Publications

• Note, Federal Common Law Alive and Well Fifty Years After Erie: Boyle v. United Technologies Corp. and the Government Contractor's Defense, 22 Conn. L. Rev. 239 (1989).

Selected Presentations

• Filing Foreign Patent Applications: Whether to File EPC or PCT?, presented at the Patent, Copyright, and Trademark Section, American Bar Association Annual Meeting, New York, NY, 10 August 1993.
• Pratt & Whitney’s Freedom to Operate Study Process, presented at Intellectual Property Law: Beyond the Basics (hosted by Kinney & Lange), Minneapolis, MN, 15 June 2007.
• What Is Your IP Strategy? Do You Have One?, presented as part of the 2008 Conn ACCA Continuing Seminar Series for In-House Counsel, Hartford, CT, 15 April 2008.
• Engaging Outside Counsel on IP Matters: In-House Attorneys’ Perspectives, presented as part of the New York Intellectual Property Law Association Continuing Legal Education Lunch Program, New York, NY, 16 May 2008.
• IP Strategies: The Legal Aspects of Protecting Technology Developments, presented as part of the 2008 Pratt & Whitney Fellows Lecture Series, East Hartford, CT, 5 June 2008.
• Conference on Intellectual Property Rights and Technology Transfer in the UN Climate Negotiations, panelist for program sponsored by Center for Environmental Public Policy at the University of California, Berkeley, CA, 26-27 October 2009.
• Navigating the Intersection of Antitrust and IP Law: Current Issues Impacting on Licensing Transactions, panelist for 2nd Advanced Legal Forum on Technology Licensing Agreements sponsored by American Conference Institute, Washington, DC, 24 March 2010.
• Cutting Edge: The Current Legal and Business Issues Faced by High Tech Companies, panelist for the Section of Intellectual Property Law program, American Bar Association Annual Meeting, Toronto, ON, Canada, 5 August 2011.
• IP Outsourcing: Is Outsourcing Toothpaste Out of the Tube?, panelist for Webinar sponsored by KPO Consultants, 7 September 2011.
• New Perspectives on Building an IP Aware Open Innovation Culture, panelist for Growth, Innovation and Leadership University sponsored by Frost & Sullivan, San Jose, CA, 14 September 2011.
• The Evolution of the IP Department: What's New in IP Monetization?, panelist for Global LPO Conference sponsored by KPO Consultants, Los Angeles, CA, 6 October 2011.
• Global Intellectual Property (IP) Offshoring Panel Discussion, panelist for Webinar sponsored by KPO Consultants, 15 February 2012.
• Outsourcing Patent Prosecution & Litigation Support: Getting High Quality Solutions that Deliver Low Cost Benefits, instructor for Global Outsourcing Association of Lawyers Master Class, 22 May 2012.
• Aligning Your IP Strategy with Your Business Strategy, panelist for Intellectual Property Fundamentals: What Everyone in R&D Must Know program, American Chemical Society 2013 Northeast Regional Meeting, New Haven, CT, 23 October 2013.
• General Counsel Panel Discussion on the Most Pressing IP Issues, panelist for Protecting Your Business Assets Globally Through IP Strategies program, sponsored by Bracewell & Giuliani LLP, Houston, TX, 24 April 2014.
• Improve Efficiency in International and Regional IP Prosecution, panelist for Corporate IP Counsel Forum sponsored by World Congress, New York, NY, 23 March 2016.
• Streamline Process to Enhance the Value of Your In-House IP Department, panelist for Corporate IP Counsel Forum sponsored by World Congress, New York, NY, 24 March 2016.
• Counsel to Counsel, panelist for webinar sponsored by Dilworth IP, 28 June 2018.

Representative Matters

• Prepared, prosecuted, and supervised hundreds of patent applications, including PCT and foreign counterparts, on a variety of technologies. Managed global patent portfolios that comprised hundreds of patent families. Prepared and supervised many appeals to the US Patent Office Board of Patent Appeals and Interferences (now the US Patent Office Patent Trial and Appeal Board), the European Patent Office Board of Appeal, and equivalent appellate panels at other international patent offices.
• Prepared, prosecuted, and supervised dozens of trademark applications, including Madrid Protocol and foreign counterparts. Managed global trademark portfolios that comprised thousands of members.
• Coordinated patent clearance studies for billion-dollar product lines; advised client regarding risk management and patent avoidance strategies, and prepared associated opinions of counsel
• As in-house counsel, led legal teams in a variety of litigation matters ranging from patent and assertion and defense in US and UK courts, trade secret and anti-trust litigation in US state courts, including: US District Court, Arizona (patent infringement) US District Court, Connecticut (patent infringement) US District Court, Delaware (patent infringement, trade secret, breach of contract) US District Court, Eastern District of Virginia (patent interference and infringement) US Court of Appeals for the Federal Circuit (patent interference and infringement) UK High Court of Justice (patent infringement) Bexar County (San Antonio), Texas Court (state law anti-trust) Madison County (Huntsville), Alabama Court (trade secret)
• Conducted due diligence reviews of in the context of merger & acquisition projects (both as buyer and seller). Negotiated, drafted, and reviewed substantive transaction agreements (asset purchase agreements, licenses, etc.) related to such merger & acquisition projects.
• Negotiated, drafted, and reviewed numerous intellectual property, e-business, joint research/development, and other business agreements ranging from low-value to hundreds of millions of dollars with global business partners located throughout the US, Canada, Mexico, Europe (e.g., Germany, France, Italy, Netherlands, Norway, Spain, UK, and other countries), Asia (e.g., China, Korea, Singapore, and other countries), Australia, New Zealand, Africa (South Africa), and South America (e.g., Brazil, Argentina, Chile, and other countries).
• Negotiated, drafted, and reviewed numerous government-related contracts under the Federal Acquisition Regulations and DFAR with US government agencies and national laboratories.
• Negotiated, drafted, and reviewed numerous software license, data hosting, on-line access agreements, and data privacy agreements. Led negotiations for complex, multi-million-dollar services and software licensing agreement to outsource IT operations and infrastructure.