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Sales Company

Location:
United States
Posted:
March 28, 2014

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Resume:

JOIE LÊ

Mobile: 408-***-****

******@*****.***

http://www.linkedin.com/in/joiele

Senior-level attorney with deep and diverse in-house experience in high tech global corporations handling intellectual

property (including patent portfolio development and management, trademarks, copyrights, trade secrets and open

souce), licensing (software/hardware, SaaS, and content), compliance, privacy, HR, IP and employment litigation, real

estate and M&A matters. A demonstrable history of achievements, able to balance business needs with legal concerns.

Drafted and negotiated hundreds of complex licensing deals with material impact on bottom line. The highest

compliment given to an in-house counsel: “A consummate business attorney, an outstanding executive who effectively

gets things done, diplomatically, by getting buy-in from key stakeholders, while protecting the company’s short and long

term interests. A tough thing to do, day in and day out, unless you have judgment, composure, humor, smarts and a

strong sense of fairness and integrity. And Joie has them in spades. You just know you’re in good hands. She knows

her stuff and her work ethic is something else. Tough when she has to be but such a pleasure to work with.”

PROFESSIONAL EXPERIENCE

PARAGON LEGAL GROUP, PC 2013 - current

San Francisco-based alternative law firm providing highly experienced attorneys for on-site legal support to in-house

legal departments.

Senior/GC-level assignments, responsible for technology transactions, litigation, H&R and M&A matters. Representative

clients: Aconex Ltd. (SaaS) and Tivo, Inc. (marketing, content, ad/media analytics and sales).

SAMSUNG ELECTRONICS US R&D CENTER, AND MEDIA SOLUTIONS CENTER AMERICA (MSCA) 2010 - 2013

R&D Center is an 800+-employee U.S. subsidiary of Samsung Electronics Corporation working on cutting edge

technologies. Media Center is a 300+-employee division established in San Jose, CA to create media content – films,

TV, music, ebooks, services and apps - under “Samsung Media Hub” for Samsung mobile devices.

General Counsel

Joined Samsung when R&D Center was hardware-focused. Integral role in R&D Center’s evolution to software,

including mobile, user experience and content. Built the Legal Department from the ground up, and rebuilt the Patent

Department. Created foundational structures and processes, with hands on responsibility for both departments. Day-

to-day legal support and guidance to 18 Labs, each operating as a separate mini start-up focused on a different

technology area, including mobile, telecommunication, standards, media, smart TV, as well as the Media Center,

responsible for content for Samsung’s mobile devices . W orked closely with executives to execute global business

plans, balancing business and legal risk assessments with strategic goals on a wide variety of complex matters.

Negotiated inbound/outbound licenses. Handled corporate compliance, HR, real estate, litigation and M&A activities.

Hired and managed outside counsel, set parameters of engagement and manage under budget. Negotiated with major

studios in worldwide content deals (films and TV) and major publishing houses for ebooks and magazines. Primary role

in launch of services and apps for Samsung devices, including leading role in adoption of privacy policy and end user

license terms.

Back-to-back annual performance evaluation rating of “1” (highest) given by president, in recognition of outstanding

support and management of legal and IP functions, with direct impact on HQ business results. In three years, the

company grew from 150 to 1,200 employees, expanding from five to 18 Labs.

Built Legal Department from the ground up. Implemented legal structures, processes and wrote every template

being used by the company. Drafted and negotiated complex inbound and outbound licensing agreements.

Rebuilt Patent Department, which doubled in size over three years. Integral role in strategic focus on core filings

and portfolio management. Filings covered diverse areas of technologies, including standards.

Selected and managed outside counsel. Renegotiated patent law firms from hourly fees to fixed fees, saving over

$1.5M annually while setting standards for excellence in client service and quality filings.

W orked closely with HR on employment matters, compliance, M&A acqui -hires and integration, and litigation.

Two-year efforts to get buy-in from Samsung HQ to change the company’s patent award program, making it more

competitive with Silicon Valley companies.

Created and implemented the company’s first-ever export program.

Created and implemented the company’s first-ever pre-publication process to address potential export and

patentability issues.

Negotiated and closed in two months, the first-ever build-to-suit campus (Mountain View), working with multiple

Joie Lê/page 2

parties across multiple time zones: Mountain View City Council, developer, general contractor, broker, Samsung

HQ (Korea) and NAHQ (East Coast).

Negotiated and executed over 20 commercial leases, located in Cambridge, MA; New York City, NY, Irvine, San

Diego; San Francisco, Menlo Park, Palo Alto and San Jose, CA.

Integral role in Samsung HQ M&A activities, including the sale of the company’s hard disc drive division to Seagate

in 2012, and the acquisition of five companies in three years.

Created the first of its kind, year-round two-academic session internship programs, in both the Patent and Legal

Departments. Internship program includes focus on development of soft skills, effective networking and mentoring.

Implemented Company’s first regular volunteer program, giving back to the community while helping to promote

Samsung’s branding.

TELENAV, INC. 2008 - 2009

A 500-employee, then-privately held company located in Sunnyvale, CA, offering a GPS solution through major wireless

carriers, including AT&T, Sprint, T-Mobile, Rogers, Bell Mobility, China Mobile and Telcel.

General Counsel

Selected and worked with outside counsel in the year-long process of S-1 filing and preparing company to go

public.

Hired, negotiated and managed US and foreign outside counsel, saving company over $1M in legal fees.

Saved $10M in litigation costs by persuading management on selection of new counsel and adoption of litigation

strategy.

Drafted and negotiated global inbound/outbound software, hardware and service agreements, generating over

$50M in annual revenue.

On arrival, drafted and negotiated company’s first agreement for auto industry, subsequently used as the template

for agreements with auto industry partners.

Advised senior management on strategies to minimize and manage risks while meeting business goals.

W orked with engineering, product marketing and patent counsel to develop and grow patent portfolio.

Developed and implemented procedures for protection and proper handling of confidential information, trade

secrets and IP assets, as well as consumer privacy rights, use of open source and M&A due diligence.

Review marketing materials, press releases and Internet advertising to ensure legal compliance.

Organized and attended Board meetings; maintained Board minutes and corporate records; and communicated

regularly with Board members on issues requiring Board input and approval.

Advised and provided HR with oversight of employment and immigration matters.

KINETO WIRELESS, INC. 2005 - 2008

A 150+-employee privately held, venture-backed company located in Milpitas, CA, offering fixed -mobile convergence

(FMC) solutions to extend mobile voice, data and IMS service over broadband access networks.

Associate General Counsel (de facto General Counsel)

Proposed new IP strategy to Board members and C-level executives, and increased patent portfolio, which grew

from 1 to 15 issued patents during tenure, and over 100 in the pipeline by implementing strategy.

Developed and implemented overall IP strategy by working closely with engineers and product marketing.

Negotiated complex technology licenses with multinational companies such as Samsung, HTC and NEC.

Developed and implemented processes that guided engineers in working with standards bodies.

Developed and implemented legal processes for M&A activities, including programs for export compliance and IP

protection; provided training to sales, marketing and engineers.

Provided review and oversight of employment and immigration matters.

HITACHI DATA SYSTEMS CORPORATION 2003 - 2005

A 4,000+-employee subsidiary of Hitachi, Ltd., based in Santa Clara, CA, offering storage infrastructure solutions,

storage management software and storage consulting services indirect and indirect channels in over 170 countries.

Senior IP Counsel

Appointed lead attorney for then-most strategically important multi-million dollar IP asset purchase and acquisition

hire; drafted and successfully negotiated agreement in one month (where strategic agreements normally requi red at

least two quarters), working with cross-functional teams and negotiating with a third party strategic partner as well

as with parent company based in Japan.

Joie Lê/page 3

Awarded company’s “Hats Off” award for outstanding contribution in the first quarter of joining company.

Implemented processes to significantly reduce response time and improve legal service to internal clients.

Provided legal training to various business units to substantially reduce litigation risk to company.

Managed company’s extensive global trademark portfolio.

Assumed responsibility for all employment -related disputes and litigation, and implemented processes to improve

oversight and control on litigation costs.

Successfully negotiated settlement of all assigned employment-related claims.

SIMPLEX SOLUTIONS, INC. (acquired by CADENCE DESIGN SYSTEMS, INC. in 2002) 2001 - 2003

A 300+-employee, privately held provider of software and services for integrated circuit design and verification

based in Sunnyvale, CA, which went public in May 2001 (the most successful IPO of that year).

Director, IP and Legal Affairs

Integral role in company’s IPO in 2001 and successful merger with Cadence in 2002.

Significantly reduced outside counsel legal fees by closing all licensing deals in -house, saving company $500,000

during the first year as the sole in-house counsel.

Managed patent infringement litigation, working closely with outside counsel and senior management to achieve

outstanding result by settling case with minimal payment to the other party, without affecting company’s ability to go

public as scheduled.

Developed and implemented internal processes to shorten sales cycles by 30% and improve delivery of legal

services, resulting in superior cross-functional team productivity and increased revenues.

W orked closely with finance department to structure agreements which ensured compliance with revenue

recognition rules.

AVANT! CORPORATION (acquired by SYNOPSYS, INC. in 2001) 1999 - 2001

A 2,000+-employee public company based in Fremont, CA, which d eveloped and supported integrated circuit design

automation software for microprocessors, microcontrollers, application -specific standard products and complex ASICs.

Head of Licensing (promoted from Corporate Counsel)

Recognized for outstanding contribution in successfully negotiating and closing deals with recognized

revenues in excess of $80M per quarter.

Drafted, reviewed and negotiated technology licensing agreements, including OEM, VPA, distributor,

cross-license, joint development, strategic alliance and partnership agreements.

Trained and managed four junior attorneys and three support staff.

Handled employee issues, litigation support and real estate matters.

Built the licensing team from the ground up, created and implemented communication channels between

legal and multiple corporate divisions, including sales, finance, engineering, maintenance renewals, and

order processing, resulting in shortened sales cycles by 33% and reducing outside legal costs by 100%.

PRIVATE PRACTICE 1994 - 1998

Civil litigation, dispute resolutions/mediation and contract drafting/negotiations in business, employment, real

estate, and IP matters.

EDUCATION

J.D., 1994, Santa Clara University, School of Law, Santa Clara, Calif ornia

Awarded California Graduate Fellowship 1991 – 1994

Awarded Santa Clara University, School of Law, Faculty Scholarship 1991 – 1994

B.A., Humanities/Language, Santa Clara University, Santa Clara, California

PROFESSIONAL MEMBERSHIP

State Bar of California, Member • Admitted to United States District Court, Northern California

OTHER QUALIFICATIONS, BOARD MEMBERSHIP & VOLUNTEER WORK

Multilingual: Vietnamese, Cantonese, French and English

Board member, Family Violence Appellate Project (FVAP)

Selected to attend Samsung’s Executive Leadership Training at Princeton (2011) and Harvard University

(2012)

Advanced credentials, multi-party disputes and mediation, Office of Human Relations, Santa Clara County

Court-appointed child advocate, Child Advocates of Silicon Valley



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