WATERSHED IP LAW, Fall City, WA
Founder, February 2015 – Present
Provide legal support for IP transactions including portfolio valuation, management of reverse engineering, development of assertion materials, portfolio mining and due diligence, and strategic planning for acquisitions, divestitures and licensing negotiations.
ROCKSTAR CONSORTIUM, Plano, TX
Senior Counsel, July 2013 – January 2015
Supported strategic and tactical planning for Rockstar’s subsidiaries/licensing programs; provided legal support of negotiations with numerous licensing targets. Managed licensing program for Rockstar subsidiary, NetStar, monetizing portfolio related to search advertising.
INTELLECTUAL VENTURES, Bellevue, WA
Chief Counsel, Licensing, April 2012 – May 2013
Licensing Attorney, Director, April 2011 – March 2012
Managed the legal licensing function including leading the team of twelve attorneys responsible for licensing of IV portfolios; developed and implemented processes to support outbound licensing, optimize productivity and enhance IV’s competitive position; provided transactional support for licensing, acquisition/divestiture, and corporate supplier transactions; managed department expenses to budget; provided direction and managed relationships with outside counsel and consultants; and supported strategic and tactical planning.
LSI CORPORATION, Allentown, PA (Formerly AGERE SYSTEMS, merged with LSI LOGIC April 2007)
Managing IP Counsel, 2007 – 2011
Corporate IP Counsel, 2005 – 2007
Managed cross-functional teams of in-house attorneys, technical specialists, reverse engineering lab technicians, external technical experts, outside counsel and external reverse engineering vendors in support of nine LSI licensing programs; managed budget line items of ~$2.5M; team activities included strategic planning of engagements, portfolio mining, reverse engineering, developing and presenting portfolio overview presentations, technology presentations, claim charts, and rebuttal presentations as well as support of acquisition/sales and litigation activities; worked with senior management and staff to develop and implement processes to improve efficiency, quality and effectiveness of licensing, litigation and acquisition/sales support.
LUCENT TECHNOLOGIES, Holmdel, NJ
Corporate Counsel, 2002 – 2005
Managed patent portfolio in the area of optoelectronics/photonics; prepared and prosecuted domestic and international patent applications; supervised outside counsel; provided support for patent assertion/licensing programs; prepared infringement analysis and opinions; and provided IP counsel to internal Bell Labs clients.
AKIN, GUMP, STRAUSS, HAUER & FELD, L.L.P., Philadelphia, PA
Associate, 2000 – 2002
Prepared patentability, infringement and validity opinions; provided patent litigation support; performed intellectual property due diligence for corporate transactions; prepared and prosecuted domestic and international patent applications; and provided client counseling for various IP related matters
SCHNADER, HARRISON, SEGAL & LEWIS, L.L.P., Philadelphia, PA (Formerly MILLER & CHRISTENBURY, P.C., merged with Schnader April 1998)
Associate, 1997 – 2000
Prepared and prosecuted domestic and international patent applications; prepared infringement, patentability and validity opinions; provided patent and trademark litigation support; prepared and prosecuted trademark applications; prepared copyright applications; drafted and negotiated license agreements; and provided IP counsel to clients.
ELECTRONIC DATA SYSTEMS (EDS), New York, NY
Systems Engineer, 1991 – 1994
Completed the Systems Engineer Development Program which included training in COBOL, DB2, CICS and UNIX; performed technical analysis of numerous software systems; worked with a variety of clients on large system development contracts for financial institutions and communications companies; and developed testing procedures for various computer systems and enhancement projects.