traveled extensively internationally and domestically in support of patent license negotiations. Directed internal and external business and technical resources

    in mining efforts to identify and review patent assertion candidates. Managed outside counsel in the preparation and prosecution of US and foreign patent applications. Provided legal and negotiation support to patent sales and litigation activities.

    LAW OFFICE OF JEFFREY M. WEINICK, LLC, Livingston, NJ

    Associate, July 2004 – October 2006

    Prepared and prosecuted US and foreign patent applications across a wide range of technologies including wireless communications, circuit-based telephony systems and networks, packet-based telephony systems and networks, positioning systems (e.g., GPS), data networking, network convergence, business methods, and other related areas. Supervised two attorneys in the preparation and prosecution of patent applications, amendments and other related work. Interfaced with inventors in invention analysis and patent prosecution matters. Counseled clients on a wide variety of intellectual property matters.

    LUCENT TECHNOLOGIES, Murray Hill, NJ

    Corporate Counsel – Patent Prosecution/Portfolio Management, August 1999 – July 2004

    Primary attorney responsible for providing intellectual property support to Bell Laboratories Wireless Research and other major Bell Laboratories client organizations. Prepared and prosecuted US and foreign patent applications across a diverse range of technologies, including wireless communications, nanotechnology, high-speed electronics, optical networking systems and other areas associated with the telecommunications field. Developed Lucent-wide patent portfolio management strategy and patent application filing profiles for invention submissions.

    LOCKHEED-MARTIN CORPORATION, Reston, VA

    Systems Engineer, March 1999 – August 1999

    Led the systems engineering support effort for an operational, highly sensitive intelligence-collection system. Identified and resolved system risks to ensure system compatibility with complex Intelligence Community collection architecture.

    NATIONAL RECONNAISSANCE OFFICE, Pentagon, VA

    Chief, System Test Engineering/Communications System Engineer, August 1994 – March 1999

    Led the spacecraft engineering and acquisition effort for testing a classified $3.5 billion satellite intelligence-collection system and its associated communications architecture prior to launch and on-orbit operations. Monitored system health of a separate classified, multi-billion dollar operational intelligence collection system.

    DEFENSE INTELLIGENCE AGENCY, Washington, D.C.

    Student, Defense Intelligence College, August 1993 – August 1994

    Earned the Master of Science of Strategic Intelligence (MSSI) degree and completed the Post-Graduate Intelligence Program (PGIP). Studies prepared competitively-selected candidates for leadership and policy-making positions within the United States Intelligence Community.

    3rd WING, ELMENDORF AIR FORCE BASE, Anchorage, AK

    Chief, Fuels Management Flight/Quality Advisor and Instructor, September 1989 – August 1993

    Led 120 military and civilian members in the storage and issue of more than 50 million gallons of petroleum and cryogenic products annually. Deployed portable fuel delivery systems and personnel for world-wide contingency operations. Maintained and operated equipment valued at $200 million.