In today's IP centric world, many types of technology and commercial agreements, be it a joint development agreement, trial agreement, sales/purchase agreement or supply agreement, are often held up because of IP and related provisions such as indemnity. As a former inhouse counsel and business litigator, Ken has a lot of experience negotiating and litigating these issues and will help you navigate them, whether assessing IP/litigation risk of a particular provision or drafting and negotiating the entire agreement.
Ken has also personally negotiated technology-driven M&A deals in which he helped clients to acquire technology and patent assets. In one deal, for example, he negotiated acquisition of a startup with technology that allows a high-resolution display to be used in a battery-powered device, which was later incorporated into hundreds of millions of smartphones sold world-wide. In another deal, he led IP negotiation in the acquisition of a Fortune 500 company that enabled his client to enter a new market. With his extensive experience, Ken can help you whether you are acquiring or being acquired.
Ken takes a special interest and pride in helping out startup clients.
Ken has decades of law firm and inhouse experience negotiating patent licenses, ranging from a single patent deal to some of the largest deal involving tens of thousands of patents worth billions of dollars. These include exclusive and nonexclusive licenses, patent cross licenses, acquisition and sales of patent assets, collaboration agreements, business unit spin-offs, and university research agreements. His accomplishment includes negotiating three of the largest patent cross licenses in the tech industry.
Ken has deep experience in the telecommunications, wireless, display, semiconductors and IoT industries and has keen appreciation for the complex nature of patent licensing. For every transaction matter, Ken will take time to understand your business goals and interests and work with you to develop negotiation/licensing strategies that will meet your business objectives and reflect the reality of the market place. Ken will conduct negotiation with the other side or act as behind-the-scenes counselor should you wish to conduct the negotiation yourself.
In addition, Ken offers a retainer arrangement to be your “on-demand” advisor on all licensing matters.
Ken has been deeply involved with assertion of and defense against standard essential patents in the telecom industries, both in negotiation, arbitration and litigation context. He has also negotiated IP policies and corporate governance issues during the formation of several standard setting organizations in the telecom and consumer electronics industries. Ken has spoken extensively regarding SEPs and FRAND issues in industry conferences in US and Europe. If you are negotiating a license with a SEP holder, or in a dispute, Ken can help you with his experience and knowledge in this area.
Ken has extensively litigated technology matters as a litigation partner at leading US law firms. He defended companies in US district courts and ITC and successfully asserted IP rights on behalf of clients in US District Court and ITC, where he obtained an exclusion order on behalf of a software client. As inhouse counsel, Ken was intimately involved with "the patent case of the century" that engendered 50 lawsuits in 10 countries and was instrumental in settling the dispute.
Based on his litigation experience as both outside counsel and inhouse counsel, Ken can help you select and manage outside law firms. He has your business objectives in mind, not litigation for the sake of litigation, and will help you formulate a litigation strategy that will meet your business objectives, be it a complete vindication or efficient settlement. He will help you manage the litigation budget, assess the risk at different stages of the litigation and be the interface between you and the outside counsel.