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Intellectual Property Attorney in Santa Clara, CA

Rovi Corporation Dec 01,2015 Location USA Santa Clara CA
This job is expired...

In-House

Attorney

Intellectual Property

Litigation - Whistleblower - CFTC

Min 7 yrs required

Profile

Patent Assertion Senior Director Responsibilities: Patent Claims Assertions: Significant background in preparing and presenting patent-related infringement analyses in patent licensing negotiations. Patent Mining: identification of patents relevant to a particular target from existing portfolio, coordinating patent analysis to demonstrate quality of Rovi portfolio; mine portfolio for additional patents to unlock new value from portfolio.. Coordination of business analysis: building business case for target company approach, sourcing data relevant to patent infringement case.. Infringement detection: analysis of competitor products and coordinating reverse engineering, liaising with technical experts.. Claim charting: developing compelling evidence that clearly demonstrates target company infringement. Licensing package development: pulling together output of 1,2,3,4 to build presentation decks that comprehensively show need for a license. Presentation on technical/legal level of Rovi portfolio and comprehensive defense of portfolio in licensing discussions.. Communication of outcomes from licensing technical discussions with outside counsel to ensure portfolio is enhanced in line with market/technical developments.. Liaising with litigation and patent prosecution functions to ensure strategy aligned and portfolio development aligned with licensing strategy.

Qualification and Experience

Qualifications: Undergraduate degree in computer science, electrical engineering, physics or substantially similar technical field from a top-rated university. JD Degree from a top law school followed by 7+ years of experience at a preeminent law firm and/or in-house department of a world-class technology company. Extensive experience in patent preparation, prosecution and portfolio management with a focus on software, internet applications and related technologies. Eligibility to practice before the U.S. Patent and Trademark Office. Technical industry experience a plus. Excellent drafting and communication skills. Ability to manage fast-paced workload and add value to multiple projects simultaneously. Exceptional negotiation skills. Substantial intellectual property experience with an emphasis on patent licensing, litigation and prosecution. Significant background in preparing and presenting patent-related analyses in patent licensing negotiations, IP opinions, discovery and motion practice, pretrial and trial activities, appeals and settlements for complex high technology patent cases. Experience in opinion matters and portfolio management.

Company info