www.giplg.com
“The $5 Billion IP Law Firm”
“One of the Most Innovative IP Law Firms in U.S.”
Among the “World’s Ten Most Influential IP” Entities
Among the “Top 1000 IP Attorneys in the World”
Four of the “Top 300 IP Strategists” in the world
Among the “500 Leading Lawyers in America”
“Super Lawyers”
These descriptions in the press only partly reflect our success in achieving and exceeding our clients’ goals.
Since our founding, Global IP Law Group has sold more patents for more money than any other entity. We have also
secured hundreds of licenses to our clients’ patented technologies through conventional licensing and litigation. With
offices in the United States, and affiliates in Europe, and Asia, Global IP offers services, insight, and global resources to
large and small companies, independent inventors, and universities seeking value for their intellectual property assets.
The firm’s key characteristics include:
Unparalleled Success. We achieved the largest patent sale in history – the sale of the Nortel Networks patent portfolio
for $4.5 billion (US). We have sold other portfolios for nine and eight figure sums, as well as many in the seven figures.
Extensive Industry Connections. Based on our success and prominence in the patent field, Global IP has high-level
business and legal contacts in many different industries and at all major patent aggregators and licensing companies. As
a result, we get potential buyers, licensees, and defendants to focus on our clients’ patent matters.
Experience with Wide Arrays of Patent Portfolios. We have analyzed patent portfolios as small as a single patent
and as large as 45,000. These patents pertain to a multitude of industries and levels of technical complexity.
Preeminent Patent-Monetization Expertise in the Bankruptcy Arena. In addition to the Nortel Networks patent
sale out of bankruptcy, Global IP has worked on multiple other bankruptcy-related transactions, including advising the
Unsecured Creditors Committee on the East Kodak bankruptcy which included the sale of patents for $525 million (US).
We have particular expertise in this area.
Global Reach. Our team has access to global resources that dramatically expands access to the markets in which
client IP can be monetized. Our clients reflect this reach, and we have successfully sold patents for and to European and
Asian companies, as well as those from the Americas.
Value Enhancement through Prosecution and Claim Charting. Global IP includes patent attorneys with extensive
experience securing through prosecution the most valuable claims a specification will permit. Global IP often increases
the value of portfolios by counseling clients on market-informed prosecution strategy. Further, we develop extensive and
detailed claim charts to demonstrate the value of issued and pending claims.
Non-Hourly Billing. Global IP offers flexible billing options, including contingency, fixed-fee, and hourly arrangements to
meet client needs.
Few Conflicts. Although we represent Fortune 500 companies, smaller companies, and individual inventors, we remain
a small firm. As a result, Global IP avoids extensive conflict-of-interest issues found at larger firms.
The Global IP Model: Sales, Licensing, and Litigation
Global IP tailors its specific approach to each engagement based on client goals and the patent assets themselves. We
have refined a methodology for monetizing each patent portfolio that ensures we achieve the right balance of value
maximization, risk management, and expeditiousness.
Unlike traditional law firms, which generally use a “litigation first” model, Global IP evaluates other options, including a
patent sale. As leaders in the patent-sales market, we bring unique insight to the possible sale of our clients’ patents.
Often, our clients find the minimal risk and short timetable offered by a sale appealing.
Unlike pure patent brokers,
however, we also maintain a robust litigation option. Litigation can often achieve maximum value for more risk-tolerant
clients, or in situations where sale or licensing do not yield acceptable results.
Retention. Global IP offers several fee options to meet client needs. Many of our engagements are on contingency,
with rates varying depending on the nature of the engagement and the stage of proceedings at which success is
achieved. Other clients prefer fixed-fee or standard hourly billing, depending on the matter. We have the flexibility to
meet these client preferences.
Asset Identification and Defect Elimination.
Once we determine our client’s goals, Global IP identifies the
marketable patent assets. Too often, clients are not aware of all assets they own, correctable defects in title, and which
assets are the most valuable.
Determining the complete universe of assets and analyzing those assets early in the
process ensure that both the client and Global IP have an accurate understanding of the monetization possibilities.
Patent Analysis, Prosecution, Market Analysis, and Monetization Eﬀorts. Next, Global IP analyzes the patents
from legal, technical, and financial perspectives.
This process includes claim interpretation and analysis, evaluating
products in the marketplace for infringement and preparing charts establishing that infringement, and reviewing financial
information about the relevant markets. We also develop strategies for ongoing patent prosecution to maximize the value
of developing assets. Based on our overall findings, we consider the legal implications of each potential course of action.
The sales course involves identifying potential strategic buyers—operating companies that could use the patent assets to
gain strategic advantage against their competitors—and key contacts at those buyers. These buyers will often pay the
most for a patent portfolio, but they are also very selective in their purchases, so approaching the right contact with the
right materials is critical to ensuring their involvement. Based on our knowledge of the industry, we also identify the nonstrategic buyers (non-practicing entities) with an interest in the technology area to which the patents relate. Our
reputation with both types of patent buyers ensures that the patents we market get appropriate, high-level attention.
Litigation. When we determine that deal-oriented monetization efforts have or are likely to generate insufficient offers
relative to recoveries that might be achieved through litigation, Global IP initiates litigation as an alternative patentmonetization approach. Our extensive litigation experience is a key part of the value we bring to monetization efforts
because it ensures that our sales and licensing efforts are taken seriously.
Our Team
Cindy Ahn
Cindy Ahn is a partner of Global IP Law Group where she works on all
aspects of monetizing intellectual property, including sales and licensing with
a special emphasis on litigation. Ms. Ahn brings a broad base of intellectual
property knowledge founded on experience in both large law firm private
practice, as well as in-house practice. Ms. Ahn’s experience includes litigating
and managing complex patent litigations, IP counseling, and strategic
management of patent and trademark portfolios, as well as general corporate
matters.
Prior to joining Global IP Law Group, Ms. Ahn was the General Counsel, Corporate Secretary and Vice President of Legal
for Third Wave Technologies, Inc., a publicly traded molecular diagnostic company. At Third Wave, she managed all legal
matters, including maintaining a strategic IP portfolio and overseeing multiple patent litigations, the defense of one which
enabled the $580 million acquisition of the company.
Prior to moving in-house, Ms. Ahn engaged in private practice first at the patent boutique firm of Finnegan, Henderson,
Farabow, Garrett and Dunner and then at Kirkland & Ellis LLP, where she was a partner in the intellectual property group. Ms. Ahn specialized in patent litigations involving various technologies such as bio-chemical compounds, DNA diagnostic
and sequencing technology, and Internet and e-commerce networks.
At Global IP, Ms. Ahn counsels a variety of clients, from individual inventors to established companies on technologies
ranging from medical devices to semiconductors. Ms. Ahn has experience setting up licensing campaigns, including enduser licenses, that have resulted in both multiple multi-national companies and industry practitioners taking licenses.
Ms. Ahn obtained her J.D., with honors, from The Washington College of Law at American University where she was the
Federal Circuit Editor of the American University Law Review. She holds a B.S. in Biology from the University of Illinois at
Urbana-Champaign. Ms. Ahn is registered to practice before the United States Patent and Trademark Office and is
licensed to practice in Illinois, Washington, D.C., and Wisconsin.
Contact: [email protected]
312-241-1508
David Berten
David Berten is a founder and partner of Global IP Law Group. He works on
all aspects of monetizing clients’ patent portfolios, and directs the firm’s
litigation efforts. Mr. Berten works out of Global IP’s Chicago office.
Mr. Berten has been the principal IP advisor on several of the largest patent
transactions in history, with transaction value in excess of $7.5 billion.
Mr. Berten led Global IP’s representation of Nortel Networks regarding the
monetization of Nortel’s patent portfolio from late 2009 through the sale of the patents in June 2011. Global IP’s
representation culminated in a record-setting sale of $4.5 billion for Nortel’s important telecommunications patents to a
consortium that included Apple, Ericsson, Microsoft, RIM, and other companies.
Mr. Berten was the primary IP advisor to Alcatel-Lucent regarding the companies successful $2.6 billion secured debt
financing, which was secured in part by Alcatel-Lucent’s more than 40,000 patent assets.
Mr. Berten advised the Unsecured Creditors’ Committee on patent matters in the Eastman Kodak bankruptcy
proceeding. Kodak’s restructuring included a transaction involving more than 3,000 patent assets for approximately $525
million.
In addition to Fortune 500 clients, Mr. Berten also represents smaller companies and independent inventors in their
patent monetization efforts and leads the firm’s litigation efforts.
Prior to founding Global IP Law Group, Mr. Berten was an associate at Kirkland & Ellis, and a partner at Bartlit Beck
Herman Palenchar & Scott and Competition Law Group. His representations concentrated heavily in intellectual property
matters including patent litigation involving medical devices, advanced thermal barrier coatings, financial products,
vehicle navigation systems, genetic markers, machine vision systems, bar code systems, and cellular-based data entry
devices. His litigation experience includes involvement in many European actions, including Oral and Opposition
Proceedings with the European Patent Office and Dutch patent infringement actions and appeals.
Mr. Berten has received numerous peer-reviewed awards. He was named one of the top IP Strategists in the world in
2011 and 2012 by IAM Magazine, and was selected as one of the 500 Leading Lawyers in America (and one of 15 in
intellectual property) by Lawdragon in 2012. He is AV (highest) rated by Lexis-Nexis/Martindale-Hubbel and has been
named as an Illinois "Super Lawyer" (top 5%) in intellectual property litigation every year since 2005. In 2009, he was
elected a Life Fellow of the American Bar Foundation. He is a member of Trial Bar for the United States District Court for
the Northern District of Illinois.
Mr. Berten holds a JD (cum laude) from the University of Wisconsin Law School where he served as an Articles Editor for
the Wisconsin Law Review, was awarded membership in the Order of the Coif, was a member of the National Moot
Court team, and was chosen as Best Oral Advocate by the Wisconsin Supreme Court. Mr. Berten attended the
University of Virginia School of Architecture and holds a degree in Urban Planning.
Contact:[email protected] 312-241-1502
Alexander Debski
Alexander Debski is an associate in the Chicago office.
Before entering law school, Mr. Debski worked in the IT consulting industry for
Accenture as part of a test team for software implementation. He also gained
significant experience in the telecommunications industry as part of a product
development team in Motorola’s mobile devices division.
Mr. Debski focuses his practice on all aspects of patent monetization and enforcement, including licensing, litigation, and
sales. His clients range in size from individual inventors and small start-ups, to large corporations.
Mr. Debski received a J.D. from Loyola University Chicago School of Law, where he was also a part of the negotiations
team and received an advocacy certificate.
He holds a B.S. in General Engineering from the University of Illinois at
Urbana-Champaign. Mr. Debski is licensed to practice law within the state of Illinois.
Contact: [email protected]
312-241-1507
Richard Dennerline
Richard Dennerline is of counsel to Global IP Law Group where his practice
focuses on all aspects of analysis, enforcement, and monetization of clients’
patent portfolios as well as defensive acquisition and licensing of patent rights.
Mr. Dennerline works out of Global IP’s Chicago office.
Prior to joining Global IP Law Group, Mr. Dennerline was patent counsel to
Competition Law Group where his representations centered on patent portfolio
sale and licensing as well as counseling on enforcement of patent rights through licensing and litigation, particularly in the
technologies of smartphones, WiMAX (4G), radio telephony, wireless navigation, antenna signaling, mobile
merchandising, and mobile computing.
Mr. Dennerline also has a depth of experience as a business advisor to clients, including start-ups, venture capitalbacked, and public companies, and has served as in-house and external general counsel to corporate clients. He is
experienced at advising clients at the board and executive level on their intellectual property monetization and other
corporate strategies.
He has handled as lead corporate and intellectual property counsel numerous acquisitions,
mergers, divestitures, venture capital financings and other general corporate and intellectual property transactions.
He previously was a partner of Freeborn & Peters where he led, structured and handled intellectual property and
corporate transactions and prosecuted trademark portfolios, and an associate of Sidley & Austin, handling commercial
and corporate finance deals and structuring financial work-outs for money center financial institutions.
Mr. Dennerline received his J.D., magna cum laude, from The University of Michigan Law School, where he was awarded
membership in the Order of the Coif, received the Saul L. Nadler Award for outstanding achievement in courses relating
to corporate law, commercial law, creditors’ rights, and securities regulation, and served as a senior judge instructor of
writing and advocacy. Mr. Dennerline attended Purdue University Schools of Engineering where he received his B.S. in
Industrial Engineering, with highest distinction. Mr. Dennerline is registered to practice before the United States Patent
and Trademark Office and is admitted to practice in Illinois.
Contact:[email protected] 312-241-1111
Nicholas Dudziak
Nicholas Dudziak is a partner in the Chicago office.
He is involved in all
aspects of patent monetization and enforcement, with a particular focus on
licensing and patent litigation, including trial, appellate practice, Markman
hearings, and discovery strategy and management.
In 2012, Mr. Dudziak was part of a team that achieved a favorable settlement
on behalf of his client Revenue Realization, LLC in the matter of Revenue
Realization, LLC v. H&R Block, Inc. et al., No. 11-638 (W.D.Mo.), a case involving the use of computer systems and the
tax return information they contain.
Prior to joining Global IP, Mr. Dudziak was a litigator at the intellectual property boutique firm Niro, Scavone, Haller, & Niro,
where he represented clients in dozens of litigation matters involving a diverse array of technologies in jurisdictions
throughout the United States. Earlier in his career, Mr. Dudziak prosecuted patents, prepared legal opinions on patent
infringement and validity, and performed due diligence evaluations.
Nicholas Dudziak received a J.D. (cum laude) from The John Marshall Law School.
He holds a B.S. degree in
Mechanical Engineering from the University of Illinois-Chicago, where he captained UIC's Division I soccer team. Mr.
Dudziak is registered to practice before the United States Patent and Trademark Office and is licensed to practice within
the state of Illinois.
Outside of his legal activities, Mr. Dudziak is a sports director and board member of the Ukrainian-American Youth
Association (CYM) as well as a coach, manager, and player for a Ukrainian men’s amateur soccer club.
Contact:[email protected] 312-241-1505
Vincent Frantz
Vincent Frantz joined Global IP in September 2013 as an associate in the
Chicago office, after previously working for the firm as a summer associate
and school-year law clerk.
Mr. Frantz focuses on patent transactional matters, specifically in patent portfolio valuation. As he participates in patent sales and licensing campaigns, he
produces complex valuation materials to aid in the monetization efforts. While
at Global IP, he created a patent licensing model to help obtain a seven-figure license from a Fortune 500 company.
Mr. Frantz holds a JD (cum laude) from Chicago-Kent College of Law where he received a Certificate in Business Law.
During law school, he volunteered as a student intern for the Illinois Institute of Business Law, where he helped review
proposed Illinois business legislation with professors and practicing attorneys throughout the state. He earned his B.S. in
Finance from Miami (OH) University, where he focused on portfolio management. Mr. Frantz is licensed to practice law
within the state of Illinois.
Contact: [email protected] 312-241-1516
Graham Gerst
Graham Gerst is recognized as a leading lawyer in the patent field at the
national level. He has testified before Congress on patent issues, as well as
spoken before the U.S. Federal Trade Commission and the U.S. Department
of Justice on proposed government responses to activity by non-practicing
entities. Intellectual Asset Management Magazine included him among its 300
leading IP strategists worldwide for 2013, and Super Lawyers Magazine
named Graham as one of the Top 100 Lawyers in the state of Illinois.
Graham works on all aspects of clients’ efforts to monetize their patents, including sales, licensing, and litigation. He is
experienced with a wide array of technologies, including telecommunications, consumer electronics, digital imaging and
color reproduction, data networking, optical data transmission, computer architecture, computer circuitry and
semiconductors, packaging, biotechnology, and oil and gas.
One of Graham’s more notable recent achievements was the successful sale in 2012 of two patent portfolios on behalf of
his client, Aware, Inc., for a combined $91 million. Aware's market capitalization immediately prior to the announcement
of these transactions was just $77 million.
Immediately before joining Global IP, Graham served as Senior Counsel to the Deputy Attorney General at the U.S.
Department of Justice. In that position, he vice-chaired the Justice Department’s Task Force on Intellectual Property and
was appointed Deputy U.S. Coordinator for International Intellectual Property Enforcement. He also managed a portfolio
of technology-related and national-security issues for the Deputy Attorney General, including computer forensics,
information sharing, biometric data collection and management, and the Department’s participation in the Committee on
Foreign Investment in the U.S. (CFIUS), the body that reviews foreign acquisitions of U.S. technology for national-security
concerns. Graham held the U.S. government's highest level of security clearance. Finally, during his tenure, Graham was
appointed Special Assistant U.S. Attorney in the District of Columbia and was lead counsel on multiple successful
criminal jury trials.
Before that experience, Graham spent nine years in the Intellectual Property group at Kirkland & Ellis LLP, where he was a
partner. He specialized in patent litigation, handling matters involving a wide array of technologies, including
semiconductor design and manufacture, electronic circuitry, consumer electronics, the internet, biotechnology, oil and
gas, automotive, kitchen appliances, and packaging. He has additional expertise in false-advertising and trademark law
and is a member of the Trial Bar for the Northern District of Illinois.
Graham received a J.D., cum laude, from the University of Chicago law school, where he was an editor on the University
of Chicago Law Review. After law school, he clerked for Judge E. Grady Jolly on the U.S. Court of Appeals for the Fifth
Circuit. Graham received his B.A., with honors and cum laude, from Williams College.
Mr. Gerst’s legal activities outside of the office include serving on the Board of Governors of the Seventh Circuit Bar
Association and on the Advisory Board of the Center for Intellectual Property Law & Information Technology at DePaul
University Law School. He is a frequent speaker, both at conferences and in the press, on IP issues, and he also taught
trial advocacy at the University of Chicago Law School. In his non-legal capacity, he serves on the Board of Directors of
the Chicago Foundation for Education (former Chair) and is a member of the Economic Club of Chicago. He is a past
Chair of the Metro Board of Metropolitan Family Services.
Contact:[email protected] 312-241-1504
Brian Kebbekus
Brian Kebbekus is an associate in the Chicago office.
Mr. Kebbekus handles matters involving a wide array of technologies, but he
has particular expertise with technologies and standards related to wireless
and wireline communications, including WiFi, GSM, CDMA, LTE, Bluetooth,
DSL, and MoCA.
Mr. Kebbekus holds a J.D. (magna cum laude) from Chicago-Kent College of
Law, where he served as Executive Articles Editor on the Chicago-Kent Law Review and was awarded membership in
the Order of the Coif. He earned his B.S. degree in Electrical Engineering from the George Washington University in
Washington, DC. While studying at GW, he specialized in control systems and integrated circuit design. Mr. Kebbekus is
licensed to practice law within the state of Illinois.
Contact: [email protected] 312-241-1513
Elizabeth Koehn
Elizabeth Koehn is a partner in the Chicago office. Prior to joining Global IP,
Ms. Koehn was an associate with Hogan Lovells US, LLP (previously Lovells,
LLP). While at Hogan Lovells, Ms. Koehn handled matters with the Intellectual
Property Media Technology, Litigation, and International Arbitration groups.
In addition to litigating in U.S. Federal District Court, Ms. Koehn was selected
from Hogan Lovells’s U.S. offices to work for seven months as part of the
firm’s international arbitration team at its headquarters in London.
While in London, she litigated claims in bilingual
proceedings before the London Court of International Arbitration valued at more than $50 million, representing clients
from Japan, Greece, Mexico, and Canada.
During the course of these representations, Ms. Koehn developed an
expertise in reasonable patent royalty rates related to 3G technology and other cellular technology. In addition to her
litigation experience, Ms. Koehn has worked on an extensive licensing campaign for a patent portfolio involving GPS
navigation technology, which resulted in a sale of the entire portfolio.
Ms. Koehn has worked on several patent portfolio transactions at Global IP, including the sale of Nortel Networks’ patent
portfolio for $4.5 billion, and the sale of a wireless communications patent portfolio for $75 million to Intel Corporation.
Ms. Koehn also acted as an IP advisor to the Unsecured Creditors’ Committee in Eastman Kodak’s bankruptcy
proceeding, including acting as an advisor in the sale of its Digital Imaging patent portfolio for $525 million. Ms. Koehn’s
practice focuses in-part on portfolio evaluations and strategy. Ms. Koehn provided Alcatel Lucent with a valuation of its
45,000 asset patent portfolio which was used to support its debt financing in excess of $2.6 billion (US). She has
provided several portfolio evaluations for entities in the digital music market, e-commerce market, mobile health market,
as well as valuations for portfolios covering wireless handsets, wireless infrastructure, cloud, and related markets. Ms.
Koehn also provided a valuation of RIM’s patent portfolio in connection with a potential acquisition of that company.
Ms. Koehn holds J.D. (cum laude) from Chicago-Kent College of Law, where she was admitted and attended as a Dean’s
Scholarship student. She holds degrees in Economics and Spanish from the University of Illinois, where she graduated
with honors.
Ms. Koehn is licensed to practice law within the state of Illinois. She was published in Practicing Law Institute’s Ethics
Programs, Summer 2010, and more recently in the Chicago Daily Law Bulletin (Oct. 2012). Ms. Koehn’s legal activities
outside of the office include acting as the Chair of the Junior Board for the Domestic Violence Legal Clinic.
Contact:[email protected] 312-241-1506
Ragnar Olson
Ragnar Olson is a partner of Global IP, who works on all aspects of clients’
efforts to monetize patents, including licensing, sales, and litigation. For the
past two years, Mr. Olson was named among the top patent strategists in the
world by IAM Magazine and selected by Super Lawyers as a “Rising Star.” Mr.
Olson works out of Global IP’s Chicago office.
At Global IP Mr. Olson advises numerous companies and individual inventors
regarding the valuation and monetization of their patent portfolios. Mr. Olson has negotiated significant license and sale
agreements with large corporations and non-practicing entities throughout the world.
Prior to joining Global IP, Mr. Olson was Director of Ocean Tomo’s patent transactions group and oversaw more than
$100 million in patent transactions through the public auctions. His work involved the review of thousands of patents in a
wide spectrum of technical fields and the successful transfer of hundreds of patent assets.
Before Ocean Tomo, Mr. Olson worked professionally as a Chemist for Baxter Healthcare, Stepan Company, and the
Drug Enforcement Administration. Through this cumulative experience Mr. Olson worked with a variety of chemical
substances, including pharmaceutical compounds, soap complexes and controlled substances, among others. At the
DEA, Mr. Olson testified numerous times in Federal Court and worked as a Law Clerk within the DEA’s Office of Chief
Counsel.
Mr. Olson holds a degree in Chemistry, with a minor in Economics, from the University of Indiana; he holds a JD from
Chicago-Kent College of Law, as well as a certificate in Intellectual Property. Mr. Olson obtained a Masters Degree in
Information Technology from Northwestern University where his course work consisted of telecommunication engineering
focusing on wireless infrastructures.
Mr. Olson is registered to practice before the United States Patent and Trademark Office and is licensed to practice law
within the state of Illinois. Mr. Olson is a member of the American Chemical Society and the American Intellectual
Property Law Association.
Contact:[email protected] 312-241-1503
Irwin Park
Dr. Irwin Park joined Global IP Law Group in September 2013 as an associate
in the Chicago office after previously working as a summer associate and
school-year law clerk. Dr. Park is involved with all aspects of patent monetization, including assessing infringement, drafting agreements, and drafting
patent claims. He is well-versed in a variety of technologies, ranging from
wireless communications to biotechnology.
Dr. Park received his JD from DePaul University College of Law in 2013, where he was the Legislative Updates editor for
the DePaul Journal of Art, Technology, and Intellectual Property Law during the 2012-2013 school year. Prior to entering
law school, he earned his B.A. from the University of Chicago in 1999 in the Biological Sciences, and earned his Ph.D
from Northwestern University in 2009 in Cell and Molecular Biology. Dr. Park is registered to practice before the United
States Patent & Trademark Office, and is licensed to practice in the state of Illinois.
Contact: [email protected] 312-241-1518
Steve Steger
Steve Steger is a founder and the managing partner of Global IP, where he
concentrates on all aspects of monetizing intellectual property through sales,
licensing, litigation, and strategic IP counseling.
Mr. Steger has a broad range of intellectual property experience including
serving as Chief IP Counsel at both large multi-national and smaller start-up
companies, as well as in private practice. His experience includes strategic IP
counseling, patent monetization through sales and licensing, patent and trademark prosecution and portfolio
management, and infringement litigation. Mr. Steger has developed IP policies and procedures for both mature patent
portfolios and for start-up IP management, has sold numerous patent portfolios of various sizes, spearheaded the
licensing of large portfolios, and has built internal capabilities for management, licensing, and prosecution of large patent
portfolios.
Prior to founding Global IP, Mr. Steger was Vice President, Licensing and Chief Intellectual Property Counsel for Ygomi
LLC, where he led a patent licensing business and directed all aspects of IP protection for multiple operating companies.
Previously, Mr. Steger was Deputy General Counsel and Chief Intellectual Property Counsel for Brunswick Corporation, a
Fortune 500 company that manufactures recreational and lifestyle products under some of the of the world’s best known
brands.
Before moving in-house, Mr. Steger was in private practice, first with Brinks Hofer Gilson & Lione and then with Mayer
Brown. While in private practice, Mr. Steger was primarily involved in patent infringement litigation. He also performed
patent and trademark prosecution, IP due diligence for corporate transactions, and strategic IP counseling.
Mr. Steger has been recognized as a world leader in Intellectual Property by numerous publications and organizations:
he has been recognized as one of the top IP strategists in the world; one of the top 1000 IP attorneys in the world; and is
annual recognized as an Illinois Super Lawyer (top 5%).
Mr. Steger is a frequent lecturer on IP monetization topics
around the globe, and has published numerous articles on a variety of IP issues.
Mr. Steger’s combination of in-house and major law firm experience gives him particular insight into what is important to a
business from an IP perspective, and how outside counsel can best add value to a corporate IP program.
Mr. Steger received a J.D., with honors, from the John Marshall Law School.
Engineering, with a minor in Mathematics, from Marquette University.
He holds a B.S. degree in Electrical
He is registered to practice before the United
States Patent and Trademark Office and is licensed to practice law within the state of Illinois.
Contact:[email protected]
312-241-1501
Non-US Aﬃliates
Mark Milhench
Mark Milhench is a European patent attorney with Global IP. He prepares and
prosecutes patent applications in Europe, manages patent prosecution
applications around the world, and helps clients to monetize their patents. Mr.
Milhench works out of Global IP’s London Office.
Mr. Milhench graduated with honors from London University in the summer of
1993 with a degree in Physics. Mr. Milhench entered the patent profession
later that year, and over the last sixteen years, he has worked for several of the top London IP firms, and more recently
for the UK arm of one of the larger US law firms. In 2006, Mr. Milhench established First Thought IP, his own firm of
patent attorneys with the aim of providing his clients with commercially focused expert IP advice at a cost level which
does not in itself act as a deterrent to the proper acquisition and exploitation of their intellectual property rights.
Mr. Milhench has represented clients before the UK Intellectual Property Office and the European Patent Office (EPO),
and has successfully argued for maintenance of his client’s rights before the Examining Division, Opposition Division, and
Board of Appeal of the EPO. Mr. Milhench has been involved with patent litigation in the UK, and, unusually for a
European attorney, he also has been involved closely with patent litigation in the USA, including attending hearings at the
USPTO during re-examination proceedings.
While Mr. Milhench’s has gained experience exclusively as a private-practice attorney, he is aware of and fully considers
the commercial realities facing his clients. Mr. Milhench has particular experience dealing with small start-up companies
(often backed by venture capital) who are venturing into the IP world for the first time, and regularly gives talks and
presentations to groups of start-up companies who have often had little or no experience of the intellectual property
system.
In addition to the traditional skills of a patent attorney, Mr. Milhench is skilled in the strategic management and
exploitation of all forms of IP, and is experienced in negotiating and drafting commercial contracts (such as confidentiality
agreements, IP licenses (including software), and teaming agreements).
Contact:[email protected]
+44 845 658 6869
Eesop Yoon
Eesop Yoon is a patent lawyer in Seoul, South Korea who is affiliated with
Global IP through the law firm in Korea that he founded, UNIS Patent
Attorneys. Mr. Yoon focuses on patent prosecution and litigation in the
information-technology and construction-equipment fields. His clients range
from individual inventors to one of the world’s 100 largest corporations. Mr. Yoon’s legal expertise is bolstered by his experience as a computer
programmer in the fields of database management and search engines. He developed and launched Korea’s first online
patent database search service, called “PIS,” and created the “Patent Digital Library” jointly with IBM. He also developed
a unique trademark search engine that the Korean Intellectual Property Office adopted for use in trademark examination.
Mr. Yoon received a B.S. in naval architecture from Seoul National University, and an LL.M in intellectual property law from
Yonsei College of Law. He also studied US intellectual property law at Franklin Pierce Law Center in Concord, NH.
Contact:[email protected] +822 564 7734
Case Studies
Alcatel Lucent retained Global IP in late 2012 to evaluate its patent portfolio
comprising more than 45,000 assets. Our engagement involved an in-depth analysis
of the patent assets and development of several valuation models. In early 2013,
Global iP's valuation report was used to support ALU's public debt financing of
approximately $2.1 billion (US). In addition to other ALU assets, ALU’s patents served as collateral to secure the debt.
Throughout the financing process, Global IP worked closely with a team of investment bankers, including Goldman
Sachs and Credit Suisse, to prepare reports and present their valuation conclusions.
To our knowledge, this was the largest amount of secured debt ever issued where patents served as part of the
collateral.
Aware, Inc. retained Global IP in September 2011 to assist the company in its efforts to monetize
patents related to wireless communications (LTE and WiFi), wired home networking, and DSL
communications.
We studied all the patent assets in detail, organized them into two separate
portfolios, and prepared a strategy for taking the portfolios to market. Additionally, in conjunction
with the client, we prepared extensive marketing materials, including many claim charts establishing standardsessentiality and market-essentiality for multiple patents in each portfolio. At that point, we led a worldwide road show,
visiting thirteen companies in five countries. The efforts resulted in eleven separate bids in the first round of bidding on
the first portfolio being offered for sale. Ultimately, we sold the first portfolio to Intel for $75 million, which was announced
on April 27, 2012. Immediately prior to that announcement, Aware’s market capitalization was just $77 million, and its
share price increased by 60% the day the sale was announced. Later that fall, we finalized the sale of Aware’s second
portfolio related to DSL patents for $16 million, bringing total revenues to $91 million for a company whose entire market
capitalization prior to the sales was $77 million.
Global IP’s efforts unlocked significant value for Aware that the market previously had failed to recognize.
Nortel Networks, Inc. filed for bankruptcy in early 2009 and began a liquidation process of
selling off its operating businesses. The company initially retained Global IP in October
2009 to analyze the scope and value of the company’s patents, a portfolio of 6,500
assets that Nortel retained after the operating businesses were sold.
These patents encompassed a wide range of
technologies, from wireless and wired communications to software and semiconductors.
After we completed the initial evaluation, Global IP was hired to advise Nortel and all of the stakeholders in the
bankruptcy on how best to monetize its portfolio. We guided Nortel through the sale process, taking the lead role in
developing marketing and presentation materials.
In June 2011, the process culminated in the largest patent sale in history. A consortium of companies including Apple,
Microsoft, RIM, Ericsson, Sony, and EMC bought the entire portfolio for $4.5 billion.
This transaction changed the way technology companies think about their patent assets.
Private New Zealand Company
A New Zealand inventor hired Global IP to sell a single patent family related to social networking technology. Global IP
engaged in substantial market and infringement analysis, ultimately selling that patent family for an eight-figure sum.
Global IP achieved substantial value for its client, well above the per-patent price of other known transactions in this
technological area.
Private Finnish Company
A small Finnish non-practicing entity with a single patent, engaged in patent litigation in Europe against a major European
telecommunications provider, hired Global IP to obtain a near-term cash infusion while maintaining a stake in the
substantial future revenue stream related to that patent. First, however, Global IP had to defend that patent against an
extensive validity challenge before the European Patent Office, which Global IP achieved. As a result, Global IP was able
to achieve the client’s goals for monetization.
Global IP preserved the patent asset and met the client’s monetization goals.
Patent Licensing/Litigation Case Studies
NeoMedia Technologies, Inc. Licensing Campaign
Global IP represents NeoMedia Technologies, a publicly traded company that provides
mobile barcode scanning services and products, in both a licensing campaign and
multiple patent infringement suits.
NeoMedia’s patent portfolio is related to mobile
barcodes, including, for example, quick response (QR) codes. At the time of this printing, we have licensed a dozen
entities.
RAH Color Technologies LLC Licensing Campaign
Global IP represents a small private entity focused on the development of color
management printing technology in a licensing campaign, which included a
patent infringement suit in the Western District of New York against various
Seiko Epson entities in the U.S. and Japan. We asserted eight different U.S.
patents in the case that together read on almost all of Seiko Epson’s printing products, with the case resulting in Seiko
Epson taking a license. Subsequent to the litigation and at the time of printing, we have licensed five more entities.
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