ABOUT US

 

With over 70 years of combined experience in handling matters at the intersection of patents and business, our team offers solutions that are uniquely designed to meet the needs and objectives of our clients.

 

We assist patent owners to monetize their patent portfolios by either sale or transfer of rights.  We facilitate transactions between investors and patent owners that enable the monetization of patent assets for the benefit of both parties.

We Operate at the Intersection of Patents And Business.

As part of our services we conduct infringement and invalidity analysis, identify commercial uses and advise on the development of the patent portfolio to maximize its potential.

PRESIDENT

 

Vic Siber's provides counsel to national and international clients to implement intellectual property asset protection programs, patent litigation, and transactional matters. Through his comprehensive perspective, Vic serves his clients in leveraging their portfolios and optimizing their commercial value through strategic actions.

GENERAL COUNSEL

 

Mr. Madbak’s focuses on the acquisition, protection and licensing of patent portfolios. He advises clients on patent portfolio maximization and monetization, patent validity/infringement, and freedom-to-operate. Mr. Madbak represents an array of clients in licensing negotiations with competitors and patent holding companies, including

His previous in-house experience as Chief Intellectual Property Counsel of IBM Corporation gives him a depth of comprehension that allows him to understand his clients’ situations and assist them in finding practical solutions. Vic is a frequent speaker and presenter at IP conferences as a recognized expert on various aspects of intellectual property asset protection.

He has advised numerous clients in the acquisition of technology companies as well as the formation of joint ventures, assisted in negotiation of merger agreements and spearheaded due diligence reviews.

 

Accomplishments include:

  • Developed strategic patent portfolio relating to cutting edge health technology for a medical device manufacturer including the handling of patent prosecution and portfolio management.

  • Assisting clients that acquire and license intellectual property to maximize value for their clients in evaluation of patent portfolios that are potential acquisitions targets. Working to determine enforceability of patents, conducting due diligence regarding patent infringement, creating valuation models to assist clients, and negotiating agreements to consummate deals.

  • Performd patent portfolio valuation for patents of distressed technology companies for clients, investors in security instruments in technology companies. Provides clients with evaluation of value of patent portfolios under scenarios of licensing, dissolution, or sale of assets.

  • Drafted and negotiated patent license agreements between multinational technology companies.

  • Handled patent prosecution matters and portfolio management for foreign multinational information technology equipment company. Management includes monitoring competitor products and patents, advising regarding clearance and cohesiveness of protection, maintenance, and enforcement.

  • Managed patent portfolio for electronic exchange that allows trading in number of financial derivatives. Monitors competitor products and patents, advises regarding clearance and cohesiveness of protection, maintains, and enforces management.

  • Assisted telecommunications company in-house attorneys, providing consulting services for difficult IP issues, including litigation, portfolio development, licensing, and evaluation of acquired patents. Advised on prosecution matters in U.S. and Europe to help obtain broadest possible protection, performed regular analysis on target portfolios under consideration, and negotiates purchase agreements for portfolios.

  • Engaged by employee-owned hedge fund sponsor to assess existing patent litigation for companies client had invested in to quantify risks associated with potential favorable or unfavorable investment.

 

 

the licensing of so-called “essential” patents relating to various technologies.  He specializes at conducting patent portfolio due diligence analysis in the context of strategic alliances and mergers and acquisitions.

Mr. Madbak regularly advises financial organizations, including hedge funds and venture capitalists, on the valuation of patent portfolios. His proprietary portfolio valuation models have been used by his clients to gain a better understanding of the IP assets of certain companies, such as Eastman Kodak and Palm.

Mr. Madbak’s advice factors in, whenever appropriate, the client’s business reality, keeping in focus the client’s business goals and financial capabilities.

 

Mr. Madbak's technical background comprises working as a systems design engineer in Silicon Valley with the research and development group at KLA-Tencor, the world leader in semiconductor testing equipment. As an electronics engineer, Mr. Madbak designed and managed the development of printed circuit boards (PCB) and Application Specific Integrated Chips (ASIC).

 

Representative Portfolio Management Experience:

  • Conducted valuations of the patent portfolios of Palm, AT&T Mobility, NEC and Eastman Kodak.

 

  • Represented clients in cross-licensing and licensing negotiations with competitors and various patent licensing companies, including InterDigital, IPCom, Acacia and RPX.

 

  • Advised clients on patent pooling and valuation in the context of M&A transactions and strategic alliances.

 

  • Advised hedge funds and other financial institutions on the likelihood of success of various patent litigations, reexamination and interferences in the U.S., as well as oppositions and nullity proceedings abroad.

 

  • Managed a team of attorneys, paralegals and contractors in the due diligence relating to Walmart’s acquisition of Vudu.

 

 

 

PATENT ASSET LICENSING