Alan D. Minsk
Shareholder
minska@lanepowell.com
206.223.7056
Areas of Practice
Alan Minsk focuses his practice on developing and implementing strategies for protecting clients’
intellectual property and counseling clients with regard to intellectual property issues that arise
during the course of their business operations. He provides services that include identifying potential
innovations in a client’s products and services, determining an effective strategy for protecting those
innovations, patent application drafting and patent procurement, patent portfolio evaluation and
the development of strategies for increasing the value of patent portfolios, due diligence for purposes
of product clearances, mergers, acquisitions and pre-litigation risk assessment, strategically focused
portfolio development and management, and establishing and administering in-house patent
programs for clients.
His experience as both an in-house counsel and as a member of a law firm enables him to provide
solutions that take into account both the legal and business concerns of his clients. His corporate
experience includes serving as Associate General Counsel and the sole in-house patent counsel for
Openwave Systems (now known as Unwired Planet, NASDAQ – UPIP, which has a business model
based solely on monetizing the patent portfolio he created), and as Vice President and patent counsel
at Intellectual Ventures (where he established processes used for the evaluation, acquisition and
monetization of patent portfolios).
Alan’s patent procurement experience includes patent application preparation and prosecution
for technologies that include electronic payments, fraud detection, mobile device user interfaces,
e-commerce business models, mobile payment applications, communications systems, software as
a service (SaaS) business models, cloud-based applications, messaging systems, search methods,
semiconductor processing, flash memory, imaging arrays, radar systems, lasers, signal and image
processing methods, neural networks, adaptive control systems, optical computers and wireless data
services. He has extensive experience as a patent strategist, concentrating on the development and
strategic management of patent portfolios, and has represented clients ranging from start-ups to
publicly traded companies.
Professional Experience
Kilpatrick Townsend & Stockton, Partner (2006-2012)
Openwave Systems, Associate General Counsel, Director and Patent Counsel (1999-2006)
Intellectual Ventures, VP and Patent Counsel (2003-2004)
Coudert Brothers, Attorney (1997-1999)
Limbach and Limbach, Attorney (1991-1997)
ESL, Inc., Senior Engineer (1986-1988)
Admitted to Practice
California
U.S. Patent and Trademark Office
Academics
Harvard Law School (J.D., 1991)
University of California, Berkeley (M.A., Physics)
University of California, Berkeley (B.S., Astronomy)
Phi Beta Kappa
Departmental Citation, Astronomy Department
Practice Group and Specialty Team Memberships
Intellectual Property and Technology
Startups and Emerging Companies
Representative Matters and Clients
Developed a multi-faceted strategy for addressing the risks posed to a client by a competitor’s
much larger patent portfolio, after the competitor approached the client about taking a license to
patents that the competitor claimed covered the client’s products. The plan included performing an
infringement and validity analysis of the patents, addressing the competitor’s inaccurate projections
of the client’s revenues and profits, determining which assets in the client’s patent portfolio were (or
could be made) relevant to the competitor’s products, and developing additional patent assets for
the client that covered the competitor’s products. The result was to increase the value of the client’s
patent portfolio relative to that of the competitor, and provide support for a patent cross-license
with a payment being made to the competitor that was significantly less than the amount initially
demanded.
Alan has represented the following companies in developing in-house patent programs, and
managing and developing patent portfolios:
NetSuite; Jawbone; Roundbox; Advanced Maglev Systems; Zuora; Decide; Support.com
Publications
“Building a Valuable Patent Family Using the Technique of Functional Deconstruction,” Lane Powell’s Beyond IP Law blog (February 24, 2016)
“Selecting the Appropriate Patent Counsel and Why It Matters,” Lane Powell’s Beyond IP Law blog (February 5, 2016)
“Jawbone Successfully Leverages Patent Portfolio as Collateral in Fund Raising Efforts,” Lane Powell’s Beyond IP Law blog (January 27, 2016)
“A Key Obstacle to Implementing a Patent Strategy and One Way to Overcome It,” Lane Powell White Paper (December 23, 2013)
“Patent Protection as Investment and Insurance,” Corporate Counsel magazine (May 6, 2013)
“Is There Justification for Greater Transparency in Patent Transactions?” Patently-O blog, Guest Post (March 21, 2013)
“Innovation, Development and the In-House Patent Program,” Law360 (December 10, 2012)
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“Protect Your Company — And Increase its Value With a Strategic Patent Portfolio,” Seattle Business magazine (October 2012)
“Lane Powell Brings In Tech Patent Atty From Kilpatrick,” Law360, Interviewed (June 25, 2012)
“Old Model: Patents Protect Products. New Model: Patents Themselves Are Products,” Forbes magazine’s CIO Central (June 1, 2012)
“The Patentability of Algorithms: An Update on the Status of the Current Doctrine,” 9 Santa Clara Computer & High Tech. L.J. 233 (1993)
“The Patentability of Algorithms: A Review and Critical Analysis of the Current Doctrine,” 8 Santa Clara Computer & High Tech. L.J. 251 (1992)
Speaking Engagements
“Intellectual Property Issues For Prospective Investors,” Northwest Entrepreneurs Network, Early Stage Investment Forum (May 9, 2008)
“Developing a Patent Strategy,” Open Source Software Group (2006)
Awards and Honors
Listed as a ‘Top’ individual in the Intellectual Asset Management (IAM) Patent 1000, “The World’s Leading Patent Practitioners” (2013-2015)
Top Patent Prosecutor, The Patent Research Review (2011)
Professional and Community Activities
Washington State Patent Law Association
Member, Mentoring Committee (2011-2012)
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