Experience
WATERSHED IP LAW, Philadelphia, PA
Of Counsel, March 2024 – Present
INTERDIGITAL/THOMSON LICENSING, Princeton, NJ, November 2001 – Present
Director, Licensing Support, January 2014 – October 2024
Responsible for group management of Mobile Phone, Tablet and Digital Set-Top Box licensing programs for US, Europe and Asia licensing initiatives. This requires the analysis and assertion of Technicolor’s patent infringement positions concerning all of its patents, including standard essential patents and features patents, as they read on a licensee’s products and services. Particular experience in software analysis, detection, open source, and right to use issues in counter-assertion context. Responsibilities require substantive understanding of the validity and infringement readings of the patents’ claims on the licensee’s products and services, the coordination and management of supporting patent counsels and infringement analysis engineers, and extensive participations in patent and licensing talks with licensees to achieve closing of the deals. Licensing analysis includes bundling of technology and know-how licenses, and software licenses for embedded bundling of third party supplied software in accused products. If negotiations are not successful, litigation planning, strategy and support is then required.
Group Manager – Signal Acquisition and Modulation, Networks and Watermarking, July 2009 – December 2013
In addition to substantive duties as Senior Patent Counsel (listed below), responsible for a group of attorneys that prepares and prosecuted US and Foreign patent applications. Responsible for US Patent Operations support of acquisition and divestiture activities, patent quality and Foreign Practice, licensing support and negotiations. Responsible for the coordination of US Patent Operations involvement in patent litigation in the United States Federal Courts and the International Trade Commission.
Manager of Foreign Practice and US Administration, January 2004 – July 2009
In addition to substantive duties as Senior Patent Counsel (listed below), managed administrative aspects of United States Patent Operations. Managed prosecution procedures for foreign work on Thomson cases, including relations with foreign agents. Duties included overseeing outside counsel, preparing and analyzing infringement analysis opinions, licensing support. Additional technology areas included AVC, SVC, HEVC/H.265, MPEG4, LTE, 3G/4G and audio standards. Analysis of open source bundled software in patented products and OSS obligations for permissive, reciprocal and Copyleft regimes.
Senior Patent Counsel, November 2001 – January 2004
About 50% of docket is foreign cases, including EPO and Asian countries. 50% of docket is US cases. Heavily involved in infringement analysis, licensing support including attending patent talks with licensees, and invalidation proceedings in foreign offices. Technologies include signal acquisition and modulation, compression (MPEG-2, H.264), networking and wireless (IEEE 802.XX).
AT&T CORP., Basking Ridge, NJ
Senior Attorney, January 2000 – November 2001
All aspects of US and Foreign patent prosecution, and heavily involved in EPO practice including several appeals from final rejections of 3-Examiner Board of the EPO to the appellate division, related to cable television and interactive television inventions.
Prior to AT&T was in private practice in New York and Philadelphia and handled a variety of prosecution and litigation matters. Most notably, in the foreign area successfully participated in an opposition to a European Patent for a client in the gypsum wall-board area asserted by European adversary.
COHEN PONTANI
Attorney, New York, NY (1999 – 2000)
KLEHR HARRISON
Partner, Philadelphia, PA (1998 – 1999)
DUANE MORRIS
Partner, Philadelphia, PA (1994 – 1998)
SYNNESTVEDT & LECHNER
Partner, Philadelphia, PA (1990 – 1994)
WOODCOCK WASHBURN
Partner, Philadelphia, PA (1986 – 1990)