Director, IP Rights Management at Xperi

Xperi is seeking an experienced individual to contribute to the success of its Intellectual Property (IP) & Licensing Department. The ideal candidate will be someone who is a self-starter, energetic & proactive, able to work independently & conduct patent harvesting sessions, able to understand market applicability of inventions, strong leadership and management qualities, and one that brings significant patent prosecution and industry experience to assist the IP & Licensing team in the development of the Xperi patent portfolio in support of various Company initiatives.

Ideally the successful candidate will possess a broad understanding and knowledge of Xperi technologies, including: EPG/IPG, search and recommendation, personalization, metadata, analytics, and advertising. Direct knowledge of and technical/industry experience with Interactive TV, VOD, DVR, and OTT technologies is preferred. Understanding of patent process from invention generation to filing for patent application is a must.

Responsibilities:

Provide assistance in the continued development of the world’s largest active digital entertainment discovery portfolio and implementation of patent strategy and processes.
Strong portfolio management
Assisting development of Xperi robust patent portfolio by working with inventors across the Company to develop and capture ideas
Assisting inventors in preparing invention disclosures forms
Conducting regular invention mining and brainstorm activities locally and across the Company
Pre-vetting invention disclosures prior to presenting at the Patent Committee
Preparing and present invention disclosures to the Patent Committee
Supervising patent prosecution
Supporting patent application preparation of approved inventions by attending invention disclosure interviews, reviewing prior art, providing technical support during drafting and review stages of application preparation, and reviewing claims prior to filing
Prior to product launches, ensure IP protection and non-infringement of 3rd party IP
Acting as a liaison to the inventor from the point of developing their idea to successfully having their idea
Managing a docket of cases by reviewing office actions and responses, providing guidance to outside counsel during key points of the patent lifecycle including international filing decisions, providing recommendations for prosecution for US and international cases including continuations, divisional, RCE, and abandonments recommendations
Presenting background and summary of allowed cases to other IP functions, including litigation and assertion teams, and taking corrective actions where recommended
Providing regular docket analysis of features covered by top cases within the docket
Generate informative reports and charts that summarize the efforts of the patent group
Working closely with outside counsel to insure they receive regular feedback on prosecution, as well as, market trends by reviewing claims charts
Conducting annuity review analysis and implementing monthly trimming process
Assisting with evaluation of third party portfolios for potential acquisitions or partnerships

Qualifications:

Minimum 7 years of legal experience, preferably in Xperis technical space. Deep technical understanding of technologies that power discovery of digital entertainment, operations and user features of cloud-based video platforms operated by MSOs, and Over-the-Top providers (e.g. adaptive bit streaming, multi-screen video, content delivery networks, etc.)
Must have prior in-house prosecution management experience
Current member of a state bar and USPTO bar in good standing
Graduate of top-tier law school
CS, EE, or Mathematics degree strongly preferred
Must be proficient with manipulating Excel spreadsheets and able to generate complex PowerPoint
Must be able to demonstrate understanding of claim drafting techniques that address recent Supreme Court and Federal Circuit decisions
Must have drafted or reviewed 200+ patent applications, preferably post Alice decision
Demonstrated knowledge of using IP analytical tools, such as Innography and IP management tools, such as Lecorpio
Must demonstrate a common sense, practical approach and a willingness to work both in a team and independently
Must be able to manage outside counsel and department budget
Must have good awareness of Xperis business strategy, products and services
Must be able to express ideas and communicate effectively, particularly in writing
Must have enthusiasm and drive, ability to integrate quickly into the existing team, ability to schedule own workload and plan tasks, and willingness to be flexible and accept new challenges