As co-head of the firm’s Intellectual Property Practice Group, Tyler focuses his practice on intellectual property licensing and enforcement.

Tyler represents clients in licensing and enforcement of intellectual property rights, including drafting and negotiating patent and technology license agreements, joint development agreements, master services agreements, software license agreements, software as a service (SaaS) agreements, supply agreements, and trademark license agreements. He also has extensive experience in negotiating IP terms in M&A transactions, conducting IP due diligence investigations, litigation of intellectual property rights, and resolution of IP and technology disputes. His practice covers a range of industries, including information technology, healthcare, financial services, and telecommunications.

Tyler is a member of the Licensing Executives Society and is admitted to practice before the U.S. Court of Appeals for the Federal Circuit and the U.S. District Courts for the District of Columbia, Eastern District of Virginia, Eastern District of Texas, and Northern District of New York. He is also registered with the U.S. Patent and Trademark Office.

Relevant Experience

  • Regularly represents major companies in drafting and negotiating IP terms in M&A transactions, including asset purchase agreements, stock purchase agreements and merger agreements, and in drafting associated IP and technology license agreements, IP assignments, and R&D services agreements.
  • Represented IT, cloud, and cybersecurity services company in licensing and protection of its technology and intellectual property and in resolution of numerous contract disputes.
  • Represented provider of data analytics and consulting services in negotiation of services agreement for data warehousing and analytics platform.
  • Represented major financial institutions in defense and settlement of lawsuits and infringement allegations by patent assertion entities.
  • Represented manufacturer of network security hardware and software in negotiation of agreements for combined cloud-based and on-premise network security solution for mitigation of distributed denial of service (DDoS) attacks.
  • Represented provider of software-based voice trading system in negotiation of numerous SaaS agreements.
  • Represented major retailer in settlement of numerous lawsuits by patent assertion entities.
  • Represented medical device manufacturer in drafting and negotiating development agreement, quality agreement and trademark license for the international development and commercialization of technology relating to fluorescent in situ hybridization (FISH) probes for cancer detection.
  • Represented Fortune 100 company in drafting and negotiating international research collaboration agreement relating to imaging agents comprising proprietary compounds for the detection of Alzheimer’s disease.
  • Represented Fortune 100 company in drafting and negotiating license agreement relating to imaging agents comprising proprietary peptides for cancer detection.
  • Represented pharmaceutical company in negotiating sublicense and commercialization agreement relating to pharmaceutical composition for treatment of hypertension.
  • Represented medical device company in settlement and license negotiations relating to hip prosthesis patents.
  • Represented medical device manufacturer in licensing of optical imaging technology.
  • Represented biotech company in IP aspects of merger agreement with startup company in the field of monoclonal antibody technology.
  • Represented pharmaceutical company accused of infringing patents to abuse-resistant opioid products in licensing and litigation settlement negotiations.
  • Represented pharmaceutical manufacturer in negotiation of license, development and commercialization agreement relating to opioids.
  • Represented manufacturer of magnetic resonance imaging (MRI) machines in patent interference proceeding, appeal, and worldwide licensing and settlement negotiations.
  • Represented manufacturer of test and measurement equipment in negotiation of joint development agreement and supply agreement relating to thermal imaging technology.
  • Represented patent owner, NTP, Inc., in drafting and negotiating license and settlement agreements to settle patent litigation against the manufacturer of the BlackBerry® wireless handheld in NTP, Inc. v. Research in Motion, Ltd. Obtained substantial settlement for client, NTP, Inc.
  • Represented Fortune 100 company in negotiation of international license agreement relating to locomotive technology.
  • Represented manufacturer of industrial equipment in international license dispute relating to steel manufacturing equipment.
  • Represented developer of carbon and acid gas capture technology in negotiation of collaboration and license agreement with electric power generator.
  • Represented power plant developer in negotiation of intellectual property provisions in engineering, procurement and construction contract for development of solar power generation facility.
  • Represented industrial printer in acquisition of newspaper printing technology and equipment from global manufacturer of imaging products.
  • Represented manufacturer of paper shredders in patent infringement lawsuit through discovery, claim construction, summary judgment motions, and trial.
  • Represented designer of memory chips in patent infringement and interfering patents suit.
  • Represented Fortune 100 company in patent assertion against manufacturer of digital cameras.
  • Drafted and negotiated numerous other license agreements for domestic and international transfer of intellectual property rights including patent, technology, software, and trademark license agreements.
  • Prepared formal opinions on patent validity, enforceability and infringement.
  • Conducted patent clearance studies to identify potential infringement issues for new product introductions.
  • Prepared and prosecuted patent applications in financial services, medical device, mechanical, and electromechanical arts.

Memberships

  • Member, Licensing Executives Society
  • Member, American Intellectual Property Law Association

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