Professional Experience

SUMMARY OF RESULTS:

  • Patent applications filed: 370
  • Sales of IP products: approximately $28 billion
  • Corporate acquisitions negotiated: approximately $2.5 billion

PayPal, San Jose, California

Fueled by a fundamental belief that having access to financial services creates opportunity, PayPal (NASDAQ: PYPL) is committed to democratizing financial services and empowering people and businesses to join and thrive in the global economy.  Our open digital payments platform gives PayPal’s million active account holders the confidence to connect and transact in new and powerful ways, whether they are online, on a mobile device, in an app, or in person.  Through a combination of technological innovation and strategic partnerships, PayPal creates better ways to manage and move money, and offers choice and flexibility when sending payments, paying or getting paid.  Available in more than 200 markets around the world, the PayPal platform enables consumers and merchants to receive money in more than 100 currencies, withdraw funds in many currencies and hold balances in their PayPal accounts in many currencies.

Registered Patent Lawyer, 2016 – 2019

  • Developed and managed a global legal framework for the protection of the company’s intellectual property (“IP”) assets for global products sales of a two-sided financial technology platform having a payment volume of $578 billion per year
  • Managed all aspects of patent prosecutions by participating in and implementing IP strategy, which included preparing and filing approximately 30 strategic U.S. patent applications per year and assisting in filing applications in international jurisdictions for products having aggregate value of $ 28 billion
  • Prosecuted patent applications in the financial technology software space to allowance as granted patents without receiving rejections for patentability under 35 U.S.C. § 101
  • Provided practical legal advice regarding IP and global portfolio management configured to further business strategies and objectives, causing a 75% increase in stock value over three years
  • Conducted invention disclosure interviews to identify patentable ideas
  • Led invention review committees to prioritize filings of patent applications
  • Conducted IP due diligence associated with mergers and acquisitions and other strategic initiatives that involve the company’s IP
  • Assisted in the development of legal strategies for business units processing over $72 billion in transactions per year
  • Negotiated and drafted patent licenses
  • Shared in the management of outside counsel relationships
  • Advised business units on recent and prospective changes in laws and regulations

K&L Gates, LLP, Pittsburgh, Pennsylvania

Registered Patent Lawyer, 2016

  • Prepare and prosecute patent applications in the medical device field aimed at providing life-saving technologies during operations
  • Prepare patentability opinions
  • Counsel clients in transactional matters, such as mergers and acquisitions

WESTMAN, CHAMPLIN & KOEHLER, P.A., Minneapolis, Minnesota

Registered Patent Lawyer, 2010 – 2016

Law Clerk, 2007 – 2010

Advise entrepreneurial firms and Fortune 500 corporations in the United States, European and Asian markets to create robust intellectual property strategies that maximize intellectual property protection, reduce the risk of liability for infringement claims and drive competitive advantage by integrating legal, technology and business functions

  • Prepare and prosecute complex patent applications in a wide variety of electrical and mechanical arts
  • Prepare patentability and clearance opinions
  • Draft license agreements, including multi-national end-user license agreements, joint development and supplier agreements
  • Perform due diligence analysis of intellectual property assets for mergers and acquisitions
  • Manage the firm’s worldwide patent and trademark portfolios, through collaboration with local counsel, on matters pending before international patent and trademark offices
  • Initiate and defend trademark opposition and cancellation proceedings before the U.S. Trademark Trial and Appeal Board and internationally

REPRESENTATIVE ARTS:

  • Aerospace and defense: unmanned aerial vehicle control systems, autonomous collisions avoidance systems for vehicle control, synthetic air data systems, pressure vessel systems
  • Clean energy: wind turbines, solar preheating systems
  • Electronics: light-source modules, robotic storage and retrieval systems
  • Energy, utilities and power systems: field and plant networks, power adapters and converters
  • Healthcare: medical and surgical devices
  • Manufacturing: automotive testing and charging equipment, mechanical testing and simulation systems, three-dimensional modeling (additive manufacturing) systems
  • Oil and gas: pressure, temperature, flow, level and safety measurement instrumentation; integrated control systems; valve automation systems; coated piping systems; marine and offshore tank level measurement equipment; geological fractal analysis of natural systems
  • Software: computer operating systems, linguistic analysis systems, mobile devices
  • Telecommunications: data carriers, video sequence and video signal switching systems, compression-encoding and storage media systems

MITCHELL HAMLINE SCHOOL OF LAW, Saint Paul, Minnesota

Adjunct Professor, IP Appellate Practice Law School Class, 2016

  • Co-taught a course on specialized legal writing and oral advocacy skills