Representative Matters: 

Served as patent law expert witness in Data Excelleration Systems v. Imperial Technology, Inc.

Served as patent law expert witness in White v. Seagate Technologies, Inc.

Provided litigation support in Hynix Semiconductor, Inc. v. Toshiba, et al.

Drafted a set of intellectual property license agreements for a major power IC company to set up offshore subsidiaries for favorable international tax planning purposes.

Provided a complex set of intellectual property agreements in the formation of a startup involving intellectual property waivers due to the founders being concurrently employed by both the startup and by a company other than the startup. 

Drafted validity opinions relating to patents obtained by a licensee that misappropriated a licensor’s licensed technology.

Drafted and negotiated a complex intellectual property assignment and license-back agreement for a client who provides application specific and general purpose mixed-signal products, for divestiture of a product line where the divested IP was required for use in the client’s other product lines.

Drafted and negotiated a complex set of agreements for a Direct Response Television (DRTV) infomercial campaign including the following agreements: on-camera talent agreement, infomercial development and hosting agreement, website development, media services agreement for purchase of television time, telemarketer agreement, warehousing and fulfillment agreement; and providing attendant advice on credit card authorization and Federal Trade Commission advertising substantiation issues. 

Provided intellectual property due diligence in acquisition of offshore software technologies by a major U.S. consulting company.

Admissions:

• California
• New York
• US Patent & Trademark Office
• United States Court of Appeals for the Ninth Circuit
• United States District Court for the Northern District of California