Broad and Diverse IP Legal and IP Management Experience

• LL.B. George Washington University Law School

  
  

• More than 35 years experience in all phases of IP law and practice
  
  
  
• Seven years as successful IP consultant
  
  
  
• 15 years as Chief IP Counsel for Zenith Electronics Corporation
  Responsible for all IP affairs, including:
  • Worldwide acquisition, maintenance and enforcement of patents, trademarks, copyrights and trade secret rights;
  • Conducting and supervising patent and trademark prosecution;
  • Directing IP litigation;
  • Initiating and implementing patent, trademark and technology licensing programs;
  • Preparing diverse licensing and other technology-related agreements.

• 14+ years with other corporations and law firms:
  • General Electric Company (Washington, DC)
  • Polaroid Corporation (Cambridge, MA)
  • Technical Operations, Inc. (Burlington, MA)
  • Marshall Gerstein & Borun (Chicago)
  • Rosen & Steinhilper (Chestnut Hill, MA)

• 3+ years as Arthur Andersen’s Director of IP Strategic Services

• This extraordinary scope and developed skill set renders me uniquely qualified to serve clients competently in:
  • IP strategy development and implementation
  • Integrating IP and business strategies
  • IP portfolio identification, acquisition, development, & exploitation
  • IP outsourcing … to whom, of what, controls, etc.
  • Use of IP to support financing
  • Use of IP to drive stakeholder value
  • Training of client IP personnel
  • Preparing and negotiating licenses and other IP-related agreements
  • Supervising preparation and prosecution of patents and other IP grants
  • Framing and resolution of infringement and other IP disputes
  • Interfacing on IP issues with customers and suppliers
  • Establishing internal processes for managing IP assets
  • Use of competitive intelligence in the IP arena
  • IP aspects of product development
  • Brand and web name creation and management
  • IP aspects of mergers & acquisitions
  • Internet and E-Business

Bottom Line Orientation

• $300 Million Patents We Didn’t Know We Had  In 1992 while General IP Counsel for Zenith Electronics we discovered in a routine audit four “cable ready” tuner patents infringed by every TV and VCR sold in the U.S. The licensing program I established generated more than $300 million --- far more than Zenith’s total profit from all consumer electronic and computer operations over the 24 years of my employment.
• Have always viewed IP assets not just as legal rights, but primarily as powerful tools adaptable in a myriad of ways to serve business strategy and objectives.

Business Focus – Small, Mid-cap, and Large Companies

• From individuals to Fortune 50
• Understand the corporate side; I lived there for 30 years
• Founding director and IP legal counsel of IQV Corporation, developer of Gateway’s “Handbook” - - the first sub-three-pound laptop computer
• Founded and managed successful publishing company, Patent Data Publications
• Have always enjoyed and excelled at interfacing with management on IP issues
• One of my chief strengths is being able to bring IP assets into the business world in a way which helps management understand the importance of IP assets as business drivers and weapons

Broad Technical Scope

• Electrical engineering education (BSEE Penn State 1961)
• Dozens of diverse technologies used while working with clients

Intellectual Property Strategy and Management

• Director of IP Strategic Services (Arthur Andersen – 3 years)
• General IP Counsel (Zenith Electronics)
• Various other positions

Memberships & Honors

• Member of the bars of the State of Illinois and the State of Massachusetts
• Member of the bar of the United States Patent and Trademark Office
• First in academic standing in high school and college freshman class
• Eta Kappa Nu electrical engineering honorary
• Sigma Tau general engineering honorary