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Partner, Litigator and IP Portfolio Strategist Resume Example

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PARTNER, LITIGATOR AND IP PORTFOLIO STRATEGIST
Summary

Seasoned intellectual property attorney with over 25 years of experience guiding high tech clients in developing strong intellectual property portfolios, achieving and realizing value through technology licenses and agreements, and defending their patent assets before the Patent Trial and Appeal Board (PTAB) and in federal courts. A unique blend of experienced litigator and patent portfolio strategist, with deep knowledge in both patent law and multiple complex technologies.

Skills
  • Patent portfolio development
  • Freedom-to-operate, validity, and infringement analyses
  • Persuasive writing in briefs, memos, and position papers
  • Oral advocacy and depositions
  • Technology license agreements and contracts
  • Working with business units to identify opportunities
Experience
Partner, Litigator and IP Portfolio Strategist05/1996 to CurrentCompany NameCity, State
  • Represents high tech clients in high-stakes patent and technology disputes across a wide range of technologies. In this capacity, I have performed all roles of litigation teams including arguing Markman hearings and motions in district court, taken or defended over 50 depositions, and argued before the Federal Circuit. Conducted discovery, discovery motions. trade secret litigation
  • Analyzes competitors' IP portfolios to avoid infringement and identify weaknesses in their portfolios; issue freedom-to-operate, validity and infringement analyses and opinions.
  • Conducts due diligence on IP portfolios in support of mergers and acquisitions.
  • Strategically develops and directs patent portfolios in a wide range of technologies in the fields of electrical, mechanical, biomedical devices and computer engineering.
  • Writes and prosecutes patent applications in a variety of disciplines relating to computers and electronics, such as content delivery, digital rights management (DRM) cloud storage, digital authentication, encryption, biometrics, data compression and storage, video games, image processing, virtual and augmented reality, artificial intelligence (AI), blockchain, fintech, digital health, and robotics.
  • Negotiates and drafts settlements, patent and software licenses.
  • Recognized by Intellectual Asset Management as a leading patent litigator and a leading patent prosecutor.
  • Leads the firm's Robotics Group and is a member of the board of editors of the Journal of Robotics, Artificial Intelligence & Law.
  • Manages teams of attorneys and patent legal assistants.
Legal Intern05/1995 to 08/1995Company NameCity, State
  • Legal research and writing in support of non-profit challenger to the government's infamous Clipper Chip proposal for government escrow of keys used by all devices using encryption.
Staff Member01/1994 to 08/1994Company NameCity, State
  • Accounting and fund-raising for non-profit organization providing legal services to LGBT service members and veterans facing harassment or discrimination
Cryptologic Mathematician/Senior Staff Officer07/1982 to 01/1994Company NameCity, State
  • Classified research and development in the fields of encryption, cryptography, applied mathematics, speech, and networking in support of signals intelligence (SIGINT)
  • Researched and developed applied supercomputing, distributed computing, storage and data analysis technologies for use in making and breaking codes and ciphers
  • Supported satellite communications interception activities from U.S. joint services base in Bad Aibling, Germany, a downlink station for geostationary SIGINT satellites, during the Persian Gulf War, including the invasion of Kuwait, by identifying and procuring necessary equipment and briefing civilian dignitaries and military commanders.
  • Member of the team that excavated and analyzed eavesdropping and surveillance systems embedded in the U.S. Embassy building in Moscow.
Education
J.D.1997American University, Washington College of LawCity
M.S.: Operations Research1987George Washington University, TheCity, State
B.S.: Mathematics And Computer Science1982University of Massachusetts AmherstCity, State
Admissions
  • California, D.C., Massachusetts
  • U.S. District Court, Massachusetts, N.D. California, E.D. Texas
  • U.S. Court of Appeals, Federal Circuit, Veterans Claims
  • Supreme Court of the United States
  • U.S. Patent and Trademark Office
Professional Organizations
  • Licensing Executives Society (LES)
    (Co-chair, Data & Cybersecurity Sector, 2018-present)
  • ChIPs—Advancing Women in Technology, Law and Policy
  • American Intellectual Property Law Association (AIPLA)
  • Boston Patent Law Association (BPLA)
  • Silicon Valley Intellectual Property Law Association (SVIPLA)
  • Federal Circuit Bar Association (FCBA)
Publications, Webinars, Speaking Engagements

"Innovation Liberation," Intellectual Property Magazine, September 2020.

"Practical Advice Regarding Due Diligence and Freedom to Operate Opinions," Webinar, June 2020.

"Image, Ownership, and an App Made in St. Petersburg", Intellectual Asset Management, August 2019.

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Resume Overview

School Attended

  • American University, Washington College of Law
  • George Washington University, The
  • University of Massachusetts Amherst

Job Titles Held:

  • Partner, Litigator and IP Portfolio Strategist
  • Legal Intern
  • Staff Member
  • Cryptologic Mathematician/Senior Staff Officer

Degrees

  • J.D. 1997
    M.S. : Operations Research 1987
    B.S. : Mathematics And Computer Science 1982