Management State University

Intellectual Property Attorney and former software developer with broad knowledge of intellectual property, transactions, licensing, strategic counseling and extensive IP protection, management, and enforcement for Fortune ranked companies to startups

Pursuing innovate roles in need of a steady and composed legal and business professional with the flexibility and judgment to both resourcefully manage routine daily tasks and advise on mission critical problems efficiently

CAPABILITIES

INTELLECTUAL PROPERTY

STRATEGIC ENFORCEMENT

TRANSACTIONS & CORPORATE

Patent, Trademark, and Copyright

ADR and Negotiation

Acquisition Due Diligence

Complex Licensing Agreements

ITC investigations and Court Cases

Regulatory Compliance

IP Protection and Acquisition

Business Disputes & Resolution

Risk Management & Privacy

Global Portfolio Management

Complex Litigation Through Trial

International & Domestic

Demonstrated success providing pragmatic legal advice, working closely with executives, boards of directors and all level of leaders to lead litigation, transactions, licensing, contracting and due diligence projects

Perfected ability to quickly compose and establish clear, efficient and practical legal strategies to achieve business goals, and execute lean solutions that stay true to business objectives

Continuously acclaimed by superiors, peers and subordinates for remaining calm and level-headed under extraordinary pressure in trials, disputes, short deadline transactions, and other high intensity, demanding projects

Expert at recruiting, building, managing and leading all size hands-on internal and external teams - from one to 25 members- including in-house and outsourced/retained lawyers, paralegals, professional staff and technical experts

Proven consistency setting and achieving budgets, and selecting and managing outside lawyers, vendors, expert consultants, and resources for all size projects

RECENT ACHIEVEMENTS

Delivered extraordinary results in complex IP due diligence for an acquisition covering a major global patent and trademark portfolio in a delicate situation where parties were simultaneously adverse to each other in a major legal dispute; helped bring about a complex post-acquisition harmonization of the two entities

Pioneered a groundbreaking, comprehensive IP protection program comprised of innovative trademark surveillance and enforcement, full revision of all worldwide supplier licensing agreements, and an innovative program to tighten control of a globally recognized trademark

Completed extensive due diligence and drafting of key agreements on highly time-sensitive transactions, from small corporate deals to multi-billion dollar acquisitions by public technology giants NCR/Digital Insight and SAP/Business Objects

Created significant value by initiating and leading a USITC investigation for patent infringement against foreign infringers, obtaining multiple consent orders, Summary Determination of violation and extremely rare General Exclusion Order (GEO), resulting in favorable settlement by three respondents, and corporate acquisition by respondent ninebot

Successfully built and led teams and developed emerging high-tech products prior to practicing law, through software design, development, support, and executive leadership in the technology sector

LEGAL EMPLOYMENT

ByteLAW legal Consulting, San Francisco, CA. 2016 – Present

Provide legal advice on confidential matters, including IP licensing, management, and enforcement as well as commercial matters including contracts and litigation.

Segway Inc., Bradford, NH. 2014-2015 - General Counsel

Recruited as chief legal officer for a private global technology company and manufacturer of the iconic Segway Personal Transporter

Patent and Trademark Licensing and Management

Improved and strengthened Segway’s IP protection by: (i) initiating a Trademark surveillance and enforcement program, (ii) revising the licensing agreements signed by Segway dealers and distributors worldwide to better protect Segway’s trademarks, and (iii) revising and updating Segway’s patent program.

Corporate & Acquisition Due Diligence

Oversaw complex due diligence of Segway’s acquisition by ninebot, also a respondent in the USITC investigation, streamlining the exchange of complicated data and working with ninebot’s counsel to preserve proper separation between litigation and due diligence information, and ensuring timely transfer of the status of all patent and trademark applications, licenses and assignments. Performed post-acquisition analysis and recommendations for further enforcement actions (still in place).

Regulatory Compliance

Ensured compliance with multiple standards in the U.S., directives in the European Union, and countries around the world, including complex requirements and directives related to the Lithium Ion batteries used in the Segway PT. Managed a number of issues that arose related to various standards including ROHS, UL, CE, and similar certifications.

Drafted, negotiated and enforced contracts covering IP licensing, safety, reporting, and compliance with U.S. export regulations and trade bans with certain countries; helped enforce prohibitions on Grey Market and direct on-line sales in violation of dealer agreements.

Corporate Governance, Risk & Privacy

Provided pragmatic and business-oriented advice to the President and other senior company officers on product safety, risk assessment, privacy, and ethics, including overseeing personal injury and contract claims against Segway, mitigating future claims, handling insurance coverage and IP portfolio management issues, drafting, negotiating, and enforcing safety-related terms of dealer/distributor agreements, manuals, warning labels and product design recommendations, negotiating agreements with SaaS providers, counseling on various employment, FCPA, and ITAR issues, drafting terms and conditions and negotiating agreements regarding third parties’ collection and handling of online personal information through Segway’s e-commerce tour site, and establishing a program for mitigation and recovery in case of a breach or loss of data.

Strategic Enforcement

Initiated and led USITC investigation 337-TA-935 against manufacturers and importers of self-balancing personal transporters that infringed pioneering patents exclusively licensed by Segway Inc. Obtained Summary Determination of violation and of General Exclusion Order. One respondent acquired Segway Inc., and three others settled through consent orders. Collaborated with patent owner DEKA’s counsel and managed two outside law firms, achieving significant value by setting clear and efficient strategy up front, adhering to business goals and approved budgets.

International Contracts & Business Disputes

Negotiated numerous contracts and resolved disputes with major international distributors, U.S. dealers and tour operators. Oversaw compliance with local regulations and directives. Managed litigation and other disputes.

Womble Carlyle Sandridge and Rice, Cupertino, CA. 2012-2014 – Partner/Head of CA Intellectual Property Litigation Group

Recruited to lead the IP practice for the launch of a new Silicon Valley office of a full service national firm

Litigation

Represented a range of clients in IP and other matters in California, including (clients underlined) Seoul Laser Dieboard System Co. LTD. v. Serviform S.L.R., Carton Craft Supply, Inc., Die Supply Guys, Inc. (represented defendants in a 7-patent case regarding die-making technology), Enel Company, LLC v. David R. Schaefer, Rightline Gear, Inc., Cabela’s, Incorporated, Sportman’s Warehouse (obtained summary judgment of laches for manufacturer and distributor defendants in patent case involving portable temporary shelters).

Transactions

Advised on due diligence, settlements and licensing matters, including client NCR’s $1.65B acquisition of Digital Insight.

Administration & Management

Served as loss prevention partner for the office, working with the firm’s general counsel and insurance carrier (ALAS) on various corporate matters for the firm.

Jones Day, Silicon Valley, CA. 2006-2012 – Partner, Intellectual Property

Recruited as the first partner in the Silicon Valley office with hands-on technology background and deep IP experience

Transactions

Directed teams of associates and paralegals responsible for complex IP due diligence in a number of corporate transactions, including SAP’s acquisition of Business Objects, valued at $5.6B.

Licensing & Contracts

Negotiated numerous licenses, joint development agreements, and settlement agreements for global clients including On Semiconductor, Xilinx, and SAP.

Strategic Enforcement and Dispute Resolution

Led various litigation teams in various cases, with responsibility for every aspect of the case including strategic planning, selecting and managing the team, budgeting, and day-to-day execution, from inception through trial or settlement. Served as specialist second chair trial attorney responsible for technical evidence, witnesses, and experts. Participated in a number of competitive presentations that resulted in major cases for the firm. Cases and clients (underlined) include: ON Semiconductor v. Samsung (Semiconductor and process technologies), Agere v. Xilinx, Inc. and LSI v. Xilinx, Inc. (FPGA, process and software technologies), Network-1 v. Extreme Networks (Power over Ethernet-PoE), Xilinx, Inc. v. Intellectual Ventures (FPGA semiconductor and software), American Honda Motor Co., Inc. v. The Coast Distribution System, Inc. (portable generators), Nordic Naturals, Inc. v. J.R. Carlson Laboratories, Inc. (flavored fish oil capsules), Diagnostic Systems Corp. v. SAP and Business Objects (enterprise management software).

Administration & Management

Served on the Silicon Valley recruiting committee and as the office’s Pro Bono partner; part of the team that received the Northern District Judicial Conference’s Public Service award for our annual community service project, Law Day, which also earned recognition as an innovative program from the Financial Times in December 2010.

McDermott Will & Emery, Palo Alto, CA. 2001-2005 – Partner, Intellectual Property

Recruited to join the firm as partner

Transactions

Advised clients on licensing and assisted with negotiations and corporate transactions involving IP issues.

Licensing & Contracts

Advised clients on, and negotiated complex licensing matters and disputes, with and without resort to litigation.

Strategic Enforcement and Dispute Resolution

Represented clients in Intellectual Property cases with responsibility for evaluation of the claims, strategic planning, budgeting and daily management of the cases, as well as direct involvement in depositions, hearings, trials and settlement negotiations. Cases and clients (underlined) include Silicon Image v. Genesis Microchip (high-speed serial digital communications transceivers), Lucent v. Extreme Networks (Gigabit Ethernet networking systems), Logitech (computer accessories), Intergraph v. HP (highly scalable multiprocessors), and Broadcom v. Intel (networking systems).

Wilson Sonsini Goodrich & Rosati, Palo Alto, CA. 1995-2001 – Associate, Intellectual Property

Recruited from the software industry

Represented clients in intellectual property matters including counseling, litigation, licensing negotiations, and patent prosecution. Clients include Autodesk, Broadcom, Novadigm, MicroLinear, Network Associates, VIA Technologies (Taiwan and U.S.), AutoDesk, Resonate, BAAN, and Hasbro.

Enforcement and Dispute Resolution clients (underlined) include Intel v. VIA Technologies (chipset-related technology), Intel v. Broadcom (video compression chipset technology), Novadigm v. Marimba (Internet software distribution technology), Pioneer Magnetics v. MicroLinear (power regulator technology), Trend v. Network Associates (network virus scanning firewall technology), and Resonate v. Alteon (Internet load balancing technology).

TECHNICAL EMPLOYMENT

StenoCAT/G.S.C., Irvine, CA. 1985-1995 - Vice President, Research and Development, Legal Information Systems Group

Full featured CAT software provider of StenoCAT-court reporting, TrialBook-wireless streaming, iStenoPad-writer app for Apple iPad, iStenoPhone-writer app for Apple iPhone & OPEN Write-machine translation software for Windows

Rose from Programmer to VP of R&D, developing and supporting real-time translation and information management software.

Phoenix Data Systems, Albany, NY. 1983-1985 - Systems and Application Programmer

Boutique provider of computer aided design and verification software for IC design, and visualization systems for three-dimensional medical scanner data, such as cat scans

Developed, implemented and tested a waveform analysis package covering the graphic interface and BUS management routines in an integrated CADD workstation; contributed 80,000 lines of C code, developed under UNIX and VMS on a DEC VAX 11-780.

Designed and implemented release and version control systems for a CADD package supported under several operating systems.

EDUCATION & HONORS

Western State University College of Law, J.D. magna cum laude, 1994; Salutatorian

Managing Editor, Western State College of Law Consumer Law Journal

Vice President, Western State College of Law Intellectual Property Law Association

North Carolina State University, B.S., Computer Science, 1983; Founder and Vice President of CLU, an advocacy organization for Computer Science students, and co-author of Introduction to WYLBUR, a real-time operating system deployed at North Carolina State University

ADMISSIONS

State Bar of California

U.S. Patent and Trademark Office

U.S. Court of Appeals

Federal Court in the Eastern District of Texas

PERSONAL

Licensed Private Pilot and Skydiver, Certified SCUBA diver, avid traveler, photographer, and travel blogger

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