NPE 2016: The Business of Responsible Licensing

Bruce Berman is CEO of Brody Berman Associates, a management consulting and strategic communications firm that works with innovative businesses and their IP rights to improve understanding and enhance return.

Brody Berman has improved the performance, value and reputation of more than 200 IP holders, portfolios and professionals. Mr Berman has personally counselled numerous IP executives, litigators and private equity investors, as well as their clients, and has helped to influence financial and other stakeholders.

He is author or editor of five books: The Intangible Investor, From Assets to Profits, Making Innovation Pay, From Ideas to Assets and Hidden Value. He also publishes the popular blog IP CloseUp.

Mr Berman is a member of the IP Owners Association, the Licensing Executives Society, the Intellectual Asset Finance Society and the IP Hall of Fame Academy.

David L Cohen is the chief legal and IP officer at Vringo Inc, where he oversees Vringo’s worldwide efforts in IP development and monetisation.

Previously, Mr Cohen was senior litigation counsel at Nokia where, among other duties, he oversaw many of Nokia’s litigations. Mr Cohen has also worked in private practice.

Before practising law, Mr Cohen earned a BA and MA from Johns Hopkins University in the history of science and history; an MPhil in the history and philosophy of science from Cambridge University; an MA (with distinction) in legal and political theory from University College London; and a JD (cum laude) from Northwestern University School of Law. Mr Cohen received the Sara Norton prize from Cambridge University and First Prize in the Lowden-Wigmore Prizes for Legal Scholarship from Northwestern University. Mr Cohen clerked for the Honourable Chief Judge Gregory W Carman of the Court of International Trade.

Doug Croxall is chair and CEO of Marathon Patent Group (OTC: MARA), a patent acquisition and licensing company that serves a wide range of patent holders – from individual inventors to Fortune 500 companies.

Before joining Marathon, Mr Croxall was chair and CEO of LVL Patent Group, a privately owned patent holding company headquartered in Alexandria, Virginia. Under his direction, LVL acquired and successfully enforced multiple portfolios. Before LVL, Mr Croxall was CEO and chair of Firepond (NASDAQ: FIRE) from 2003 to 2008. He acquired Firepond as a public company in 2003 and took it private in an all-cash tender offer. Monetisation of the Firepond patents generated approximately $100 million in licensing revenues.

Earlier in his career, Mr Croxall worked at KPMG and Motorola. He has an MBA from Pepperdine University (1995) and a BA in political science from Purdue University (1991).

Bill Elkington is senior director of IP management at Rockwell Collins. He is responsible for protection, value extraction and rights management strategies concerning Rockwell Collins’s strategic intellectual property. His group works with the company’s business units to value intellectual property and to structure both upstream and downstream licences in the normal course of its business. He has held this position since 2003.

Before joining Rockwell Collins, Mr Elkington was co-founder and vice president of programme management at MeshNetworks, a wireless start-up company established to commercialise ITT’s novel communications technology. MeshNetworks was sold to Motorola in 2004.

Before joining MeshNetworks, Mr Elkington held positions in IP management, technology marketing, strategic and operations planning and programme management in ITT’s aerospace and communications division and in GE’s engineering R&D organisations.

Mr Elkington is a Phi Beta Kappa graduate of the University of Michigan and has advanced degrees from Syracuse University.

Mattia Fogliacco has been chief new business officer of the Sisvel Group since 2014. He joined Sisvel in 2013 as managing director of Sisvel Germany GmbH, a company of the Sisvel Group. Founded in 1982, Sisvel is a world leader in fostering innovation and managing intellectual property. Sisvel identifies, evaluates and maximises the value of IP assets.

Mr Fogliacco has a background in business and innovation management and holds an MSc from Bocconi University and a CEMS master’s in international management. He has published articles on the technology market and IP commercialisation.

Before joining Sisvel, Mr Fogliacco was managing director at iiinnovation SA, a company focused on licensing and IP transactions. He also served as senior international manager at a service provider of Deutsche Bank, managing three IP and innovation investment funds.

Ted Fong joined venture-backed company SiGen in 1999. SiGen was founded in 1997 and has developed unique layer transfer technology for engineered substrate solutions. It has over 150 patents and has licensed its technology in the semiconductor and other markets.

Mr Fong has served as president and CEO of SiGen since 2012. He previously served in other positions, including vice president and chief operating officer and vice president and chief financial officer. Before SiGen, he was president and chief operating officer of Fortrend Engineering, a semiconductor automated wafer-handling equipment company; chief financial officer of NeTpower, a Windows NT high-performance workstation and server company; chief financial officer of Photon Dynamics, a flat-panel display test equipment company; and chief operating officer of Stamping Technology, a semiconductor lead-frame materials company. He received a BS in industrial engineering and operations research and an MBA in finance and operations from the University of California, Berkeley.

Phil Hartstein is president and CEO of Finjan Holdings, Inc. He oversees the direction and management of current assets and future investments and works with the company’s executive management team to execute the shareholders’ vision of a public technology company.

Mr Hartstein has worked in a number of technology and IP-related roles for over a decade. He started with a boutique IP law firm, before working in an in-house IP function for a venture capital-funded start-up and spending time in IP consulting and IP brokerage firms. Before joining Finjan, he spent four years with two groups focused on introducing both private and public market capital, expertise and credibility into licensing and enforcing patent rights on behalf of owners.

Anthony C Hayes is CEO of Spherix Incorporated, a NASDAQ-traded patent commercialisation company. Mr Hayes is an attorney and former partner at an AMLaw 100 firm. He has successfully monetised patents through a wide variety of commercialisation methods, including price arbitrage and litigation-based licensing, and has managed patent infringement litigation. Mr Hayes has also served as litigation adviser to several other patent licensing programmes. Mr Hayes previously co-founded and was managing member of JaNSOME IP Management LLC, an IP monetisation firm.

Mr Hayes has received national recognition during his legal career, including IAM IP Personality 2013, American Board of Trial Advocates Young Lawyer of the Year, City of Columbia ‘20 under 40’ and special recognition by President George W Bush. Mr Hayes earned a JD from Tulane University School of Law and a BA in economics from Mary Washington College in Fredericksburg, Virginia.

Corey Horowitz has been chair and CEO of Network-1 Technologies, Inc (NYSE: NTIP) since December 2003. Network-1 develops, licenses and protects its intellectual property and proprietary technologies. It owns 24 patents covering various telecommunications and data networking technologies, as well as technologies relating to document stream operating systems and the identification of media content. Network-1 currently has 19 licensees to its remote power patent, including licence agreements with Cisco Systems, Extreme Networks, Netgear, Microsemi Corporation, Motorola Solutions, NEC Corporation and Samsung Electronics. Network-1’s remote power patent has generated more than $85 million since licensing activities began in 2004.

Mr Horowitz oversees all development, licensing and enforcement of Network-1’s patent portfolios, including all litigation and US Patent and Trademark Office activities. He is currently overseeing several pending Network-1 litigations against companies including Hewlett-Packard, Avaya, Google and Apple.

Pat Kennedy is a founder and the chair of Cellport Systems. The company was founded in 1993 as an R&D lab focused on wireless to vehicle connectivity technologies. Cellport’s three foundational patent portfolios have been licensed to over 24 vehicle and smartphone producers. In 2014 Cellport filed suits against Toyota and BMW, and in 2016 it will file numerous additional lawsuits against well-known automotive and commercial vehicle producers.

Mr Kennedy is a named inventor on 17 patents and currently leads licensing and divestment projects at Cellport. He has a BA in international economics from the University of Buffalo.

Ron Laurie has worked in Silicon Valley since before it had that name, initially as a missile systems engineer and then as an IP attorney, patent strategist and M&A adviser. In 2004 he launched Inflexion Point Strategy, the first IP investment bank. With offices in Palo Alto, Taiwan and Singapore, Inflexion Point works with technology companies and institutional investors around the world to extract maximum value from strategic patents and related know-how. He is also a director at Wi-LAN, Inc.

Mr Laurie was a founding partner of Skadden Arps’s Silicon Valley office and chaired its IP strategy and transactions practice group. At Skadden, he led IP teams in over $50 billion worth of M&A, joint venture and technology spin-out deals. Previously, he was a founding partner of the Silicon Valley offices of Weil Gotshal and Irell & Manella. He is registered to practise before the US Patent and Trademark Office.

Boyd Lemna is responsible for licensing at Personalized Media Communications, an invention and licensing company. He has worked in the high-tech sector for over 28 years and since 1997 has worked exclusively in the patent licensing field. He has held technical and executive roles at a number of IP strategy firms, including Semiconductor Insights (now TechInsights), Global Intellectual Strategies (acquired by TechPats), OnSwitch Patent Strategies, Alliacense and the Intellectual Property Research Group (of which he was a founding partner).

Mr Lemna has a bachelor’s degree in electrical engineering from Queen’s University (Canada) and a master’s degree in electrical engineering from the Royal Military College (Canada). He is a member of the Licensing Executives Society and has been included on the IAM Strategy 300 list since its inception.

Michael Lennon is a patent litigator, strategic/transactional lawyer and senior partner at Kenyon & Kenyon LLP, a US law firm specialising in intellectual property. Mr Lennon is also chair of Kenyon’s European practice group. Over three-plus decades as a Kenyon partner, Mr Lennon’s practice has focused on complex patent litigation, licensing and business transactions, as well as the development of IP strategies and the acquisition and monetisation of IP rights, in technologies ranging from medical devices to automotive systems. He has acted as trial counsel for numerous multinational technology companies – including Aladdin Knowledge Systems, Ltd; Boston Scientific Corporation; Daimler AG; Intel Corp; Mercedes-Benz USA, LLC; Robert Bosch; and the Volkswagen Group – in more than 100 patent infringement, trade secret, licensing and patent antitrust lawsuits in the US federal district courts, the US International Trade Commission and the Court of Appeals for the Federal Circuit.

Alexander Poltorak is chair and CEO of General Patent Corporation, an IP management firm that focuses on IP strategy, patent licensing and brokerage.

Previously, Dr Poltorak served as president and CEO of Rapitech Systems, Inc, a NASDAQ-listed computer technology company. He has also served as assistant professor of physics at Touro College, assistant professor of biomathematics at Cornell University Medical College, an adjunct professor of physics at the City College of New York and an adjunct professor of law at the Globe Institute for Technology. Dr Poltorak has a PhD in theoretical physics.

Dr Poltorak has co-authored two books, Essentials of Intellectual Property (John Wiley & Sons Publishers, Inc, second edition, 2011) and Essentials of Licensing Intellectual Property (John Wiley & Sons Publishers, Inc, 2004), and contributed a chapter to Making Innovation Pay – Turning IP into Shareholder Value (John Wiley & Sons Publishers, Inc, 2006).

Michael Renaud is an experienced litigator, known for his business-centric approach to identifying and optimising the value of patent assets. He is also known for his ability to develop successful strategies for the monetisation of patent portfolios involving complex technologies – not only through traditional litigation and licensing approaches, but also by creating markets for, and brokering the sale and acquisition of, select patent portfolios.

With an engineering background and nearly 20 years’ experience practising law, Mr Renaud draws on his deep expertise in identifying untapped assets and value drivers in diverse patent portfolios and creating opportunities that bring the right people together. He has helped clients to realise returns of over $400 million in recent years by negotiating deals and successfully prosecuting enforcement actions – both in the federal district courts and before the International Trade Commission.

Mr Renaud is included in the IAM Strategy 300 and the IAM Patent 1000.

Robert Sannicandro was recently hired by Deutsche Bank Group to serve as head of alternative structured credit, where he is primarily responsible for originating new non-traditional asset-backed securities business (both balance sheet and capital markets offerings). Mr Sannicandro joined Deutsche Bank from Bank of America Merrill Lynch, where he held a similar role. In his 12-year career in securitisation, Mr Sannicandro has worked on a broad range of asset classes, including drug royalties, franchise fees, aviation leases, railcars, timeshare loans and small business finance.

Mr Sannicandro graduated from the New York University Stern School of Business in 2002.

Jaime Siegel is CEO of Cerebral Assets, a multi-purpose IP advisory. Cerebral Assets provides global IP strategy consulting, deal facilitations and brokerage services, as well as expert witness services relating to patent and technology licensing and damages. His clients cover the full spectrum – from Fortune Top 10 companies to early stage start-ups. Mr Siegel is also a World Intellectual Property Organisation-designated neutral (mediator/arbitrator).

Mr Siegel has extensive experience in international IP monetisation, enforcement, valuations and strategic acquisitions. Most recently, he was executive vice president of licensing for Acacia Research Group, responsible for the public company’s revenue. Before Acacia, Mr Siegel spent more than 15 years at Sony and served as chair of the board of MPEG LA. He was previously an associate attorney at IP firms Fish & Neave and Kenyon & Kenyon, and an engineer in the aerospace industry.

Jim Skippen is president and CEO of WiLAN and a member of its board of directors. WiLAN is a public company listed on both NASDAQ and the Toronto Stock Exchange that manages many large portfolios of IP assets. Since assuming this position in June 2006, Mr Skippen has led WiLAN’s licensing efforts, which have generated record revenues and patent licensing agreements with over 300 companies – including agreements with technology leaders Broadcom, Fujitsu, Intel, LG, Motorola Mobility, Nokia, Panasonic, BlackBerry and Samsung. A seasoned licensing executive, Mr Skippen has managed several large and complex patent licensing negotiations and litigations. Before joining WiLAN, he worked for two of Canada’s largest law firms and held a number of senior management positions with another leading licensing company.

John Veschi leads Marquis Technologies, a full-service IP and technology consulting business comprised of most of the former Rockstar and Nortel IP teams. During his tenure as chief IP officer and president of Nortel’s IP business, Mr Veschi built and led the team behind the historic Nortel patent auction, and he continued to develop and lead this team as the CEO of Rockstar.

Before joining Nortel, Mr Veschi was chief IP counsel and general manager of the IP business at LSI Corporation, and previously held a similar role at Agere Systems. Earlier in his career, he worked at Lucent Technologies and in private practice with Foley & Lardner. Mr Veschi holds BSEE, MBA and JD degrees. Before his legal career, he was a US Army officer and a manager for a defence contractor.

James Wodarski is an experienced litigator in the Boston-based patent litigation and monetisation team of Mintz Levin. He is a well-respected client relationship manager and legal strategist, and is known for his commercial approach to creating value in patent assets.

Mr Wodarski’s success on behalf of clients comes from his ability to identify the value drivers in a portfolio and communicate the importance of those drivers to competitors, investors, purchasers, licensees, counsel, judges and juries. He has successfully represented both patent owners and alleged infringers in complex negotiations and protracted litigations. Mr Wodarski routinely develops strategies to guide clients through monetisation programmes for portfolios involving a variety of complex technologies, including smartphones, digital imaging software, core processor circuits and telecommunications devices. Several recent monetisation programmes have each returned tens of millions of dollars through litigation, licensing and sale activities.

David Yurkerwich assists clients across the world with the valuation, licensing and sale of technology and intellectual property. For example, he has ongoing responsibility for developing and managing monetisation activities for a group of European-based patent investment funds. Mr Yurkerwich works closely with inventors and attorneys to assess patentability and markets for technologies and conducts market outreach that targets potential partners and licensees. He also structures and oversees joint development, licensing and enforcement activities.

Mr Yurkerwich has completed numerous licensing and sale transactions and provided extensive expert valuation testimony in patent infringement cases, international arbitration and other business disputes involving companies in Asia, Europe, South America and the United States. He is a senior consultant to Charles River Associates and operates from offices in New York, Germany and California. He is a certified public accountant, a certified valuation analyst and is accredited in business valuation.