Matters
- Serves on the outside-counsel team for one of the world’s leading developers of foundation models and generative AI systems, helping shape and manage the patent portfolio for AI compute hardware and related system architectures.
- Leads day-to-day patent strategy and operations for a Fortune 200 financial technology company with a global portfolio spanning thousands of patents and applications, including invention harvesting, claim strategy, prosecution, appeals, competitive analysis, quality control, stakeholder reporting, and international filing decisions.
- Has provided fractional in-house IP leadership to several technology companies during periods of transition, maintaining continuity and partnering with legal, business, and engineering teams to advance product and portfolio objectives.
- Develops patent and competitive strategies supporting launches of sophisticated hardware products, including payment devices, point-of-sale systems, cryptocurrency wallets, tamper-sensitive secure enclaves, and computing and mining systems, and uses competitive intelligence to identify portfolio gaps and opportunities for differentiated protection.
- Successfully defended three core patents in USPTO ex parte reexaminations initiated by an international Fortune 100 competitor, directing claim interpretation, prior-art analysis, technical-expert coordination, briefing, and examiner-panel interviews and securing reexamination certificates confirming claims in all three patents.
- Obtained reversal of numerous USPTO rejections on appeal to the Patent Trial and Appeal Board and obtained reissue patents correcting defects and, where appropriate, broadening claim scope.
- Developed and deployed a suite of AI tools used by attorneys across the firm to respond to difficult 35 U.S.C. § 101 rejections, research complex USPTO procedural questions using authoritative sources, automate aspects of PCT Article 19 amendment drafting, support patent drafting, and promote compliance with client outside-counsel guidelines.
- Negotiated an exclusive inbound university patent license for a biotechnology startup and conducted freedom-to-operate and IP diligence supporting financings, acquisitions, licensing, and product decisions.
- Supported a blockchain and cryptocurrency startup in trade-secret litigation by mapping technical assets across patent and trade-secret protection, evaluating confidentiality safeguards and evidence of secrecy, and developing technical analyses and briefing.
- Leads 3GPP standards-related patent work, including supervising more than 30 standard-essential patent analyses and developing patent coverage mapped to evolving 5G specifications.
