Technology Licensing Expert in Royalty Rights

Case Description:

A technology licensing expert with knowledge of academic contracts was needed for a license agreement dispute related to royalty rights for a technology patent. The parties were a university and a corporation that worked together on medical device design and development. Later the university alleged that the defendant breached their contract by not recognizing the university's ownership rights in the medical product and sought damages for unpaid royalties.

IMS ExpertServices was asked to find an expert in technology licensing, perhaps from a university technology transfer office. Our client required an expert who understood the structure and economics of partnerships between universities and outside corporations in cooperative technology development deals. Prior experience opining on the reasonableness of a royalty was also desired.

Experts Presented:

  • Technology Licensing Expert

    This expert in technology licensing has more than 20 years of experience in strategic alliances and technology transfer. He has overseen technology transfer for two large university-affiliate medical centers as well as running his own consulting practice. This expert has been responsible for marketing substantial intellectual property portfolios and negotiating licensing fees and royalties on behalf of his clients. He has published extensively on technology licensing and royalty topics and teaches university courses on technology valuation and licensing. This expert has offered depositions and trial testimony on patent infringement matters, license agreements, and contract disputes. IMS Reference #5008086

  • Technology Valuation Expert

    This technology valuation expert has over 30 years of experience in product development and technology management. Most recently he was responsible for the management and commercialization of intellectual property for a non-profit that manages a university's technology licensing and IP portfolio. There he managed more than 150 disclosures, 34 patents and 38 licenses. Previously he managed technology transfer for the engineering department of a large university. He developed technology licensing policies, located partners, and negotiated contracts for licensing their intellectual property. This expert has authored numerous papers on technology transfer and product development and has been deposed as an expert witness on royalties and IP fees. IMS Reference #5008220

  • Technology Valuation Expert

    This expert in technology transfer has more than 15 years of experience in university and federal laboratory technology licensing. He has directed or worked in the technology transfer offices of several large research universities and government labs. This expert teaches university courses in management of technology and is active in the Association of University Technology Managers. His direct experience in technology licensing allows to expertly address issues of contracts and royalties. IMS Reference #5008022

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