Mitchell Herbert Email & Phone Number

Executive-level patent strategist specializing in patent litigation and licensing, including associated strategic prosecution, with key experience in the M&A / private equity context.Directs global litigation efforts and licensing negotiations, driving resulting agreements. Successful execution of those responsibilities results from providing consistent, actionable counseling on complex, high-stakes IP issues to executive leadership. Years of lead in-house responsibility for all offensive and defensive patent litigation matters for private and publicly-traded institutions, including results-oriented, strategic direction of all associated outside counsel. Litigation direction includes developing and driving strategy for Section 337 investigations, District Court litigation, IPR management, and ADR forums. Proven track record of effective, programmatic policing and enforcement of patent license agreements via mediation and arbitration. Leads post-grant proceedings, focusing on Inter Partes Review & Ex Parte Reexamination. Deep experience analyzing and valuing patent acquisition & divestment opportunities, and providing related business and legal counsel.Extensive private practice patent litigation experience covers a variety of technologies including software (e.g., image processing, video analytics, machine learning, object recognition & tracking, database management), and hardware. Considerable patent prosecution experience in both software and hardware, including video analytics, machine learning, convolutional neural networks (CNN), Internet of Things (IoT), network devices, consumer electronics, bandwidth modulation / smart encoding, mechanical devices, medical devices, and business methods. Delivers value-oriented management of outside counsel prep & pros, employing comprehensive, strategic prosecution strategies to maximize the value of patent portfolios. Registered Patent Attorney & admitted to practice in Massachusetts.

Listed skills include Intellectual Property, Patent Prosecution, Patents, Patent Litigation, and 31 others.