Ian MacKinnon

Senior Counsel

1 (612) 337-7208

imackinnon@kinney.com

Professional Experience

Ian MacKinnon has over 25 years of experience working with high tech and innovative technology. He began his career with Honeywell and managed all IP matters for Honeywell’s Residential, Aviation, and Research Center. Ian managed the IP department for the United Technologies Corp. (UTC) Research Center. He has drafted applications on software, hardware, semiconductor, and other technologies. He has experience at both Honeywell and UTC with Government Contracts and Joint Development Agreements with Universities. He has managed litigation and licensing programs at both Honeywell and UTC.

Following Ian’s time with UTC, he joined IBM. While at IBM, Ian negotiated complex multi-million dollar tooling purchases for the semiconductor division. He was a member of IBM’s patent enforcement team, with experience in the US, the EU, and Asia. He was a member of IBM’s business development team focusing on monetizing IBM’s intellectual property through licensing and patent sales. He has significant experience managing litigation, both assertions and defense in Federal Court and the ITC.

Ian is also an active member of the Licensing Executive Society (LES).

Selected Presentations

  • How Recent Damages Decisions and Trends Are Influencing Licensing Negotiations, LES Annual Meeting, 2019
  • Focus: IT & TMT Sectors – Managing Intellectual Property European Patent Reform Forum 2016
  • Data as Intellectual Property and Data Licensing – The IP Strategy Summit: NYC 2016
  • Patent Enforcement in Europe: Deciding on Your Strategy – Managing Intellectual Property European Patent Reform Forum USA 2015 (NYC)
  • To Litigate, to License or to Use a Third Party, IP Strategy Summit Enforcement 2014 (NYC)
  • Patent Valuation: Strategies for Identifying the Most Valuable Patents – IP Investment Conference 2014 (NYC)

Representative Matters

  • Managed ITC action for Nortek (Ergotron) related to sit-stand desks, resulting in a negotiated settlement.
  • Negotiated and closed multiple patent license agreements in the software area for well over $20 million in licensing revenue.
  • Managed multiple assertions by Non-Practicing Entities against company or customer products.
  • Managed the sale of approximately 500 patent families in multiple technology areas.
  • Provided legal support to licensing programs in multiple international technology areas including developing claim charts, presenting the claim charts, and defending the claim charts and patents.
  • Coordinated patent clearance studies for all UTC Research programs with overall IP Strategy process developed with Ito Process (6Sigma).
  • Prepared, prosecuted, and supervised hundreds of patent applications, including PCT and foreign counterparts, on a variety of technologies on behalf of multi-national corporations, medium-sized businesses, and small businesses.
  • Implemented trademark policing and enforcement program for multibillion dollar corporation to police pirate products.
  • Supported multiple M&A programs evaluating and valuing the intellectual property of target corporations.