Larry M. Goldstein

[email protected]/
Cell: +1-901-654-8085

SUMMARY

• Patent lawyer registered with the United States Patent & Trademark Office.
• Technology expertise in all areas of ICT (information & communication technology), particularly wireless communication and wire line cable communication, including products and systems, as well as hardware and software.
• Service expertise in patent quality:
  • Expert witness work related to patents and patent quality.
  • Evaluating the quality of patents and patent claims.
  • Obtaining high-quality patents.
  • Creating corporate programs for producing high-quality patents.
  • Creating patent pools.

PUBLICATIONS

• True Patent Value: Defining Quality in Patents and Patent Portfolios, (569 pages, True Value Press, July, 2013).  This book defines “quality” and “value” in high-tech patents and patent portfolios.  It seeks to answer the questions, “How can you know if a particular patent is high-quality or not?”, and “How do you know if a particular patent has economic value?”  The book includes:
  • Review of patent basics,
  • Patent evaluation techniques used by patent professionals specializing in quality,
  • 20 case studies of more than 50 patents, in which specific patents generated enormous advantages for companies (through victory in litigation, sale for significant sums, placement in a patent pool, or by supporting a fundamental technology),
  • Summary of lessons learned in easy Question & Answer format,
  • Glossary of more than 80 terms used in defining patent quality,
  • Very extensive Index of Names and Subjects related to concepts of patent evaluation.

• Technology Patent Licensing: An International Reference on 21st Century Patent Licensing, Patent Pools and Patent Platforms, (579 pages, Aspatore Books – Division of Thomson Reuters Legal Publishers, 2004). This is a pioneer book in the field of patent pools and corporate aggregations for patent licensing.  Co-authored with the initiator of the 3G Patent Platform.  Based on the authors’ experience in setting up the patent pool for 3G W-CDMA technology.  Includes:
  • Definition and intensive discussion of FRAND licensing,
  • Comparison of thee methods of licensing: bilateral, patent pool, and patent platform,
  • Evaluating the essentiality of specific patents to technical standards,
  • Terms and methods for creating a licensing program,
  • Antitrust/competition law in Europe, Japan, and the United States, related to aggregated patent licensing,
  • History of the 3G Patent Platform as a guide to creating any program for aggregated licensing of patents essential to a technical standard.

EXPERIENCE

PATENT LAWYER AND IP CONSULTANT,                                             2011 – present

Independent patent lawyer, providing services to clients in the areas of patent preparation & prosecution, patent claim analysis and patent valuation, and expert witness work related to FRAND licensing.

MARQERA, LLC,                                                                                      2010 – 2011

A patent brokerage firm offering patent evaluation and sales services to patent owners and companies seeking to buy patents.  Clients ranged from large international firms such as Intel and KPN, to moderate sized companies and sole inventors with significant patent portfolios.

General Counsel and Chief Patent Counsel

• Reviewed and evaluated the quality of portfolios ranging from a few patents to several hundreds of patents.  Advised on the purchase or sale of such portfolios.
• Prepared the technical and patent sections of Offering Memoranda for portfolios.

PATENT ATTORNEY AND IP CONSULTANT,                                            2008 – 2009

• Acted as an expert witness to Nokia Corporation, and to Broadcom Corporation, in U.S. and UK cases involving patent licensing, the essentiality of patents to technical standards, and FRAND licensing.
• Drafted and prosecuted patent applications in various areas of electronic communication.
• Quoted in the Wall Street Journal, June 9, 2008, in the article “WiMAX Patent Pool Is Planned”, about the possible effects of a WiMAX patent pool on licensing in 4G cellular communication.

SEDNA PATENT SERVICES, LLC,                                                           2005 – 2007

A consortium of leading U.S. cable television companies formed to develop and manage patent rights in the cable business.

General Counsel & Vice President of Intellectual Property

• Managed a U.S. and international portfolio of more than 1,000 patents and patent applications.
• Managed outside and in-company patent counsel as part of the portfolio management.
• Represented the company on two international patent pools which license patent rights essential to the implementation of various telecommunication standards.
• Analyzed patents to formulate bids in public patent auctions.

3G PATENTS, LTD.                                                                                 2000 – 2005

This organization created the patent pool for third generation W-CDMA cellular communication systems and products, including cellular handsets, chip components, and infrastructure.

Legal & Business Advisor

• Negotiated and drafted patent evaluation forms, patent licenses, and a Business Review Letter, with European patent lawyers, licensing agents, the Antitrust Division of the U.S. Department of Justice, and various Asian and European companies (including, among others, Alcatel, France Telecom, Fujitsu, KPN, LG Electronics, Mitsubishi Electric, NEC, NTT DoCoMo, Panasonic Mobile Communications, Samsung, Siemens, and Sony.)
• Delivered speeches on patent pools in Beijing and Tokyo.

EDUCATION

MBA, Northwestern University, Evanston, IL
JD, University of Chicago Law School, Chicago, IL
BA, Harvard University, Cambridge, MA

Resume current as of July, 2013

To Contact Larry M. Goldstein Click Here.