Malcolm Duncan Email & Phone Number

Menlo Park, Ca

SRI, a world-renown research center, works primarily in advanced technology and systems, biosciences, computing, and education. Working with government and industry partners, SRI brings its innovations to the marketplace through technology licensing, spin-off ventures and new product solutions.• Strategically grew several patent portfolios for commercialization, resulting in licensing deals to companies including Samsung (mobile biometrics), venture spin-offs (including GrabIT) and… Show more SRI, a world-renown research center, works primarily in advanced technology and systems, biosciences, computing, and education. Working with government and industry partners, SRI brings its innovations to the marketplace through technology licensing, spin-off ventures and new product solutions.• Strategically grew several patent portfolios for commercialization, resulting in licensing deals to companies including Samsung (mobile biometrics), venture spin-offs (including GrabIT) and others • Initiated and executed multi-million dollar patent sales. Aligned IP strategies to anticipate future licensing and sale opportunities• Managed patent portfolios protecting important SRI initiatives in diverse fields such as robotics, imagers, telecommunications, software, and sensors• Selected and supervised outside prosecution counsel. Negotiated fee arrangements and implemented billing policies to improve budget projections Show less

New York

• Led a broad range of patent and other IP litigations - from pre-trial to trial to appellate. Also litigated general commercial, real estate, and criminal actions among others. Example successes: - Electrolux Home Care Products, Inc. v. Black & Decker, Inc. (07 CV 1233, C.D. Ill.); - Sprint Communications Co. v. Vonage Am., Inc. and theglobe.com, Inc. (05-2433, D. Kan.); - Technology Patents, LLC v. Deutsche Telekom AG et al. (07 CV 3012, D. Md.); - U.S. v. Tureseo, 566… Show more • Led a broad range of patent and other IP litigations - from pre-trial to trial to appellate. Also litigated general commercial, real estate, and criminal actions among others. Example successes: - Electrolux Home Care Products, Inc. v. Black & Decker, Inc. (07 CV 1233, C.D. Ill.); - Sprint Communications Co. v. Vonage Am., Inc. and theglobe.com, Inc. (05-2433, D. Kan.); - Technology Patents, LLC v. Deutsche Telekom AG et al. (07 CV 3012, D. Md.); - U.S. v. Tureseo, 566 F.3d 77 (2d Cir. 2009). [Argued appeal in Second Circuit’s test case concerning identity fraud]; - Sutherland v. NY City Hous. Dev. Corp. and AMP Apartments, Inc. (NYSlipOp 51354, NY Sup. Ct. 2008).• Managed attorney teams in commercial and patent litigations, due diligence reviews, and compliance issues• Responsible for resolving due diligence issues for numerous mergers and IPOs valued at $100m+ Show less

New York

• Patent litigation from pre-trial motions to appellate: - Minebea Co. Ltd. v. Think Outside, Inc. (01 CV 0771, S.D. Cal.); - Minebea Co. Ltd. v. Think Outside, Inc. (05-1201, Fed. Cir.) [appeal on separate issue]• Trained junior associates in patent drafting and prosecution • Developed and counseled own technology start-up clients

Chicago

• Prepared patent applications and opinions on a broad range of technologies. Clients included: Motorola; Infineon; Tyco; Heidelberg Digital; University of Chicago• Successful Patent and Trademark litigation: - NEXGEN Solutions, Inc. v. NexGen Solutions Corp. (02 CV 736, D. Md.); - Motorola, Inc. v. Vosi Tech., Inc. (01 CV 4182, N.D. Ill.)• Developed own patent and trademark clients with litigation and prosecution issues

Chicago

Prepared patent applications and opinions on a broad range of technologies. Clients included: 3Com; Sprint; Heidelberg Digital

Iowa City

• Researching particle accelerator physics and searches for the Higgs boson at the Supercollider (SSC) and Large Hadron Collider (LHC)• Teaching graduate and undergraduate physics courses; advising graduate students• Author of 35 scientific papers published in the leading nuclear physics journals• Preceded by two-year CERN Fellowship at CERN in Geneva, Switzerland and at research fellowships in leading US universities

J.D., Law

Intellectual Property Moot Court President, University of Minnesota Student Intellectual Property Law Association

D.Phil., Theoretical Physics

James Chadwick Award, International School of Subnuclear Physics

B.Sc. Summa Cum Laude, Mathematical Physics

Carnegie Award Tait Medal, Robert Schlapp Award