Biography

Kimberly S. Chotkowski

kimberly_chotkowskiKimberly S. Chotkowski is an accomplished intellectual property professional with 18 years of patent litigation, licensing and prosecution experience. For 4 years in a row, Kim has been listed in the Intellectual Asset Magazine as one of the top 300 IP Strategists in the World. She has been involved in litigating cases in a wide variety of technologies including wireless and wired telephony (handset, air interface and base station), microprocessors, semiconductors, USB, touch screens, automotive components, active storage systems, editing software, video on demand, pharmaceutical etc. Kim is a proven leader with capabilities in building litigation teams, strategic thinking and implementing workable plans.
Kim has an established track record of litigating/negotiating complex, global IP licenses and monetization opportunities specializing in assisting clients in maximizing their financial return on research and development via licensing their technology. Kim’s experience provides significant global IP licensing knowledge having worked with a licensing firm who negotiated with more than 70 companies worldwide, obtaining licenses worth approximately over $2 billion on behalf of their clients. Kim supports her clients’ licensing efforts in a broad range of technologies including semiconductor processing and circuits, digital cameras, cell phones, optical storage, wired and wireless communications, internet applications, chemical arts, telecommunications and television, automotive, bioelectrical/biomechanical and pharmaceutical arenas.
Kim also offers strategic IP portfolio management. By tailoring her proactive IP management approach to each individual client’s business and technical goals, she develops cost-effective, value-generating portfolios that assist clients by protecting core technology, licensing and patent brokering. Kim has managed and served as an expert witness in various patent litigations. Kim is an inventor herself holding two patents in antenna technologies.
A frequent speaker, Kim has covered pertinent issues related to IP Monetization, international licensing and international patent portfolio management at the Licensing Executives Society, the American Bar Association, PLI and other independent professional conference forums. She has spoken on behalf of the US State Department on licensing in China. Kim holds a BS in electrical engineering and a BS in Humanities/History from Worcester Polytechnic Institute, a JD from the Franklin Pierce Law Center and an MBA, concentration in international business and finance, from Sacred Heart University.
Kim is a member of the Pennsylvania, Connecticut and New York and Patent Bars, a Certified Licensing Professional and a former committee member of the Intellectual Property Owners and an active participant in the Licensing Executive Society’s effort to provide standards of practice to the licensing profession.

PRACTICE AREAS

  • Licensing
  • Litigation
  • Patents
  • Trademarks

 

Donald M. Boles

biog_donald-boles-patent-intel-consultantDon is an experienced international patent intelligence consultant and corporate counsel licensed in NY, NJ, and PA, and offers services to both U.S. and international concerns. He has over thirty years’ industry experience, with accomplishments, career history, and engagements for giving lectures, speeches, and industry presentations as summarized below:

CORPORATE COUNSEL – INTELLECTUAL PROPERTY

Patents | Brokering (Sale or Purchase)
Licensing | Patent Budgets & Cost Control
International Transactions | Franchising
Litigation Management | M&A

I have a record of developing and managing intellectual property protections to drive growth and profitability for Fortune 500 companies including IBM and Siemens. I have consistently developed highly marketable intellectual property portfolios while enacting cost controls and process improvements. My technical expertise encompasses computers, software, semiconductors, medical devices, and energy technologies. I am also known for:

  • Ensuring continued revenue flow even during patent litigation
  • Crafting innovative, cost-effective intellectual property protection
  • International licensing and negotiation experience including Asia and Europe
  • Developing processes for rapid patent application filings and patent portfolio management

Results-Driven, creative and energetic, I am proficient at quickly and accurately performing risk/benefit analysis. An effective communicator, I work well across all organizational levels. I hold a JD and a BEE from the University of Dayton. I am licensed to practice law in NY, NJ, PA and the USPTO. I am also a Certified Licensing Professional.

SELECTED ACCOMPLISHMENTS

  • Settled complex litigation, realizing hundreds of millions of dollars in revenue for InterDigital. Patent litigation had potential to undo 2G patent portfolio, the company’s only viable source of revenue. Replaced outside litigation and shaped counterclaims and arguments. Entered into engineering development agreements with contingency clauses for successful conclusion of licensing of litigated patents. Settled litigation, triggering negotiated contingency clauses and driving revenue influx.
  • Reduced normal “pendancy” period from 4-7 years to 1-3 years. InterDigital needed to generate licensing revenue for 3G technology while many patents were pending. Identified most important pending patents and either filed utility models or requested expedited examination. Enabled company to cut licensing time by half.
  • Created process to manage patent portfolio. InterDigital’s patent portfolio was growing in size and complexity. Developed process and procedure for classifying and ranking the portfolio as well as a process to “map” the intellectual property rights (IPR) onto specific sections of the various standards. Separated commercially valuable from weak IPR and determined gaps or excesses of IPR.
  • Changed corporate structure saving several hundred thousand dollars annually.
  • Won patent litigation in Taiwan. Successfully initiated and concluded litigation, resulting in the seizure of counterfeit products and the tools used in their manufacture.
  • Crafted cost-effective intellectual property protection plan. Client company launched new product line that would generate revenue for low cost software features. To prevent infringement, recommended only authorized software be used. Copyrighted software, allowing for copyright statutory damages (a less expensive and easier means of stopping infringers while providing substantial damages).
  • Developed policies and procedures for acquisitions. Company completed first of many acquisitions, but had no integration plan. Drafted acquired company policy and procedure outline. Executive management team used document as a basis for future acquisitions and a building block for various departments.

CAREER HISTORY

VP Program Development, Wilan, Inc, ($35M patent licensing company), 2009 to 2010. – Grew company through development of new patent licensing programs and coordinating sourcing, analysis and acquisition of patent portfolios. Established teams to successfully monetize acquired patent portfolios.

VP & Chief Patent Strategist, InterDigital, ($120M telecom Company), 1997 to 2009. Managed budgets of up to $40M and 10 employees. Established a department and enlarged patent portfolio from filing six original applications to 160+ annually. Now in top 300 companies in the world for US issued Patents. Developed company licensing strategy and implementation including royalty pricing. Extensive international experience in Asia (China, Taiwan, Korea, and Japan) and Europe (England, Germany, France, Sweden, Italy, and Finland).

– Additional responsibilities: M&A activities, strategic planning (for the patent and licensing department and overall corporate planning); litigation responsibilities for domestic and international matters; created companywide policy and procedures for all intellectual property programs; developed inventor compensation program. Member, Board of Directors for Tantivy and IPR Licensing.

Senior Attorney, Siemens, Inc, (Fortune Global 500 electronics manufacturer), 1992 to 1997. Advised subsidiaries having annual sales ranging from $20M to $2B. Served as patent counsel (international patent preparation and prosecution). Performed licensing, M&A, divestiture and due diligence work. Developed inventor compensation plans. Crafted and implemented litigation and anti-counterfeiting programs and enforcement.

– Representative technologies included programmable logic devices and controllers, semiconductor devices and related manufacturing activities, software, process control and automation, power control and distribution of large scale power grids down to residential components, semiconductor manufacturing, solar cells and panels, network and system communication and control.

Patent Attorney, IBM, (Fortune 500 computer products and services company), 1989 to 1992. Prepared and prosecuted domestic and international patent applications. Delivered client counseling, legal opinions, licensing, portfolio review and management.

– Representative technologies included semiconductor design, implementation and manufacturing, computer architecture, memory devices, semiconductor test equipment and software.

Private Practice, 1985 to 1989. Conducted patent and trademark litigation, domestic and foreign patent prosecution, and client counseling. Delivered legal opinions and extensive licensing of patents and trademarks.

– Representative technologies included fiber optics, consumer items and packaging, cardiac catheters, endoscopic devices and implantable prosthetic devices.

Patent Attorney, AMP, Inc, ($2B electrical components manufacturer now TYCO), 1982 to 1985. Held full responsibility for several business units, R&D center and several newly acquired companies. Assisted in M&A. Managed department located in Tokyo while holding overall responsibility for Asia (two locations consisting of draftsmen, secretaries, docketing clerks and in-house searchers). Directed U.S. attorney activities in Asia, including anti-counterfeiting program and enforcement.

– Technologies included digital PBX’s, network and communications systems and devices, electrical connectors and touch-type input devices.

Junior Patent Attorney, Westinghouse Electric, 1980 to 1982. Handled U.S. patent applications, drafting and negotiation of confidentiality agreements, full patent responsibility for several business units. Technologies included low, medium and high voltage power control, distribution and management, and plasma type heliarc heaters.