Description:
We are looking for an enthusiastic, results-oriented Vice President, IP Counsel with significant patent licensing and litigation experience and a deep understanding of complex transactions within the Information Technology industry.Description:
Location: SF Bay Area
Reports to: SVP, Chief IP Counsel & General Counsel
The Company:
A Professional Intellectual Property Services Company is a professional intellectual property services company with its headquarters in the Silicon Valley and a presence in Europe and Asia. We serve our clients globally with trusted executive, business, technical, legal, and licensing expertise. We serve the technology industry through focused patent aggregation and licensing programs.
A Professional Intellectual Property Services Company' vision is to optimize the global high-tech intellectual property environment to be efficient, respected, and balanced. This will allow technology companies to have predictable, low-cost design freedom and will provide fair and just compensation to innovators who create impactful patented inventions. A Professional Intellectual Property Services Company is well funded, has a core team of highly experienced business, intellectual property, and legal experts, and is rapidly growing across all aspects of its business. More information is available at www.videolabsinc.com
The Position:
We are looking for an enthusiastic, results-oriented Vice President, IP Counsel with significant patent licensing and litigation experience and a deep understanding of complex transactions within the Information Technology industry. The Vice President, IP Counsel will be primarily responsible for supporting patent aspects of A Professional Intellectual Property Services Company' intellectual property licensing programs, projects and engagements from inception through completion, collaborating with internal and external professionals to successfully engage prospective customers, partners, members and licensees, and other activities, including litigation support, to drive revenue for A Professional Intellectual Property Services Company and its licensing clients and partners worldwide.
Responsibilities:
- Accountable to develop high quality and impactful IP cases to support licensing programs and engagements, including working closely with VideoLabs' internal/external SMEs in preparing, reviewing, and presenting high quality and accurate claim charts, providing strong, fact-based responses to non-infringement and invalidity arguments raised in licensing engagements, and providing negotiation support in licensing engagements.
- Ensure that VideoLabs maintains a “Best in Class” IP case development process with excellent constituent relationships.
- Collaborate with new and existing internal/external SMEs within VideoLabs' extended subject matter technical network of experts.
- Work with the VideoLabs leadership team to ensure efficient and effective use of case development resources and early identification and resolution of issues associated with capacity or prioritization.
- Provide thoughtful legal input and direction on licensing program and case development activities to the broader case development team (LEs, technical and business analysis resources).
- Work closely with outside counsel and/or the licensing team to develop strong global liability and damages cases through rigorous review and analysis of:
- Industry and company technologies and revenue models;
- Patents that cover key technologies and revenue streams; and
- Theories of recovery that reflect and preserve the value of VideoLabs' patents and are aligned with VideoLabs' business objectives.
- Collaborate with the Head of Acquisitions to proactively identify, efficiently and accurately find, analyze and vet high quality patents that meet the rigorous criteria for inclusion into the VideoLabs' platform and properly value patents.
- Actively manage, in collaboration with internal and external teams, VideoLabs' global patent litigation activities, including discovery and technology consulting services. Interface with various departments to facilitate preservation, collection and retention of electronic and/or paper information.
- Provide oversight for budgets and financial plans for VideoLabs' litigation matters.
- Provide input to fee agreements with outside litigation counsel as needed.
- Gain trust and confidence in the high-tech industry by acting in a highly professional, industry-leading manner, and in the best interest of VideoLabs and partners at all times.
- Maintain a high state of knowledge and awareness of the industry, including market trends, key players, technology trends, active patent litigation and licensing programs, other IP-based business models, and available patents for purchase.
Desired Qualifications:
- Juris Doctor degree from an ABA-accredited law school.
- Engineering or science-based degree is a plus
- Active California Bar license desirable.
- 8+ years patent litigation experience
- Litigation management and/or related experience is required.
- 3+ years of IP licensing experience is required.
- International litigation experience is beneficial.
- A combination of law firm and in-house litigation experience preferred, but not required.
- excellent communication skills, the ability to work with various levels of management, strong analytical skills, detail oriented, and the ability to successfully lead a team to achieve identified objectives required.
- The ability to build effective internal and external business relationships and to present complex technical ideas succinctly and clearly.
- Strong organizational skills, e.g., maintaining attention to detail on multiple projects simultaneously, and the ability to adjust to changing priorities and deadlines.
- Proficiency with MS Office Suite (Word, Excel, PowerPoint)
- Ability and desire to work collaboratively on a team.
- Sound legal and business judgment.
- Self-starter with strong problem-solving skills.
- Capacity to proactively isolate and prioritize issues and to focus on implementing
- Ability to quickly assimilate and understand complex situations and information, including highly technical information.
- Able to establish credibility and trust quickly.
- English language fluency is necessary, the ability to work with foreign languages is desirable.
- Ability to travel domestically and internationally 25% of the time.
- Languages: Fluent English essential, other languages are a plus.