Expert Witness & Damages Work

      Registered with Thomson Reuters Expert Witness Service

    •  IP Cube Partners Co., Ltd. vs Telecommunication Systems, Inc., No. 1:2015cv06334 - Document 54 (S.D.N.Y. 2016).  Fact         witness for defendant TeleCommunication Systems, Inc.  [Perkins Coie LLP] IP Cube alleged fraud stemming from the              sale of patents to IP Cube.  Deposed June 2016.  Case settled after my deposition.

• Smith, Gambrell & Russell, LLP v. Telecommunications Systems, Inc., 155 A.D.3d 457, 63 N.Y.S.3d 384 (2017) Nov. 14, 2017 · New York Supreme Court, Appellate Division.  Fact witness for defendant TeleCommunication Systems, Inc. (TCS) [Lupkin, LLC] where TCS alleged that plaintiff committed legal malpractice by failing to file a timely motion for attorneys’ fees in a federal patent proceeding.  Case settled after my affidavit was submitted.

• Nuance Communications, Inc., Agnitio Corp. & Agnitio S.L. vs. Pindrop Security, Inc. Civil Action No: 1:17cv1193 (2018).  Licensing rebuttal expert for Plaintiff Nuance Communications, Inc.   [Hogan Lovells US LLP] Nuance alleged breach of contract and copyright infringement.  Report filed May 2018.  Case settled on behalf of my client after my report was filed.

•  Hi-Dow International, Inc. and Eric Chen, Plaintiffs, vs. Bryan Wheelock and Harness, Dickey & Pierce, PLC, Defendants.  Case No. 01-20-0005-3647, American Arbitration Association.    Damages expert for plaintiff Hi-Dow International, Inc.  [Arch & Lake LLP] Hi-Dow alleged international patent rights were lost due to failing to file for international patent applications.  Damages from lost patent rights reports filed January 2021 with supplemental report filed March 2021, deposed February 2021, testified in July 2021.  Case settled on behalf of my client after my testimony.

• Golabs, Inc. et al v. Unicorn Global, Inc et al., Civil Action NO. 3:21-CV-00311, United States District Court, Northern District of Texas Dallas Division. Damages expert for defendant Unicorn Global [Ni, Wang & Massand, PPLC], rebuttal report concerning patent infringement, product delisting, and injunction.  Rebuttal expert report filed in March 2021. Stayed

•  Unicorn Global, Inc., et.al. v. GOLABS, Inc., et. al., Civil Action No. 3:19-cv -00754, United States District Court, Northern District of Texas Dallas Division. Damages expert for plaintiff Unicorn Global [Ni, Wang & Massand, PPLC], economic damages resulting from infringement.  Expert report filed in May 2021. Stayed

• Actian Corporation v.  Radisys Corporation; Anam Technologies, LTD.  Case No. Case No. 5:22-cv-895, United States District Court, Northern District of California. Licensing and damages expert for plaintiff Actian [Hatch Law] for damages from use of software outside the bounds of the license.  Counsel for plaintiffs asked me to (1) to evaluate reasonableness of plaintiff’s licensing practice; and (2) to evaluate the actual economic damages due to plaintiff resulting from defendant’s use of the software outside the scope of the license.  Interim expert report for mediation filed November 2022.  Case settled in mediation December 2022.

• Vista Partners, Inc. v. Brainscope.  Case No. 1:19-cv-00138-CMA-SKC, United States District Court for the District of Colorado.  Licensing expert for defendant Brainscope.  [Womble Bond Dickinson (US) LLP] Counsel for defendant asked me to provide my independent opinions regarding the general contracting and licensing standards and practices within the computer software industry, as well as my independent opinions regarding the licenses in this case.  Case transferred to the United States District Court for the District of Maryland 2019.  Ongoing but stayed by the court.

• Licensing and damages expert in two civil actions for damages from use of software outside the bounds of the license.  Counsel for plaintiffs asked me to (1) to evaluate reasonableness of plaintiff’s licensing practice; and (2) to evaluate the economic damages due to plaintiff resulting from defendant’s breach of contract and copyright infringement; and (3) to evaluate opinions conferred by defendants’ licensing and damages expert(s).  Damages report submitted June 2022 and deposed in June 2022 in one case.  [Hatch Law]

• Licensing damages expert in a 5G SEP litigation case for a Fortune 100 operating company.  Counsel for defendants asked me to evaluate reasonableness of plaintiff’s licensing practice and rebut plaintiff’s licensing expert, specifically reviewing the context of the negotiations with respect to hold-out and hold-up.  Draft report submitted May 2022.  [Wilmer Hale]

• Licensing expert for an operating company defendant to review and rebut two expert reports and to opine on their analysis and opinions regarding the enterprise software industry.  Expert rebuttal report submitted August 2023 and deposed October 2023.  [Bienert Katzman Littrell Williams LLP]

• Licensing and damages expert for a sole inventor/plaintiff.  Counsel for plaintiff asked me to evaluate the economic damages due to plaintiff resulting from defendant’s infringement.  Damages report submitted July 2023, supplemental report submitted August 2023, and deposed September 2023.  [Ramey LLP]

• Licensing expert for plaintiff in a software litigation case.  Counsel for defendants asked me to present my opinions regarding the reasonableness of plaintiff’s software licensing certification and verification practice and its interpretation of the certification provided by the defendant in this case, as well as giving my opinions on the standard industry practices for licensing software and the means to verify that a licensee is abiding by the terms of the agreements.  Expert report filed May 2023.  [Venable LLP]

• Licensing expert for a defendant to provide expert consulting services in connection with certain patent enforcement efforts by and/or against a number of parties.  [Foley & Lardner LLP]

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​​Intellectual Property (IP) Strategy

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IP Brokering and Litigation

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Negotiations, Agreement Development

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Technology Sourcing

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Technology Licensing – Including Assessment, Valuation and Deal Making

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Confidential Patent Licensing and Buying

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IP Valuations

• Integral team member for a project to value and transfer technology from a US defense contractor to a foreign government with an estimated resultant program value greater than $1.0B

 

Freedom to Operate Searches

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IP Training

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IP Polices & Procedures

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