Lillian Shaked Image

Lillian Shaked

VP of Licensing

Transpacific IP

Lillian Shaker is a VP of Licensing for Transpacific IP where she brings years of experience across a broad area of company operations to the TIPG team including specialization in corporate and commercial law. Additionally, she has advised clients on business, financial, tax and intellectual property issues involved in establishing and developing their businesses. She specifically brings extensive experience in the patent monetization field, where she regularly advises patent buyers and sellers, licensors and licensees on the intricacies of monetizing their IP rights. Lillian’s expertise in this field encompasses the full monetization life-cycle, from financing and sourcing of patents, through the patent acquisition process, and culminating with licensing and settlement arrangements. She has worked with several of the world’s leading public and private patent licensing businesses.

Recent Articles by Lillian Shaked

Partner-up: Risk-sharing provides patent holders better monetization opportunities

Lenders and investors like Gerchen Keller and Fortress, among others, have provided capital to or are partnering with private and public NPEs. These business are well suited to assessing market conditions, especially value, and calculating risk for given rights in a specific industry. That they are still willing to fund activities and co-invest in this climate is a testament to the durability of good patents. Also, there is some expectation that we are at or near bottom, and that there are more opportunities now.

Covenant Not to Challenge in a Patent License Does Not Bar a PTAB Review

Covenant Not to Challenge clauses are common in patent licenses, including licenses that are part of post-litigation settlements. clause is seen as a benefit bargained for under a license agreement and constitutes part of the consideration obtained by the licensor for the license. The intended effect of such a clause is to allow the licensor to make an estoppel argument in the event that licensee does challenge the patent, in spite of its agreement not to do so. However, the PTAB thus concluded that without an express grant from Congress, it did not have the authority to recognize contractual estoppel as a bar to an inter partes review.

Past Events with Lillian Shaked

IPWatchdog LIVE 2022

September 11-13, 2022