Alan D. Minsk: Lawyer with Lane Powell PC

Alan D. Minsk

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Seattle,  WA  U.S.A.
Phone206.223.7056

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Experience & Credentials
 

Practice Areas

  • Intellectual Property and Technology
  • Startups and Emerging Companies
 
University University of California, Berkeley, B.S., Astronomy Phi Beta Kappa, Departmental Citation, Astronomy Department; University of California, Berkeley, M.A., Physics
 
Law SchoolHarvard Law School, J.D., 1991
 
Admitted1991, California; U.S. Patent and Trademark Office. (Not admitted in Washington)
 
Memberships Washington State Patent Law Association (Member, Mentoring Committee, 2011-2012).
 
Biography

Areas of Practice

Alan Minsk focuses his practice on developing and implementing strategies for protecting clients' intellectual property and counseling clients with regard to intellectual property issues that arise during the course of their business operations. He provides services that include identifying potential innovations in a client's products and services, determining an effective strategy for protecting those innovations, patent application drafting and patent procurement, patent portfolio evaluation and the development of strategies for increasing the value of patent portfolios, due diligence for purposes of product clearances, mergers, acquisitions and pre-litigation risk assessment, strategically focused portfolio development and management, and establishing and administering in-house patent programs for clients.

His experience as both an in-house counsel and as a member of a law firm enables him to provide solutions that take into account both the legal and business concerns of his clients. His corporate experience includes serving as associate general counsel and the sole in-house patent counsel for Openwave Systems (now known as Unwired Planet, NASDAQ - UPIP, which has a business model based solely on monetizing the patent portfolio he created), and as vice president and patent counsel at Intellectual Ventures (where he established processes used for the evaluation, acquisition and monetization of patent portfolios).

Alan's patent procurement experience includes patent application preparation and prosecution for technologies that include electronic payments, fraud detection, mobile device user interfaces, e-commerce business models, mobile payment applications, communications systems, software as a service ("SaaS") business models, cloud-based applications, messaging systems, search methods, semiconductor processing, flash memory, imaging arrays, radar systems, lasers, signal and image processing methods, neural networks, adaptive control systems, optical computers and wireless data services. He has extensive experience as a patent strategist, concentrating on the development and strategic management of patent portfolios, and has represented clients ranging from start-ups to publicly traded companies.

Professional Experience

· Kilpatrick Townsend & Stockton, Partner (2006-2012)

· Openwave Systems, Associate General Counsel, Director and Patent Counsel (1999-2006)

· Intellectual Ventures, VP and Patent Counsel (2003-2004)

· Coudert Brothers, Attorney (1997-1999)

· Limbach and Limbach, Attorney (1991-1997)

· ESL, Inc., Senior Engineer (1986-1988)

Practice Group and Specialty Team Memberships

· Intellectual Property and Technology

· Startups and Emerging Companies

Representative Matters and Clients

Developed a multi-faceted strategy for addressing the risks posed to a client by a competitor's much larger patent portfolio, after the competitor approached the client about taking a license to patents that the competitor claimed covered the client's products. The plan included performing an infringement and validity analysis of the patents, addressing the competitor's inaccurate projections of the client's revenues and profits, determining which assets in the client's patent portfolio were (or could be made) relevant to the competitor's products, and developing additional patent assets for the client that covered the competitor's products. The result was to increase the value of the client's patent portfolio relative to that of the competitor, and provide support for a patent cross-license with a payment being made to the competitor that was significantly less than the amount initially demanded.

Alan has represented the following companies in developing in-house patent programs, and managing and developing patent portfolios:

· NetSuite; Jawbone; Roundbox; Advanced Maglev Systems; Zuora; Decide; Support.com

Publications

· "A Key Obstacle to Implementing a Patent Strategy and One Way to Overcome It," Lane Powell White Paper (December 23, 2013)

· "Patent Protection as Investment and Insurance," Corporate Counsel magazine (May 6, 2013)

· "Is There Justification for Greater Transparency in Patent Transactions?" Patently-O blog, Guest Post (March 21, 2013)

· "Innovation, Development and the In-House Patent Program," Law360 (December 10, 2012)

· "Protect Your Company - And Increase its Value With a Strategic Patent Portfolio," Seattle Business magazine (October 2012)

· "Lane Powell Brings In Tech Patent Atty From Kilpatrick," Law360, Interviewed (June 25, 2012)

· "Old Model: Patents Protect Products. New Model: Patents Themselves Are Products," Forbes magazine's CIO Central (June 1, 2012)

· "The Patentability of Algorithms: An Update on the Status of the Current Doctrine," 9 Santa Clara Computer & High Tech. L.J. 233 (1993)

· "The Patentability of Algorithms: A Review and Critical Analysis of the Current Doctrine," 8 Santa Clara Computer & High Tech. L.J. 251 (1992)

Speaking Engagements

· "Intellectual Property Issues For Prospective Investors," Northwest Entrepreneurs Network, Early Stage Investment Forum (May 9, 2008)

· "Developing a Patent Strategy," Open Source Software Group (2006)

Awards and Honors

· Listed in the Intellectual Asset Management Patent 1000, "The World's Leading Patent Practitioners," Patent Prosecution (2013)

· Top Patent Prosecutor, The Patent Research Review (2011)

Professional and Community Activities

· Washington State Patent Law Association
- Member, Mentoring Committee (2011-2012)

 
ISLN901618175
 

Documents by this lawyer on Martindale.com

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A Key Obstacle to Implementing a Patent Strategy and One Way to Overcome It
Alan D. Minsk, December 27, 2013
Many articles have been written that discuss the importance of having a “patent strategy” and why investing in a patenting effort may have substantial value for a company. These articles also discuss why a driver for such a strategy should be the business goals of a company and not...
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Office Information

Alan D. Minsk

1420 Fifth Avenue, Suite 4200
SeattleWA 98111-1302




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