Overview
IPotential specializes in helping companies create, manage and execute world-class Intellectual Property (IP) strategies to obtain the optimal value from their IP assets. IP assets, such as patents, copyrights and trade secrets, are already important sources of business revenue. For example, patent licensing alone has been estimated at $110 billion for 2000 and is expected to reach $500 billion by 2015.
While such figures are impressive, it is generally recognized that many companies vastly underutilize their IP assets - IP has the potential to deliver value in many ways in addition to generating revenue.
Many companies have come to realize that managing IP assets to their full potential is a tremendous opportunity for enhancing their competitive position and gaining business advantage. Equally important is the value IP has in helping to reduce the risk from others seeking to enforce their IP rights as well as to create opportunities for moving into new markets. Reflecting this growing realization of the importance of IP to business, nearly every Fortune 500 company with a technology-based core competency maintains an IP asset management function today. The key to taking full advantage of IP assets, however, is to view them as business assets and to manage them accordingly - as part of a company's comprehensive strategic plan.
IPotential brings together the legal, technical and business expertise necessary for technology-based companies to manage their IP assets as business assets. Our breadth and depth of expertise in using IP as a business asset enables us to team with our clients to help them define their business objectives and create the right strategy to use IP to achieve those objectives. Because of our experience, our strategies are not just "pearls of wisdom," we identify concrete actions and concrete metrics that allow our clients to deliver on that strategy and to continue to deliver value throughout the complete lifecycle of their IP assets. Also important, especially in today's economy, is our experience at highly cost-effective approaches for implementing IP management strategies.
IPotential was formed in 2003 by Ron Epstein and Joe Chernesky. They have had leadership roles in IP asset management at Intel, Boeing and Brocade Communications. Epstein and Chernesky came to the conclusion, based upon firsthand experience, that IP must be managed as a strategic asset in order to be fully utilized. Years of direct bottom-line responsibility for delivering value to shareholders from their employer's IP assets have allowed Epstein and Chernesky to see the benefits of moving from the traditional view of managing IP assets as a collection of individual pieces to viewing IP strategy as a cornerstone of a comprehensive business strategy. Taking their cue from corporate finance, which has long recognized the need for strategic management of financial assets, Epstein and Chernesky formed IPotential in order to serve as strategic advisor, broker, negotiator and value creator to leading technology companies.
Ron Epstein
CEO
Ron Epstein has 20 years of experience in developing and optimizing IP asset portfolios. Prior to founding IPotential, Ron was vice president and general counsel at Brocade Communications Systems, Inc. where he created and executed on Brocade’s intellectual property strategy, filing for more than 80 patents and over a 24-month period and defending the company in three patent litigations filed during that period. Before joining Brocade, Ron served as Director of Licensing at Intel Corporation, where he was responsible for the company’s IP licensing strategy, including defense against assertions, and the creation of Intel’s value licensing program.
Ron built his legal career at Wilson, Sonsini, Goodrich and Rosati as a member of the Technology Licensing Group, where he specialized in helping clients minimize liability under the patent portfolios of leading companies such as IBM, Lucent, and Intel; and negotiate patent cross-license agreements in conjunction with complex patent litigation settlements.
Ron holds a Bachelor of Science from Duke University and a J.D. from the School of Law, University of California, Berkeley. Ron is an active member of the Licensing Executives Society.
Joe Chernesky
President & COO
Joe Chernesky has 12 years experience in managing IP assets at leading technology companies including Boeing and Intel. From 2001 to 2004, Joe served as vice president of Boeing Management Company (a subsidiary of The Boeing Company responsible for its IP policy, strategies and initiatives). He also served concurrently as Director of Intellectual Property Business (IPB) for The Boeing Company. In this role, he created and managed the Corporate Technology Licensing Group and was responsible for technology out-licensing, IP donations, and IP-related M&A and divestiture activities.
Prior to Boeing, Joe held several management positions at Intel in Intellectual Property Licensing and Business Development, New Product Development, and Corporate Treasury. As Senior Manager, Licensing and Alliances, Joe was responsible for developing intellectual property licensing strategy and managing patent and technology licensing activities.
Joe holds a Bachelor of Science and Masters of Business Administration from the University of Arizona. He is an active member of the Licensing Executives Society.
Joe is proud to have served for ten years as a U.S. Naval Officer in various active and reserve assignments throughout the world.
Bill Beyda
Vice President, Technology
Bill Beyda is an experienced Silicon Valley executive with a distinguished 24-year career in engineering, technology, IP creation, patent licensing, and portfolio management. He is also a prolific inventor holding 170 issued U.S. patents.
Bill most recently served as Vice President of Technology and Innovation with Siemens Communications. Previously, he was Vice President of Research and Development for Siemens throughout the United States. In both of these roles, Bill was responsible for technical management of the Siemens U.S. patent portfolio and led numerous licensing and patent sale transactions. He began his engineering career at ROLM, which was acquired by IBM, where he served in several technology and management roles.
He periodically teaches Data Communication Classes at U.C. Berkeley Extension and is the author of a text book, Data Communication: From Basics to Broadband, now in its fourth edition and in use at universities around the world.
Bill holds a B.S. in Electrical Engineering and an M.S. in Engineering Management, both from Stanford University, and is a Senior Member of the IEEE.
Steve Knauer
Chief Patent Counsel
Steve Knauer has 15 years of experience in prosecuting and analyzing technology-related patents. Prior to joining IPotential, Steve was IP Counsel for Gemplus where he managed all of the company’s IP matters originating in the Americas including patent litigation, defending the company against patent assertions, analyzing the infringement of the Company's patents, creating assertion-based patent licensing programs, and patent and trademark prosecution management. Prior to Gemplus, Steve was a Partner at Flehr, Hohbach, Test, Albittron & Herbert where he prepared and prosecuted hundreds of patent applications on sophisticated technologies, including semiconductor devices, telecommunications systems, computer networks, software, nanotechnology, and business methods . In addition, Steve counseled clients on strategic IP matters, such as developing and managing their patent portfolios and providing validity and infringement analysis. Before Steve began his legal career, he was a systems engineer at Rockwell International. Steve holds a Bachelors of Science in Electrical Engineering from the University of California , Los Angeles and a J.D. from the National Law Center at the George Washington University . Steve is also a member of the California State Bar and is registered to practice before the U.S. Patent and Trademark Office.
Zack Higgins
Director of Patent Strategy and Analysis
Zack Higgins has 11 years of experience in patent strategy, analysis, and litigation. Before joining IPotential, Zack was a partner at Kirkland & Ellis and an associate at Morrison & Foerster. Zack managed all aspects of patent cases regarding diverse technologies, for Fortune 500 and other companies. Zack successfully represented plaintiffs and defendants in a range of jurisdictions including the Eastern District of Texas, and helped secure total victory in the largest patent case in the history of the International Trade Commission. Zack also counseled clients regarding patents and other intellectual property in contexts including licensing, potential litigation, and patent portfolio analysis. Zack focused on the technical analysis of patents, wrote software code and used computers intensively to facilitate that analysis, and enjoyed a paperless office. Before becoming a lawyer, Zack worked in Tokyo as a computer graphic designer for a Japanese advertising agency.
Zack graduated from Harvard Law School, cum laude, and earned a B.A. in history and international studies from Yale University, cum laude, with distinction in both majors.
Mark Wilson
Vice President, Marketing & Program Management
Mark Wilson is a seasoned Silicon Valley executive with over 20 years experience in marketing, IP management and patent licensing.
Prior to joining IPotential, Mark served as Licensing Director in Hewlett Packard’s IP Licensing group with emphasis in developing and managing outbound licensing programs. Before HP, he was vice president, IP Management with PCTEL, responsible for assertion licensing, business analysis and portfolio management.
Prior to his specialization in IP management, Mark developed a broad and deep background in high technology marketing, product management and operations working with leaders in the computer and semiconductor industries. Mark held vice president positions at Quantum Corporation, IBM and Cirrus Logic. Additionally, he was a marketing director with Fujitsu America, VeriFone and NARUS, Inc. Mark earned an MBA from Boston University and a BSEE from the University of Massachusetts.
Phil Hartstein
Director, Patent Brokerage Services &
Sr. Licensing Manager
Phil Hartstein has 8 years of experience managing various aspects of intellectual property and IP-based transactions. Prior to joining IPotential, Phil worked with Ocean Tomo in founding the west coast presence for patent analysis and transaction services. Over the course of three years, Phil’s practice grew to include patent analysis, portfolio mining, and strategic advisory around patent valuation and sales for firm clients. Phil founded IP Capital Management, an IP centric advisory firm, which he later merged into Ocean Tomo’s operating business in 2004 to form the basis for their Patent Analytics group.
Phil started his career in Intellectual Property by working for Knobbe Martens Olson & Bear where he specialized in Internet, EE, computer, and Medical Device related technologies. From there, he refined his understanding of IP and patents as strategic assets by aggressively developing a patent portfolio for a high-tech startup. In that IP management role, he managed more than $3M of investment over a three year period and developed more than 60 patent families.
Phil holds a Bachelor of Science from Cal Poly SLO.
Mami Takada
Senior Analyst
Mami has held positions at Ford Motor Company, and NGK Spark Plug Manufacturing. Mami has an MBA from Harvard University, a MS Degree with honors in Automotive Engineering from the University of Michigan, and a BS in Mechanical Engineering with honors from Northwestern University.
Cindy Hoang
Director of Patent Administration
Cindy brings 9 years of patent experience to the IPotential team. Prior to joining IPotential, she was a paralegal at various firms in the bay area; namely, Gray Cary, Morrison Foerster, and Bozicevic Field and Francis. Cindy has a broad base of industry experience, working with clients in high technology, life sciences, and medical devices.
Affiliates
Michael Pierantozzi
Michael is a technology entrepreneur and intellectual property (IP) business strategist based in Silicon Valley. He is a former Managing Director at HP’s IP Licensing group, where he led efforts to increase revenue from the company’s IP portfolio to over $300 million per year within the group’s first three years, and implemented a funded IP acquisition program. Michael currently focuses on strategies for increasing liquidity in the global IP markets, while helping businesses implement strategies that create, protect and leverage their IP for profit. Michael holds an M.S. in Engineering from the Management, Science and Engineering program at Stanford University. He also holds a B.S. in Mechanical Engineering from Drexel University.
Keith Lutsch
Special Counsel
Keith is a Partner at the Law Firm of Wong, Cabello, Lutsch, Rutherford & Brucculeri, and provides expert patent and technical analysis in support of IPotential client activities. Keith currently focuses on electronics and computer hardware and software technologies. Keith holds a J.D., with honors from The University of Texas School of Law and a B.S. in Electrical Engineering, Summa Cum Laude, from the University of Cincinnati.
Keith Rutherford
Keith is a Partner at the Law Firm of Wong, Cabello, Lutsch, Rutherford & Brucculeri, and provides IPotential with years of outside law firm experience coupled with extensive in-house legal experience to bear on solving clients’ problems. Keith currently focuses on patent litigation, IP strategy, pre-litigation conflict resolution, licensing/deal negotiations, analysis of patent portfolios both for offensive and defensive purposes, opinion work, and prosecution management. Keith holds a J.D., with honors, The University of Texas School of Law, and a B.S. in Petroleum Engineering, with honors, The University of Texas.
Lou Brucculeri
Lou is a Partner at the Law Firm of Wong, Cabello, Lutsch, Rutherford & Brucculeri, Lou currently focuses on patent disputes and counseling in the electronics and software fields. In particular, Mr. Brucculeri’s practice includes litigation, licensing, technology, agreements and counseling regarding the strategic implementation of corporate patent programs and policies. Lou holds a J.D., with honors, The University of Texas School of Law and a B.S. in Electrical Engineering., Tulane University.
Contact Us
To discuss your patent sale or acquisition needs or for any other questions you may have, please call 650.572.9500 or e-mail: inquiry@ipotential.com
