Experience
Law Office of Edwin Steussy
Business and Intellectual Property Law
Pasadena, California June 2019-Present
—IP Licensing; contracts; negotiation; patent drafting; open source software; patent and IP litigation evaluation.
—Registered patent attorney
Orrick, Herrington & Sutcliffe LLP
Attorney at Law, Los Angeles Sept. 2014-May 2019
—Transactional IP Attorney
o Advised on technology issues in >50 mergers or acquitisions
o Technology licensing (corporate, government and university)
o Open Source Software expert
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C-Suite advise on technology matters and strategy
o Registered patent attorney; patent and IP litigation evaluation
—Advised and represented Fortune 500 companies, including
FUJIFILM and Oracle in ITC cases and patent litigation. Served as co-counsel
with IBM in ITC matter.
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Taken and defended depositions; drafted subpoenas
and motions; conducted case law and opposition research.
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Participated in discovery and opposing counsel meet-and-confers.
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Proposed successful primary litigation
strategies to Joint Defense Groups.
—Drafted IP portions of purchase agreements for
multiple M&A transactions in the high tech field.
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Drafted for deals including mergers and asset
purchases.
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Conducted due diligence on target companies
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Reviewed patents, trademarks, copyrights and
associated licenses; ensured trade secret protections in place.
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Examined contracts with employees, contractors,
customers and vendors to ensure clean transfer of all IP assets.
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Negotiated international asset reclassifications
and transfers where necessary.
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Drafted pre-closing agreements for trade secret
protection where necessary.
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Reviewed software for unacceptable license
agreements (e.g. copyleft licenses in code).
o
Directly advised a client negotiating a Chinese
joint venture agreement by way of an acquisition target.
—Successfully litigated a patent plaintiff action
on behalf of a client video game company in California’s Central District (TimePlay v Audience Entertainment LLC,
CACD 2-15-cv-05202).
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Plaintiff action in which defendant was represented
by Mark Lemley of Durie Tangri.
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Drafted a successful defense to defendant’s 101 Alice challenge.
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Drafted infringement contentions; drafted
initial claim constructions.
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Settled case prior to Markman including a
stipulated permanent injunction against defendant.
—Defended an international aircraft manufacturer
in a patent matter.
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Developed a successful defense involving
physical embodiments of prior art.
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Researched FAA files to discover still existing prior
art exemplars.
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Interviewed surviving owners of prior art
exemplars.
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Took statements of invalidating use by surviving
owners.
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Collected cotemporaneous evidence of
invalidating use.
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Hired two teams of engineers and photographers
to travel to sites in Chicago and Vermont to photograph and digitally scan two
prior art exemplars.
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Oversight of both teams.
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Coordinated, collected and drafted reports for
use in negotiations.
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Settled matter on terms acceptable to client.
—Prosecuted patents in signals processing, software,
biotech, and industrial chemical processing.
—Advised oil industry group on copyright issues.
—Advised major European software services company
on trademark issues as applied to antitrust for ongoing offensive international
negotiations.
—Appointed Co-Head of Orrick’s Video Game Group;
multiple past and on-going speaking engagements.
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Game Designers’ Conference (San Francisco)
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Silicon Valley Virtual Reality Conference (San
Jose)
o
USC
Apogee Communications, Inc.
CEO and Founder, Southern California 2003-2012
—CEO/Founder. More than 400 contract employees in over 50 countries.
—Projects developed in up to 45 languages, requiring translation, proofing, verification and engineering.
—Titles include megaprojects such as Star Wars, Call of Duty, Civilization, Railroad Tycoon and others. Primary client: Nokia.
Mars Publishing, Inc.
CEO and Founder, Los Angeles 1997-2003
—CEO/Founder. Published, distributed and sold over 56 titles to the general public, including The Parent's Guide to Raising Bilingual Children.
— Premiere contract house for videogame industry; turnkey development of user manuals and strategy guides.
o Clients include Electronic Arts, Disney, Take 2 Interactive and THQ.
o Headquartered on Wilshire Boulevard in Los Angeles.
o Total of six fulltime employees and over 50 contractors.
Vladivostok Computers, Ltd.
CEO and Founder, Vladivostok, Russia 1993-1995
—CEO/Founder. Largest computer technology distribution house in Russia outside of Moscow. Contracts with Apple Computer, Microsoft, Acer, American Power Conversion and others. Developed a sales territory throughout Eastern Russia to Novosibirsk.
— Exclusive representative of Apple Computer in Eastern Russia.
RUI Apple Computer, a.p.
Head of Sales and Channel Development, Moscow 1992-1993
—Official Apple Representative in the Former U.S.S.R. Head of Sales and Channel Development. Developed chain of retailers and specialists throughout the region from scratch. By 1995, this chain was producing more than $28 million annually in total sales. Fractional profit and loss responsibilities.
— Extensive travel throughout Russia, Latvia, Lithuania, Belarus, Georgia.
— Interface with Apple officers in Cupertino, Holland, UK, Italy and Singapore.
Education
UC Davis School of Law
Juris Doctor
• Lead author, "Microbial Forensics: The Greatest Thing Since DNA?" published in Criminal Law Bulletin.
• Witkin Award (top grade in class), Business Associations.
• Recipient of the Bruce Wolk Scholarship for application of
science and mathematics to law.
Northwestern University
Physics
• Member of the elite Integrated Science Program.
• All honors
studies in mathematics, physics, chemistry and biology.
• Unoffical minor in economics.
Miscellaneous
Bits and Bites
• Conversational Mandarin and Russian.
• Prior residence in Russia, Taiwan, Sweden, Czech Republic and Hungary.
• Experience as a software engineer, working on databases hosted on an IBM 360 mainframe.
• Current hobby administration of Linux server running this website.
• General Counsel of Nicholas Freitag Farm, Inc. in New Glarus, Wisconsin; owned by the family for 150 years.