Electrical Engineer Information Technology

Joe H. Shallenburger

** ******* ****, **** ******, NJ 07052;

917-***-****; ****************@*****.***

EDUCATION:

SOUTHERN METHODIST UNIVERSITY SCHOOL OF LAW, Dallas, Texas J.D.,

May 1993;

Federal Tax Clinic Chief Counsel; Moot Court Justice; Law School

Senator.

SOUTHERN METHODIST UNIVERSITY, Dallas, Texas B.S.E.M. in Electrical

Engineering, May 1990;

Engineering Honors, University & Alumni Scholarships.

LEGAL EMPLOYERS:

WARD & OLIVO, New York, NY & Summit, NJ 2006 -

Present

Of Counsel, Patent and Intellectual Property Attorney

Head of Patent Prosecution Department

WOLFF & SAMSON, West Orange, NJ 2004 - 2006

Senior Associate, Patent and Intellectual Property

Attorney

Head of Patent Department

GREENBERG TRAURIG, New York, NY 2002 - 2003

Associate, Patent and Intellectual Property Department

FROMMER LAWRENCE & HAUG, New York, NY 1998 - 2002

Associate, Patent and Intellectual Property Department

FISH & NEAVE, New York, NY 1997 - 1998

Associate, Patent and Intellectual Property Department

ROBIN, BLECKER, DALEY & DRISCOLL, New York, NY

1995 - 1996

Associate, Patent and Intellectual Property Department

THOMPSON & HOWISON, Dallas, TX 1993 - 1995

Associate, Patent and Intellectual Property Department

LEGAL EXPERIENCE:

+ Senior Patent and Intellectual Property Counsel primarily responsible

for serving as key strategist and manager in connection with patent

and intellectual property prosecution, opinion, licensing,

infringement and litigation matters.

+ Chief client liaison manager with extensive experience in the

following substantive areas: analyzing and assessing technology and

possible infringement, supervising and managing national patent

litigations, patent portfolio development and prosecution.

+ Senior Patent and Intellectual Property Counsel responsible for

drafting and negotiating intellectual property and information

technology agreements and negotiations including licensing, vendor,

customer and business contracts.

+ Lead Senior Attorney responsible for managing Patent Departments of

two regional law firms with over 500 intellectual property matters.

Responsibilities included identifying inventions, soliciting and

reviewing invention disclosures, supervising five attorneys and

multiple employees, develop internal processes and training outside

counsel, attorneys, agents, scientific advisors and staff.

+ Specific intellectual property, information technology and prosecution

experience in the following areas:

Counseling:

? Protecting technology, business methods, trademarks and trade

secrets, patent prosecution and analyzing and enforcing

intellectual property rights through infringement actions.

? Building, protecting, enforcing and licensing information

technology and intellectual property portfolios and assets.

? Developing intellectual property strategies to maximize

licensing and royalty payments and maximizing return on

investments to protect and increase market share and profits

including coordinating with senior management and in-house

counsel.

? Analyzing and defending against charges of infringement as well

as minimizing potential exposure.

? Identifying and protecting information technology and

intellectual property within a company by working with corporate

business units.

? Identifying and advising clients on intellectual property and

information technology issues.

Management:

? Overseeing foreign associates and other counsel regarding

protection and prosecution of intellectual property and

information technology.

? Developing, analyzing and maintaining international

intellectual property portfolios and licensing programs to support

business strategy.

? Supervising and training outside counsel, attorneys, agents,

scientific advisors and staff.

? Leading patent prosecution practices, responsibilities include

identifying inventions, soliciting and reviewing invention

disclosures and managing attorneys, docket, staff and client

development.

? Directing and overseeing patent litigations and outside

counsel, drafting and reviewing discovery, pleadings, briefs, and

motions.

Preparation and Prosecution:

? Negotiating and drafting patent, information technology and

other intellectual property licenses and other agreements.

? Analyzing and drafting opinions regarding product clearance

studies including validity, infringement, patentability, due

diligence and right to use; monitoring and analyzing clients'

competitors and their products.

? Prosecuting U.S. and foreign patent and trademark applications

in a wide range of arts.

ENGINEERING EXPERIENCE:

NCH CORPORATION, Irving, TX Electrical Engineer

1991

SOUTHWESTERN BELL TELEPHONE, Dallas, TX Electrical

Engineer 1987

ADMISSIONS:

UNITED STATES PATENT AND TRADEMARK OFFICE

NEW YORK STATE BAR

TEXAS STATE BAR

REPRESENTATIVE TRANSACTIONS AND MATTERS

1. Lead attorney responsible for handling patent matters including

initiating and managing patent strategy, patent prosecution, patent

portfolio and licensing programs for Hartford Financial Services, a

$10.2B insurance and financial services company.

2. Senior attorney responsible for analyzing multi-million dollar

infringement actions. Responsibilities also included initiating,

managing and overseeing litigations in Federal Court, including

determining strategy and supervising outside counsel in connection with

Internet Radio and Internet Profile technology involving such clients

as Yahoo! Inc., RealNetworks Inc., CBS Inc., AOL Inc., News

Corporation, NBC Universal Inc., Amazon.com Inc., Netflix Inc., Hulu

LLC, Slacker Inc., Pandora Media, Inc. and others including negotiating

and drafting license agreements prior to and resulting from litigation.

3. Lead attorney responsible for initiating multi-million dollar patent

prosecution programs and handling client at numerous banks and

financial services companies including Webster Financial Corporation, a

$1.3B middle market national bank.

4. Lead attorney responsible for initiating international patent

prosecution program on behalf of Extremity Medical LLC, a multi-million

dollar biotechnology startup company. Responsibilities included

interfacing with client, managing patent prosecution strategy,

supervising preparation and prosecution of patent applications, and

management of patent portfolio and licensing programs.

5. Senior attorney responsible for managing and executing mergers and

acquisition due diligence relating to intellectual property and

information technology assets for middle market companies in the

electrical, retail and financial services industries.

6. Senior Attorney responsible for developing strategies to maximize

licensing and royalty payments and maximize return on investments to

protect and increase market share and profits. Responsibilities

included coordinating with senior management and in-house counsel,

negotiating and drafting licensing agreements, reviewing competitors'

patent portfolios, reviewing patent lawsuits in field and determining

patent prosecution strategy for numerous clients including Hartford

Financial Services, a $10.2B insurance and financial services company.

7. Reviewing and analyzing potential infringement actions on behalf of

corporate clients, including Limited Brands, Inc., a $7.5B retailer and

Saks Incorporated, a $1.4B retailer.

8. Researching and drafting opinions regarding patents and lawsuits for

electronics, insurance, banking, retail, medical and aerospace clients

including Hartford Financial Services, $10.2B insurance and financial

services company, Limited Brands, Inc., a $7.5B retailer and Saks

Incorporated, a $1.4B retailer.

REPRESENTATIVE CLIENTS

FINANCIAL SERVICES:

Hartford Financial Services (Financial Services, Insurance, Hedging,

Investing)

Webster Financial Corporation (Mobile and Internet Banking Systems)

Credit Suisse Group AG (Financial Services, Investing)

Open Market Partners (Financial Indexes, Pricing, Financial Markets,

Trading Systems, Financial Instruments)

Bentek Energy (Energy Pricing Systems, Financial Indexes, Financial

Markets)

PetroChem Wire LLC (Energy Hedging, Energy Pricing, Pricing Benchmarks)

Lozier Energy (Energy Pricing, Commodity Brokerage)

ELECTRICAL, TELECOMMUNICATIONS, SOFTWARE AND HARDWARE:

Sony Corporation (Electronics, Microprocessors, Audio/Visual Hardware

and Software, Video Games, Television Systems, Computer Hardware and

Software, Internet, Digital Video Recording)

Canon Inc. (Cameras, Copiers)

AT&T Inc. (Telecommunications, Fiber Optics, Digital Circuits, Wireless

Telecommunications, Software, Internet)

Verizon Communications Inc. (Telecommunications, Digital Circuits,

Interactive Cable Television)

Verizon Wireless (Wireless Systems)

Alcatel-Lucent (Wireless Communication, Networks and Equipment)

Hewlett-Packard Company (Computer Hardware, Semiconductors, Operating

Systems)

Crystal Semiconductor Corporation (Semiconductors)

Cyrix Corporations (Microprocessors)

National Semiconductor Corporation (Semiconductors)

Benchmarq Micro (Battery and Charging Circuits)

Texas Instruments Incorporated (Integrated, Analog and Digital Circuits)

Traffic Escort LLC(GPS and Traffic Systems)

Sensormatic Corp. (Electronic Article Surveillance, Video and Television

Systems)

Concert Technology Corporation (Internet Media, Internet Services,

Mobile Devices)

Quito Enterprises LLC (Internet Media and Profiles)

Zamora Radio LLC (Internet Radio)

BIOTECHNOLOGY AND MEDICAL:

Siemens AG (Medical Imaging, Treatment and Diagnostics Systems)

University of Medicine and Dentistry of New Jersey (Drug Delivery

Systems)

Extremity Medical, LLC (Medical Devices, Implants and Fasteners,

Surgical Methods)

Drive Medical (Medical Products, Healthcare)

Hartman Co. (Pharmaceutical Packaging)

GENERAL AND RETAIL:

Limited Brands Inc. including Victoria's Secret and Bath & Body Works

(Clothing, Display Systems, Cosmetics, Fragrances, Marketing Systems,

Packaging)

Saks Incorporated (Retail Systems, Marketing Systems)

Avionics Inc. (Aerospace)

Pounce Sports Co. (Sports Equipment)

Stanley Black & Decker Inc. (Tools)

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