Expert Details

Expert in Intellectual Property Transactions,Technology Transfer, Licensing, Software, Medical Devices

Expert ID: 727428 Massachusetts, USA

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Expert is a C-level Business Executive with expertise in high-value/risk intellectual property (IP) transactions; technology transfer and licensing; medical devices and related technologies, software and hardware engineering development. She has extensive experience through full lifecycle program management and product rollout ― from initial feasibility analysis through development, presentation, negotiation, licensing, and commercialization.

Expert is a trusted partner to private equity and venture capital firms in identifying and evaluating new technologies; as well, assisting research institutions in devising strategies to maximize licensing potential and to secure private and other funding.

She is an adept negotiator skilled in structuring complex technology deals and business agreements, with a keen ability to leverage industry relationships to match technologies and investors in forming lucrative and mutually beneficial alliances.

Expert has a world-class education including J.D. – University of New Hampshire (formerly, Franklin Pierce Law Center); Ph.D. – University of Pennsylvania; M.A., Smith College/Massachusetts Institute of Technology, B.S. – Boston University. Fluent in French, knowledge of German and Italian. Grants from Smith College, MIT, University of Pennsylvania, and the French Government.

SNAPSHOT OF ACCOMPLISHMENTS

* Closed over 60 medical device and biologic deals at Massachusetts General, with each deal ranging up to $50M, consisting of up to 35 patents, and totaling over $300M.

* Negotiated complex license terms for outsourcing of embedded technologies that generated annual revenue stream of $50-$100M with industry leaders. Chaired Hewlett Packard’s Software Patent Committee and Corporate Intellectual Property Committee.

* In-depth experience working in hospital medical research environments, affording comprehensive knowledge of current research technology, especially in medical devices, and how to translate a technology from an academic setting into a roadmap.

* Technology transfers included Siemens, Olympus, Sony, Nidek, Terumo, General Electric, Merck, Boston Scientific, Varian, Air Liquide. Academic and foundation arrangements with Gates and Cystic Fibrosis Foundations, Boston University, Massachusetts Eye and Ear Institute, Harvard, Indiana, University of California San Diego, Columbia, Frei Universitat, and many others.

Array

Expert is currently Director of Technology Investments for a New York-based private equity fund and intermediary leader for an early stage medical device company based on a major academic medical center’s patent portfolio. Expert has partnered with numerous clients to evaluate prospective technologies while establishing appropriate valuations and commercialization feasibility with capable industry partners, including licensees and investors; and facilitating proof-of-concept and prototype development, as necessary. Expert represented Dovetail Software as Founder and General Counsel from 1994-1998. Provided all aspects of legal support with emphasis on IP agreements. Played significant role in Dovetail’s acquisition by Informix and IBM. Expert served as expert on software licensing across the Partners’ affiliates. Lead PHS Software Initiative to evaluate over 100 in-house technologies used in medical and hospital practice (patient records, dashboards for clinical care, online questionnaires of various kinds to guide medical interventions and adverse event prevention, using MGH best medical practices and expertise).

Expert may consult nationally and internationally, and is also local to the following cities: Boston, Massachusetts - Worcester, Massachusetts - Springfield, Massachusetts - Lowell, Massachusetts - Cambridge, Massachusetts - Brockton, Massachusetts - New Bedford, Massachusetts - Hartford, Connecticut - Manchester, New Hampshire - Providence, Rhode Island

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Education

Year Degree Subject Institution
Year: 1990 Degree: PhD Subject: Computer Science Institution: University of Pennsylvania
Year: 1993 Degree: J.D. Subject: Intellectual Property Law Institution: Franklin Pierce Law Center
Year: 1987 Degree: M.A. Subject: Music Institution: Smith College, MIT
Year: 1983 Degree: B.S. Subject: Computer Science Institution: Boston University

Work History

Years Employer Title Department Responsibilities
Years: 2010 to Present Employer: Undisclosed Title: PRINCIPAL Department: Responsibilities: Works with clients to evaluate prospective technologies while establishing appropriate valuations and commercialization feasibility with capable industry partners, including licensees and investors. Also, facilitating proof-of-concept and prototype development, as necessary.
Years: 2005 to 2010 Employer: Massachusetts General Hospital (MGH) Title: ASSOCIATE DIRECTOR Department: Research Ventures and Licensing Responsibilities: Managed team of licensing professionals who work with Principal Investigators and engineers from MGH's world-class academic medical departments to negotiate and close complex, high-value patent licensing agreements.

♦ Worked with companies and VC firms to commercialize portfolio of >3,500 patents and related IP, in medical imaging optics, software technologies and therapies for applications in dermatology, ophthalmology, otolaryngology, gastroenterology, orthodopaedics, wound healing and cardiology, and medical simulation and decision support technologies.

♦ Served as expert on software licensing across the Partners’ affiliates. Initiated PHS Software Initiative to evaluate over 100 in-house technologies used in medical and hospital practice (patient records, dashboards for clinical care, on-line questionnaires of various kinds to guide medical interventions and care, using MGH best medical practices and expertise).

♦ Licensed very early-stage technologies to start-up companies, with MGH assuming an equity position.
Years: 1994 to 2005 Employer: LaGasse Law Group, LLC Title: ATTORNEY AT LAW AND PRINCIPAL Department: Responsibilities: Led staff of 8 attorneys and paralegals.

♦ Provided expertise in IP valuation and management, technology transfer, licensing, multi-tier distribution models, and corporate law. Track record of outstanding royalty recoupment.

♦ Played significant role in maximizing risk management through sound licensing rights to clients’ inventions and innovations for international transactions and capital investments, including major maritime projects.

♦ Represented Dovetail Software as Founder and General Counsel from 1994-1998. Provided all aspects of legal support with emphasis on IP agreements. Played significant role in Dovetail’s acquisition by Informix and IBM.
Years: 2000 to 2003 Employer: Hewlett-Packard Corporation Title: SENIOR SOFTWARE ENGINEERING LAB DIRECTOR Department: Responsibilities: Built and directed a large, outstanding, and diverse core group to support emerging technologies amid downsizing pressure and corporate strategy to reposition key program. Successfully restructured organization to accommodate massive budget cuts.

♦ Directed new software engineering initiatives for $5B sector with $30M budget.
Years: 1993 to 2000 Employer: Hewlett-Packard Corporation Title: SENIOR BUSINESS DEVELOPMENT AND STRATEGY MANAGER Department: Responsibilities: Directed tier-one partnerships and secured deals on large-scale IP transactions for world-class corporations.

♦ Generated annual revenue stream of $50-$100M with industry leaders by negotiating license terms for outsourcing of embedded technologies. Drafted and negotiated multimillion-dollar software intellectual IP transactions with industry leaders including Netscape, Red Hat, Microsoft, IBM, Sun, HP, Cisco, Novell, and Oracle.

♦ Saved ~$100M in annual engineering expenses by securing technology acquisition from third parties.

♦ Served as expert in Open Source licensing. Presented papers in Open Source forums on the complexities of licenses in the open source community and implications for traditional proprietary software licenses.

Government Experience

Years Agency Role Description
Years: 1994 to 1995 Agency: FBI/CIA Role: Represented Digital Equipment Corporation to the Working Group for 128-bit encryption Description: Represent Digital's interests as to private and public key infrastructure and 128-bit encryption as required by the government for computer operating systems

International Experience

Years Country / Region Summary
Years: 1978 to 1978 Country / Region: France/Provence Summary: Participated in a team responsible for the excavation of an archaeological site in the south of France.

Career Accomplishments

Associations / Societies
Massachusetts and Maine Bar Associations
Licensing Executive Society
IEEE
Licenses / Certifications
Certifed Licensing Professional
Certified Mediator
Active law licenses in Massachusetts and Maine
Candidate, Certificate, University of California San Diego, Regulatory Affairs for the Biomedical Industry
Professional Appointments
Co-founder, of software (acquired by Informix and IBM)

Chaired Hewlett Packard’s Software Patent Committee and Corporate Intellectual Property Committee.

Represented Digital Equipment Corporation to ANSI Standards Committee X3J3 and WG4

Represented Digital Equipment Corporation to the Working Group for 128-bit encryption

Represented DEC to various US and international Standards Committees in computing languages, operating systems, and networked systems.
Awards / Recognition
Grants from the French Government, Massachusetts Institute of Technology, Smith College, the University of Pennsylvania, Bryn Mawr College
Publications and Patents Summary
Several publications in the field of computer music

Additional Experience

Training / Seminars
Extensive experience in course development, customer training and teaching at the undergraduate and graduate levels. Technical and commercial programming languages, operating systems theory, systems programming, music theory, electronic music composition.
Vendor Selection
Presently working with sources in Cambodia to purchase bulk quantiites of bombyx mori worm cocoons for a biomaterials project.
Marketing Experience
Quickly can assess commercialization path for complex medical devices.
Other Relevant Experience
Adept at negotiation and mediation, especially in technical areas. Technology transfers included Siemens, Olympus, Sony, Nidek, Terumo, General Electric, Merck, Boston Scientific, Varian, Air Liquide. Academic and foundation arrangements with Gates and Cystic Fibrosis Foundations, Boston University, Massachusetts Eye and Ear Institute, Harvard, Indiana, University of California San Diego, Columbia, Frei Universitat, and many others.

Language Skills

Language Proficiency
French
German
Italian

Fields of Expertise

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