Michael Lemley Email & Phone Number

Sole proprietorship performing Intellectual Property and business consulting during the periods from February 2006 through August 2007 and October 2010 to present. Consulted on business strategies, marketing, competitive analysis, and pricing models. Represented clients before the U.S. Patent and Trademark Office.• Performed patent survey and opinion work related to WAN accelerator appliances and network traffic control devices. • Worked in-house for Phoenix Technologies (2007) on prosecution matters for company’s new technology initiatives and provided general IP counsel.• Provide counsel to startups in various fields including technology and software, as well as an airline startup, and an advertising and promotions startup.

Acting outside General Counsel for construction management start up focused on green and LEED certified construction, handling all legal matters for venture, including employment, general corporate and business structure, lease transactions, negotiation of construction loan financing, contracts, customer agreements, legal compliance, NDA's, litigation, and advising executive team on same.

Us

Managed and performed all aspects of Intellectual Property practice as sole IP attorney for $1B revenue company, reporting to General Counsel, with responsibility for $2.5M intellectual property budget. * Managed patent prosecution docket overseeing patent agent, patent docket administrator, and outside counsel for company’s diverse product line including Chromatography, Mass Spectroscopy, Nuclear Magnetic Resonance, X-Ray Diffraction, Optical Spectroscopy, Vacuum Technologies, and other research and scientific instruments and consumables. * Directed comprehensive 1500 case company-wide patent portfolio evaluation and review leading to reduction in maintenance costs of patent portfolio without sacrificing strategic protection. * Provided M&A support and due diligence for acquisitions including among others Varian’s April 2008 $37M acquisition of Oxford Diffraction, Ltd. * Responded to outside patent and trademark infringement allegations and counseled management re: same. * Prepared and negotiated company’s IP and other business related agreements, including technology, patent and software licenses, NDAs, reseller agreements, collaborative research agreements, etc. * Successfully negotiated a royalty-free cross license to resolve plaintiff’s action for trademark infringement against Varian in the UK. * Managed patent litigation filed by the State University of New York at Buffalo alleging patent infringement by Varian’s flagship NMR product. * Successfully negotiated a patent cross-license with Varian’s major competitor in the research NMR and MRI industry. * Provided M&A IP support for Agilent Technologies' $1.5B acquisition of Varian’s business, and the divestiture of several Varian product lines required for regulatory approval of the acquisition.

Founder and President ofCo-Founder responsible for legal and business startup functions of Internet software and services venture that provided secure remote access solutions for individuals and businesses. • General Counsel functions and responsibilities for start-up, including incorporation, registration and licensing with state and local authorities, front facing negotiation with venture capitalist, drafting of employment agreements, software license agreements, services agreements, non-disclosure agreements, evaluation licenses and privacy policy. • Negotiated and entered marketing collaboration agreement with Japanese partner. • Performed business development efforts with Adobe, Cisco, SonicWALL, and Sun Microsystems.• Built development team and technical advisory board. • Developed general corporate strategy, business plan, and product specifications. • Prepared patent and trademark applications for company’s core technology and product line.

Dulles, Virginia, Us

Drafted and negotiated various company agreements including inbound and outbound Technology Licensing, Software License, Technology Development, Professional and Consulting Services, Reseller, Distributor, Software Sales and Distribution, International Net Search, Joint Marketing and Licensing, Joint Development, Source Code and Porting, Interactive Marketing, and Software Evaluation License. • Supported efforts for AOL’s expansion of the AIM instant messaging platform, including enterprise evaluations, partnerships, AIM-enabled collaboration product developments, and distribution agreements. • Counseled in-house clients on intellectual property matters and technology licensing issues. • Drafted agreement templates and provided legal analysis for new business models.

• Intellectual Property Litigation practice including preparation of motion pleadings, discovery requests and responses, Markman hearing briefs, taking and defending depositions, witness preparation for direct and cross examination. • Interference practice including drafting of motions, preparation of affidavits. • Founding member of eCommerce practice group. • Patent prosecution practice in the mechanical, computer and electrical arts. • Preparation of validity and infringement opinions. • Transactional practice including licensing, due diligence, mergers and acquisitions.• Preparation of software development, licensing, confidentiality and distribution agreements. • Counseling on trade secret misappropriation, copyright infringement, and intellectual property management. • Performed international patent and technology search, including travel to Eastern Europe, in search of prior art related to cardiac stents for major stent manufacturer. Publication: Wintringham, D., Lemley, M., Cybersquatting in the New Millennium, Metropolitan Corporate Counsel, February 2000.

New York, Ny, Us

IP Litigation Practice, including discovery, taking and defending depositions, preparation of complaints, motions and responsive pleadings; Transactional practice, including licensing and transfer of intellectual property rights, due diligence; Pre-litigation counseling including validity and infringement opinions.• Participated in successful injunction and damages patent infringement litigation for Heidelburg Druckmaschinen printing press litigation against Sumitomo Corporation;• Represented Connor Peripherals in the IBM v. Connor disk drive patent litigation that involved over 20 patents and was reported by the district judge as being “the largest patent case in the country.”• Patent portfolio evaluation and management;• Procurement of trademark protection and opposition to trademark registrations of adverse parties.

Madison, Al, Us

Software developer of interactive graphic software system, finite element analysis package, and data visualization software -- unix platform, c programming language and proprietary object oriented architecture and database.

J.D., Law

S.M., Mechanical Engineering

B.S., Mechanical Engineering