Emerging Intellectual Property Issues in Business Transactions: What You Need to Know

Joel N. Bock is a partner in Dentons’ Intellectual Property and Technology practice. His practice focuses on counseling companies in various industry sectors, including life sciences, clean energy, manufacturing, software, semiconductor, nanotechnology, telecommunications, publishing, automotive, packaging and optics, regarding a wide range of intellectual property issues and structuring and negotiating transactions involving IP assets, including mergers and acquisitions, initial public offerings, private placements, strategic investments, licensing and strategic alliances. He counsels companies with respect to IP asset assessment and valuation, including risk analysis, portfolio analysis, patent opinion work, including freedom to operate and patentability, design around strategies, planning and executing trade secret protection and advising clients with respect to portfolio development, management and growth strategies.

Mr. Bock also litigates complex patent infringement suits relating to such technologies as optical ROADM devices, remote patient monitoring, semiconductor chips and packages, MEMS based sensors, electronic time stamping and authentication, and medical devices, and assists companies with post grant proceedings in the United States Patent and Trademark Office.

An engineer by training, Anthony Lo Cicero has represented companies in patent and trademark litigation involving product areas as diverse as e-commerce platforms, angular rate sensors, camcorders and textiles. He conducts due diligence of IP portfolios and provides strategic patent counseling to companies in a wide range of industries from recorded and published music to consumer electronics.

Very sophisticated technology competes with style and price as key aspects of the customer experience in the fashion industry. Mr. Lo Cicero represents some of the most prominent brick-and-mortar and on-line retailers in the country in patent disputes relating to the enterprise’s e-commerce, mobile and point of sale systems. The retail industry regularly confronts patent assertions involving mobile platforms, electronic merchandise presentation, billing, marketing, inventory management and other features of the 21st century marketplace. Mr. Lo Cicero evaluates and responds to these assertions in a practical, business-oriented manner. For example, on behalf of one retailer, he obtained dismissals of several actions for little or no payment. Mr. Lo Cicero also evaluates contractual terms with vendors and suppliers to mitigate liability and works with retailers to identify and obtain protection for their own innovations. He has assisted retailers in successfully pursuing indemnification claims ranging to seven-figure settlements.

Restaurants, financial institutions, insurance companies, health care institutions, consumer product manufacturers and other businesses likewise rely on technology to bind customers, improve the customer experience, differentiate themselves and stimulate demand. Mr. Lo Cicero advises clients on freedom to operate issues, prosecutes patents and defends them in litigation.

Scott Weingust is a Director in the Dispute Advisory & Forensic Services Group at Stout Risius Ross, Inc. (SRR). He has over 16 years of experience providing consulting services to corporations, law firms, investment firms, and universities primarily in the areas of intellectual property litigation, valuation, and monetization. Mr. Weingust has provided testimony as a damages expert in intellectual property litigation. He has also valued intellectual property assets – including patents, trademarks, copyrights, trade secrets, and other intangibles – for a variety of purposes including capital raising, transfer pricing and other tax-related issues, financial reporting, transaction due diligence (including mergers and acquisitions), license negotiations, strategic decision-making, and regulatory compliance, among others.