Douglas, Senior Counsel, is a patent attorney with substantial experience in patent prosecution, global patent portfolio development and management, and technology transactions. As a former in-house attorney, Doug brings a highly client-centered focus to his practice.
Most recently, as Senior Counsel at the Hewlett-Packard Company, Doug worked on a wide range of IP projects, including software licensing, patent and technology licensing, patent assertions, patent sales, standards organizations, and litigation support, as well as creation of patent licensing pools with substantial revenue opportunity, and claim construction of patents needed in establishment of essential patents.
Previously, while working at Hitachi, Doug managed all IP law matters and developed IP strategy for the global hard disk drive (HDD). Doug was responsible for establishing the IP law department for the new company and provided and coordinated support for revenue generating licensing projects (joint development agreements, patent licenses and technology licenses). In this role, Doug oversaw patent infringement suits, both offensive and defensive, managed the worldwide patent and trademark portfolio to maximize IP value for the company, leading to the most valuable IP portfolio in the HDD industry.
While, at the International Business Machine, Doug managed the Tucson intellectual property department, overseeing all IP issues covering large storage systems and tape technology. While in this position, Doug, as the patent portfolio manager was also responsible for all IBM patents in the areas of storage, displays, printers and mobile computing. Duties included negotiating and preparing licensing agreements, comparison of IBM and competitor portfolios, and selection of inventions for domestic and international patent filings. Doug also worked on IP due diligence for corporate acquisitions and participated in setting up IP consortiums, such as Linear Tape Open (LTO). Doug worked to achieve IBM admission to DVD consortium.
Previous positions included Corporate Staff Attorney at IBM’s IP Headquarters which involved drafting and negotiating agreements for licensing of IP. Prior to that, Doug served as Senior Attorney where his duties included a range of IP issues: providing licensing support, adversely held patent studies, patent preparation and prosecution, trade secret, trademark and copyright issues.
Doug is admitted to the State Bar of California and registered to practice before the US Patent Office.