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Intellectual Property Attorney in Plano, TX

Toyota Motor Sales, U.S.A., Inc. Mar 23,2017 Mar 06,2017 Location USA Plano TX
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In-House

Attorney

Intellectual Property

Litigation - Whistleblower - CFTC

Min 3 yrs required

Profile

IP Litigation Managing Counsel The candidate will be part of the Business Litigation Group, which handles complex business litigation, including class actions, commercial litigation and arbitrations, intellectual property litigation, government investigations and regulatory matters. Manage a case load of patent litigation matters involving the company and/or its affiliates (collectively, TMNA), in the U.S. federal courts, administrative patent proceedings in the Patent Trial and Appeal Board, and International Trade Commission, as well as pre-litigation patent claims and demands, directly and/or in close coordination with the parent company’s intellectual property division based in Japan. Develop and execute strategy for patent litigation matters involving the company pending in the U.S, directly and/or in close coordination with the company’s intellectual property division based in Japan. Leverage your experience with the US judicial system to achieve efficiencies and manage risk for the company. Manage U.S. IP enforcement litigation as needed, including trademark infringement, dilution, anti-counterfeiting, copyright, and trade secret matters. Manage defense of U.S. trademark, copyright, and/or trade secret pre-litigation claims. Act as chief liaison with company’s intellectual property division in US litigation involving company entities, and advise on key issues involving the enterprise. Assist the intellectual property division with executing case strategy in US patent litigation, and serving as a “hands on” manager and being involved at all levels of strategy, factual investigation, discovery, witness preparation, motion practice, trial and hearing preparation, and communication of strategy and results to the management. Work with e-discovery tools and coordinate implementation of litigation hold notifications. Supervise paralegal and administrative support. Coordinate IP issues with affected company vendors as appropriate and manage vendor relationships as necessary and provide guidance to team members. Support intellectual property law litigation reform efforts directly and through active participation in coalitions and trade associations. Provide advice and strategy regarding risk management and available defensive mechanisms in the IP area, in coordination with the IP prosecution counsel and the company’s intellectual property division based in Japan. A Juris Doctor degree from an ABA-accredited law school and extensive experience at a major law firm or in a corporate law department litigating complex matters, such as patent litigation and/or class action cases required. Experience: in patent assertions/pre-litigation, and litigation of patent disputes, including fact discovery, Markman hearings, and summary judgment practice; with intellectual property (patent, copyright and/or trademark) litigation; with patent litigation in the U.S. International Trade Commission; with litigation in the U.S. Court of Appeals for the Federal Circuit required. Demonstrated complex litigation experience in all aspects of case management, including experience in development of case and litigation strategies, factual investigation, dispositive motion practice, discovery strategy, trial preparation, settlement negotiations, mediations, arbitrations and trials, and in the selection and management of outside counsel and expert consultants required. Strong oral and written communications skills required. Experience in automotive litigation matters, including litigation in state and federal and appellate courts and administrative agencies; Patent bar membership (USPTO registration number); Bachelor of Science degree in a technical field; A Computer Science degree is highly preferred with interest in automotive technologies such as navigation systems, transmissions, seats, brakes and entertainment systems programming, and an ability to discuss code and programming with engineers and developers; Knowledge of technology and process patents, whether from previous legal or technical experience; Solid understanding, experience or interest in alternative – powered vehicles, fuel cell, electric & hybrid vehicles; Experience in drafting settlement agreements; Fluency in written and spoken Japanese preferred.

Additional info

Job ID: TMN000AK

Company info