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Specialize in IP strategy, litigation, licensing, and technology transfer transactions. Skilled at simplifying and communicating complex issues and providing practical advice. Strong creative and critical thinker. Many years of experience both leading in-house IP departments and as outside counsel handling challenging legal issues. Extensive experience includes: leading and managing offensive and defensive high-stakes IP litigation, managing the creation of large patent portfolios, collaborating across all company departments, assessing third-party IP, and negotiating/drafting important IP license agreements. Diverse litigation experience includes drafting briefs, conducting oral arguments for case dispositive issues, personally testifying as a witness on patent related issues, and working closely with expert witnesses to prepare reports and provide testimony. In addition to providing advice on all of the above, Available to serve as both an expert witness and mock judge on IP matters.Also, self-taught Artificial Intelligence (AI) Prompt Engineer who leverages creativity and extensive practical use of AI tools since the initial release of ChatGPT.
Sfb-Ipstrategy Llc
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OwnerSfb-Ipstrategy LlcChicago, Il, Us
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Chief Executive OfficerSfb-Ipstrategy Llc Nov 2019 - PresentChicagoAvailable to: • Advise partners/clients on IP protection, litigation, and licensing strategies/tactics. • Assist with mock oral arguments and serve as a patent law expert witness for litigation. • Negotiate and draft IP litigation settlements and IP licensing and/or ownership transfer agreements. • Design/refine input prompts to optimize usefulness of Artificial Intelligence (AI) (Prompt Engineer).
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CounselBakerhostetler Oct 2020 - Apr 2022Chicago, Illinois, United States• Represented clients to on patent litigation and licensing related matters.• Provided general IP advice to clients.• Managed multiple IP issues for clients to ensure protection and compliance.• Collaborated with cross-functional teams to strategize and execute legal solutions.• Conducted thorough research and analysis to provide sound legal counsel. -
Evp/Vp, IpTrading Technologies Jan 2002 - Nov 2019ChicagoCreated, led, and managed TT's 6-8 employee in-house IP department. Some highlights of unique in-house experience at privately held TT include: (1) Led worldwide licensing/litigation campaign to enforce/commercialize software related patents; (2) Prevailed in multiple trials/appeals; (3) Managed outside counsel for many matters (e.g., trials, appeals, and CBM proceedings); (4) Led multiple appeals, including one resulting in the first Fed. Cir. decision to find a software/financial related patent § 101 eligible; (5) Lead counsel in many district court proceedings, including successful motion for default judgment/sanctions that resulted in one of the most significant contested default judgments ever in a patent case; (6) Negotiated/drafted numerous complex transactions, including IP acquisitions, patent licenses, and litigation settlements that generated many millions of dollars in royalties; (7) Prosecuted worldwide patent applications to protect software invention referenced above; (8) Created/implemented invention incentive program. Built/managed IP team and instilled protecting IP into company's culture; (9) Oversaw growth of patent portfolio from several applications to over 1,000 patents—a top portfolio in electronic trading. "1790 Analytics" recognized portfolio in 2013 as one of the top portfolios in the financial/investment space (in same league as IBM/JP Morgan), and Chicago Crain's Eureka Index (2013-2015) ranked TT as one of Chicago's most innovative companies based on the patent portfolio; (10) Mentored in-house IP attorneys, patent agents, paralegals, and young outside counsel on all aspects of patent law; (11) Spoke at IP conferences, wrote articles re: IP issues, and worked with groups to impact IP legislation; and (12) Was actively involved in briefing on important patent issues. For example, drafted merits amicus brief in Alice Supreme Court appeal and recruited group of over 40 prominent companies and professors to join brief. -
Consultant And ShareholderIpd Analytics 2000 - 2006Aventura, FlIPD Analytics was a pioneer: forecasting results of material healthcare related patent litigation for the financial/investment industry. I helped with the initial building of the business, providing strategic advice/assistance re: product development and early hires.IPD acquired and commercialized patents. I provided strategic advice/assistance re: IP acquisitions, licensing, and litigation (e.g., industry wide enforcement of patent on an improved cable television distribution system). -
Director Ip Litigation And Licensing3Com Jul 1997 - Jan 2002United StatesExperience at publicly traded 3Com Corporation (after it acquired U.S. Robotics) included: (1) Managing all aspects of high stakes patent litigation; (2) Co-managing large patent portfolio; (3) Integrating the IP functions of the pre-merger companies; (4) Working with high level management to merge the pre-merger innovation incentive programs of 3Com/USR; (5) Advising executives on material IP issues (e.g. transactions and litigation); (6) Managing important IP deals and relationships; and (7) Managing trade secret misappropriation and breach of contract litigation. -
Senior Ip CounselUsrobotics Jul 1996 - Jul 1997United StatesIn-house experience at publicly traded U.S. Robotics ("USR") prior to its acquisition by 3Com Corporation ("3Com") in 1997 included: (1) Launching company’s first effort to build a significant patent portfolio; (2) Developing, implementing, promoting, and educated employees regarding company's first innovation incentive program; (3) Managing high stakes offensive and defensive patent litigation; (4) Advising and working closely with executives on a variety of IP issues (e.g., litigation and transactions); (5) Negotiating/drafting complex IP related transactions; and (6) Educating employees regarding patent issues. -
AssociateBrinks Gilson And Lione Sep 1991 - Jul 1996ChicagoWorked extensively on patent, trademark, copyright and trade secret litigation at both the trial and appellate levels. Litigation activities included taking expert testimony at an ITC trial, preparing expert and fact witnesses for deposition/trial testimony, drafting briefs, conducting discovery (e.g., taking and defending depositions, reviewing and providing document productions, etc.), and conducting legal research. Litigation subject matters included electrical connectors, computer software, mobile radios, exercise equipment, and handheld computer terminals. Experience also included drafting and evaluating licenses, opinion writing, trademark prosecution, and patent prosecution (including computer software related patent applications).
Steve Borsand Skills
Steve Borsand Education Details
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Frequently Asked Questions about Steve Borsand
What company does Steve Borsand work for?
Steve Borsand works for Sfb-Ipstrategy Llc
What is Steve Borsand's role at the current company?
Steve Borsand's current role is Owner.
What is Steve Borsand's email address?
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What is Steve Borsand's direct phone number?
Steve Borsand's direct phone number is +131247*****
What schools did Steve Borsand attend?
Steve Borsand attended Harvard Law School, University Of Michigan.
What skills is Steve Borsand known for?
Steve Borsand has skills like Patent Litigation, Patents, Intellectual Property, Patent Prosecution, Trade Secrets, Litigation, Licensing, Patentability.
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