Enterprise and Institutional Engagements

• Worked with a Fortune 500 company to develop a patent landscape study and filing strategy relating to Internet-of-Things (IoT) and incorporating of data science analytics into the product line.
• Represents multiple universities across the country in matters relating to patent prosecution and litigation, contracts, licensing, and export control. Manages patent families in optics, medical devices, image processing, and other technologies from schools of engineering, medicine, and applied physics.
• Served as senior manager on an extensive patent portfolio (1000+ IP assets) for a client in the plastics and material science industry. Worked with numerous inventors worldwide and with multiple foreign filings contacts to facilitate client business and communication goals.
• Represented an automobile supplies company, assisting in the facilitation of company expansion into a new international market in India. Strategized regarding patent prosecution, including licensing, joint venture agreements, mergers and acquisitions, research agreements, and due diligence. Worked closely with foreign and in-house counsel and inventors and brainstormed and developed the company’s new business venture from the ground up.
• Performed open source audits and coordinated third-party vendors for code review. Conducted in-house seminars and assisted with the development of open-source policies for various corporate entities.

Litigation/Diligence:

• Has been involved in dozens of patent suits, PTAB proceedings, and EPO oppositions.
• Works with S.G.R. Labs to conduct I.P. clearance, I.P. landscapes, and competitive analysis.
• Works closely with testifying and non-testifying subject matter experts in developing non-infringement and invalidity strategies.
• Involved in a challenge to validity for ineligible subject matter under 35 U.S.C. § 101 at the District Court and an appeal to the Federal Circuit.
• Has participated Markman briefing/hearing and expert depositions in various jurisdictions Massachusetts, Colorado, Connecticut, Texas, Pennsylvania, New York, and California.
• Counseled major institutions and universities on IP licensing, export-control, and research-collaboration disputes.
• Represented both emerging and established clients in technology-commercialization and founder-related disputes.
• Successfully represented a former Motown artist in royalty and catalog-sale disputes.
• Represented medtech client in administrative proceeding counter to state agency action.

Regulatory and Fintech Compliance

• Conducted complex regulatory analysis to determine MSB and money-transmission status; represented client in FinCEN meetings and with state examiners.
• Developed Bank Secrecy Act (BSA) / AML policies and procedures for money-services businesses; authored compliance memoranda assessing money-transmission status under FinCEN rules.
• Managed multi-state money-transmitter licensing analyses and represented digital-asset clients in state-level regulatory actions and settlements.
• Coordinated compliance review of various cryptocurrency offerings including collaboration with Securities and Commodities group, BSA/AML, MTL, data privacy, information security, and consumer protection.

Technology & IP Transactions

• Negotiated and drafted hundreds of technology, licensing, and collaboration agreements for various companies across market sectors including medtech, fashion/apparel, AI, energy, manufacturing, and software development.
• Designed and implemented corporate IP and AI audit programs.
• Conducted AI lunch-and-learns for various Universities, Public entities, and private entities.
• Conducted open-source audits, developed compliance frameworks, and led internal education programs on innovation management and IP risk.