Ed is a highly experienced patent attorney who represents many prominent corporations and universities. Ed is resident in the Palo Alto, California, office and engages in patent prosecution, licensing, export control compliance, and litigation in the fields of telecommunications, computer hardware and software, data security, cryptography, and semiconductor processing. He successfully represented the Massachusetts Institute of Technology in litigation defending MIT's famous RSA patent, the basic patent in public key cryptography. He has authored many publications in cryptography and the law, as well as other topics, and has been a frequent speaker at legal and scientific symposia. Ed has also been engaged as an expert witness on inequitable conduct, means plus function claims, and on U.S. Patent and Trademark Office procedures.
Ed has a particular interest in international patenting, and has worked with the American Bar Association in this area for many years. He represented the American Bar Association at the Diplomatic Conference to Adopt the Patent Law Treaty, held in Geneva, Switzerland.
Ed has dedicated his professional career to helping startups, established corporations, and universities protect, develop, and monetize their intellectual property, and to comply with export control laws. He is currently on the Selection and Steering Committees of the Northern California Chapter of the HBS Alumni Angels Association ("Harvard Angels").
He has been a partner with Fenwick & West LLP and Sonnenschein Nath & Rosenthal LLP, and the Patent Counsel of Ford Aerospace Corporation. He served as a law clerk on the Supreme Court of Rhode Island and is conversant in French.
Significant Patent Litigations
Cylink, Inc. v. RSA Data Security, Inc. et al., U.S. District Court, Northern District of California, case no. C94-02332 MMC (Judge Maxine M. Chesney). Patent litigation regarding the RSA patent, the basic patent in public key cryptography. Successfully represented the Massachusetts Institute of Technology (MIT), the owner of the patent in suit, in upholding the validity of the patent.
Hughes Aircraft Co. v. Ford Aerospace & Communications Corp., U.S. District Court, District of Columbia, case no. 86-1475 JHG (Judge Joyce Hens Green); Hughes Aircraft Co. v. United States, U.S. Claims Court, case no. 426-73 (Judge James T. Turner). Patent litigation regarding the Williams patent, a "pioneer patent" covering spin stabilization of manmade satellites. Settled for client Ford Aerospace & Communications Corp. on favorable terms.
Sangamo Weston, Inc. v. Varian Associates, Inc.; Sangamo Weston, Inc. v. Fairchild Camera and Instrument Corp.; Weston Instruments, Inc. v. Systron-Donner Corp., et al.; U.S. District Court, Northern District of California, case numbers C-77-2810 RFP, C-77-2809 RFP, and C-74-1000 (Chief Judge Robert F. Peckham). Patent litigation involving analog-to-digital converters. Settled for client Varian Associates on favorable terms.
"Implementation of the Patent Law Treaty in the United States", New Matter, Intellectual Property Section of the State Bar of California, Vol. 35, No. 2, Summer 2010
"US Encryption Export Regulations Enter the Twenty-First Century", The Computer Lawyer, Vol. 17, No. 6, June 2000
"E is for Encryption, E is for Exports", The Economic Times of India, May 6, 2000
"Legal Issues in Cryptography", Lecture Notes in Computer Science, No. 1318 (Springer Verlag), 1997
"Patent Law Harmonization", Upside, April 1992
"Prosecution of Electronic and Computer Patent Applications", Proceedings of the Practising Law Institute's Conference on Electronic and Computer Patent Law, March 1990
“Export Control Certification Requirements on CIS’s I-129 Form”, American Immigration Lawyers Association, Santa Clara, California, March 25, 2011
“Is the Patent Law Treaty Right for the United States?”, IP Society, Palo Alto, California, July 8, 2010, video posted at http://www.ipsociety.net
“The Patent Law Treaty”, Golden Gate University Law School, San Francisco, California, September 11, 2009
“Creating, Managing, and Exploiting a Corporate IP Portfolio”, Association of Corporate Counsel – Bay Area, Small Law Department Roundtable, San Francisco, California, October 2, 2007
“U.S. Encryption Export Regulations”, Golden Gate University, Graduate School of Business, Los Altos, California, April 11, 2000
“Legal Issues Pertaining to Internet Security", Silicon Valley Intellectual Property Law Association, Palo Alto, California, October 21, 1998