Professionals

• Experience
• Activities & Memberships
• Articles & Presentations
• Recognition

Experience

Technology and Licensing

• Representation of medical imaging management, archiving, and migration solutions provider in technology licensing, development and outsourcing agreements with health care networks, universities and technology partners.
• Representation of medical device manufacturer in research, development and commercialization initiatives for extracorporeal perfusion hyperthermia therapies.
• Representation of multi-source streaming technology provider of high definition video programming technology in licensing and content delivery service agreements with major league and college sports networks and hospitality industry partners.
• Representation of start-up regenerative medical research company in license agreements to commercialize proprietary stem cell therapies.
• Representation of advanced coatings company in development and licensing of proprietary processes for delivery of nanoformulations of therapeutic compounds for cardiovascular diseases, orthopedics, neurology and tissue engineering.
• Representation of medical device manufacturer in collaboration agreements to develop interventional catheters and guidewire imaging devices inserted into human vasculature.
• Representation of biopharmaceutical company in complex product research, license and service agreements involving more than seventy patents held by six oncology research organizations for worldwide development, manufacture and sale of cancer therapies.
• Negotiation and implementation of development, license and supply agreements for remotely enabled mobile forensic technology company.
• Representation of startup nanotechnology company in manufacturing, licensing and supply agreements for conductive inks and conductive coatings for displays, solar cells, and other electronics.
• Representation of cardiovascular resuscitation device company in manufacturing and supply chain agreements.
• Representation of a leading provider of precision GPS technologies for agricultural, marine and navigation systems.
• Representation of municipal power agency in technology development, licensing and collaboration agreements to give communities greater control over energy resource and supply needs.
• Representation of a computer software company in strategic relationships with technology partners, including platform partners, ecosystem/tools technology partners, and ISVs.
• Representation of automated parking technology company in all aspects of its software development, licensing and maintenance service business.
• Representation of home shopping network in enterprise license and hosting services agreements with call centers and order fulfillment centers in the United States and foreign countries.
• Representation of leading glass coatings provider in manufacturing, licensing and supply agreements.
• Counsel to financial and insurance services company in all aspects of its advertising, marketing and strategic branding initiatives.
• Representation of a medical technology device company in the formation and implementation of product manufacturing and distribution alliances to sales of the client's products worldwide.
• Successful representation of a Fortune 500 company in the design, acquisition and implementation of a $100 million e-business initiative, including the negotiation and coordination of all agreements with the client's technology partners, consultants and other providers.
• Representation of embedded device manufacturers in the negotiation of technology licensing, employment, compliance and severance requirements.
• Representation of software development and internet payment facilitation service providers in all aspects of technology licensing and distribution agreements with their domestic and foreign partners.
• Representation of major cultural and performing arts organizations in all aspects of their copyright clearance, publishing, licensing, and distribution agreements.
• Representation of an international restaurant franchisor in license negotiations with a major television network and production company in trademark and trade dress licensing negotiations for a chain of theme-based entertainment venues.
• Representation of a one of the world's leading medical technology companies in a $90 million e-business hosting and electronic infrastructure implementation services agreement with IBM for its global information services and security network.
• Representation of a leading peer-to-peer network in copyright licensing and distribution negotiations with music copyright owners and performing rights societies.
• Successful representation of an information services technology provider in exclusive license negotiations involving the next generation of automated search capability technology.
• Successful representation of a U.S. software development company in negotiation of a technology severance license and liquidated damages recovery from a major Japanese corporation.
• Representation of a U.S. internet and online auction services provider in all aspects of the design, configuration, and implementation of its e-commerce business, including strategic counseling and negotiation of agreements with the client's major technology partners, consultants, software vendors, and service providers.
• Representation of one of the nation's leading providers of corporate identity apparel in acquisition of state of the art embellished artwork technology and services for its corporate identity apparel business.
• Successful representation of one of the nation's leading providers of 3D illustrated maps in a copyright and trade dress infringement claims against a competing publisher and its visitors convention bureau customers.
• Representation of leading financial services and apparel companies in brand management and trademark infringement matters, including successful termination of third parties' uses of conflicting domain names and trademarks for clothing and apparel product lines.
• Successfully petitioned the U.S. Trademark Trial and Appeals Board on behalf of a Fortune 500 company to overturn the U.S. Trademark Office's refusal of registration for the company's trademark featured in a multimillion dollar syndicated television and broadcast media advertising campaign.
• Successfully opposed pending registration applications by competitors of the firm's clients in the technology, manufacturing, financial services and charitable service sectors.
• Trademark counseling and advice to a major regional financial institution in minimizing infringement exposure in all aspects of its advertising and marketing activities, including strategic branding considerations necessitated by the institution's expansion into other geographic markets
• Representation of a U.S. based publisher of proprietary workplace assessment tools, skill indices and training programs in securing copyright protection for local dialect translations of its copyrighted works distributed in more than thirty countries worldwide.
• Representation of media companies and producers in the creation, acquisition and distribution of domestic and international distribution rights to news, music, and cultural programs for the nation's radio, television, cable, music video, and live entertainment venues.
• Representation of multimedia and software development companies in the protection, funding, sale, and distribution of computer and Internet based products, applications, and technology.

Estate Planning

• Represented majority shareholders and senior management of a large regional transportation company in the design and execution of a series of intergenerational transfers designed to convey approximately one-third (1/3) of the company's non-voting stock to an unaffiliated holding company for the benefit of the shareholders' children.
• Represented the owners and senior management of a $20 million manufacturing concern in the design and implementation of a hybrid gift and sale of forty percent (40%) of the company's net equity to those children who actively manage the family business.
• Represented the owners of approximately $30 million worth of commercial and residential real estate in the creation of a series of family-controlled entities to own and manage the family's real estate investments, resulting in potential transfer tax savings of approximately $10 million.
• Represented the estate of the majority owner of an Iowa-based bank holding company in IRS' estate tax audit proceedings and subsequent sale of the estate's stock holdings to an employee stock ownership trust.
• Representation of majority owner of large Midwestern agri-business before the Internal Revenue Service Appeals Division, resulting in a favorable administrative decision reducing the IRS deficiency assessment by more than $350,000.
• Representation of minority owners of a publicly traded life sciences company in a successful appeal. Client appealed an IRS gift tax assessment resulting from the gift of a minority equity stake to a family limited partnership incident to a recapitalization of the company's equity structure. After submission of the taxpayer's briefs, the IRS withdrew its deficiency assessment of more than $500,000.
• Representation of second and third generation shareholders of a large Midwestern manufacturing company in administrative proceedings before the Internal Revenue Service. Successfully obtained a favorable private letter ruling with respect to the income, gift and generation-skipping tax consequences of trust litigation involving the proper construction and severance into separate shares of a multi-generational trust owning more than $300 million worth of the company's stock.