Played leading role in pre- and post-acquisition activities of Lumileds by Private Equity, including negotiating assignment of IP assets, licensing of IP retained by Philips, negotiating post-acquisition Temporary Services Agreements, creating patent/trademark docketing system to manage assigned IP assets, developing post-acquisition IP policies, procedures and filing plans, and hiring of IP counsel and paralegals.Developed IP Monetization Plan to monetize patent portfolio comprising over 5000 patents.and patent applications worldwide, including identifying licensing targets, mining patent portfolio, performing reverse-engineering analysis, mapping patents to accused products, and developing licensing/litigation plans to support underling financial models and business cases.Negotiated patent cross-licenses with multi-billion dollar US and international licensing partners.Drafted and negotiated agreements, and counseled business clients, relating to joint ventures, strategic alliances, M&A, joint/mutual development, and Government-funded R&D contracts.Managed offensive and defensive litigation relating to patent infringement, trade secret misappropriation, and false advertising class action matters.Currently managing a team of six (6) IP attorneys, patent agents and paralegals with respect to all IP-related matters worldwide.

Counseled business clients with respect to "connected lighting" / IoT issues, including 3G/4G, IEEE 802.15 (Bluetooth Low Energy), and Zigbee wireless connectivity, Android/iOS compatibility, user interface and control protocols, third party patent assertions, and product clearance studies.Lead counsel managing patent litigation and non-litigation patent assertion matters reported to Board of Directors on a quarterly basis.Licensing counsel actively involved in IP monetization activities with respect to solid state lighting products and components.

Counseled health care clients with respect to intellectual property related matters relating to Oral Health Care and 3D UltraSound products, including offensive patent assertions, product development and patent filing strategies to maintain market exclusivity, while minimizing risk of third party IP.Conducted M&A activities and post-merger integration with respect to strategic acquisitions of high technology companies.

Counseled consumer electronics clients with respect to IP-related agreements and activities with respect to High-Definition Television, digital cable set-top-boxes, CD/DVD/Blu-Ray players and associated storage media, computer storage devices, on-demand streaming and downloading applications, Android/iOS compatible devices and software applications, and accessory and peripheral devices. Lead IP negotiator for software/IP-related agreements between Philips and Microsoft.Managed offensive and defensive patent litigation and non-litigation assertions , including related patent litigation in Germany, France, United Kingdom, The Netherlands, and Korea, involving audio/video/still image CODECs, optical storage devices, analog and digital playback devices, digital rights management, multimedia application processors, wireless communication, user interfaces, and LCD display technology.Represented Philips in connection with Patent Pool Licensing Programs, particularly in the wireless communications field.

Drafted and negotiated wide variety of intellectual property related agreements, including patent licenses/cross-licenses, semiconductor IC core licenses, software licenses, open source licenses, joint development, design/consulting services, ASIC design/manufacturing, contract manufacturing, domestic and international distribution/OEM, purchase and supply, and marketing alliance. Managed outside counsel in connection with defensive patent litigation, patent preparation and prosecution, and merger/acquisition of high technology companies. Counseled semiconductor clients with respect to intellectual property issues related to cellular / wireless chipsets (including GSM, EDGE, 3G, CDMA, and IEEE 802.11 Wi-Fi), multi-media processors, microcontrollers, multi-market ICs and mixed signal devices. Represented Philips in connection with various standards related bodies/activities, including drafting/negotiating formation documents and IP policies.

Drafted and negotiated wide variety of intellectual property related agreements, including patent licenses/cross-licenses, IC core licenses, architecture licenses, library usage, software licenses, software development kits, application service provider (SaaS), web hosting / cloud-based services, joint development, design/consulting services, domestic and international distribution/OEM, and purchase and supply. Drafted IP related agreements and performed IP due diligence in connection with merger, acquisition and venture capital financing of high technology companies. Counseled clients in connection with asserted patent infringement claims, design around activities, product clearance studies and patent portfolio/IP program development.

Prepared and prosecuted patent applications before the USPTO, EPO and PCT in the technological arts of wireless/cellular communication systems, computer and networking system hardware and software, microprocessor architectures and semiconductor devices. Primary clients included Ericsson, Compaq, DEC and Dallas Semiconductor. Played active role in preparation of claim charts, claim analysis and discovery in connection with patent infringement litigation.