Bart Eppenauer rejoined Shook Hardy & Bacon after serving as Microsoft’s chief patent counsel for over a decade. In that role, he led the patent group in the legal and corporate affairs department, where he developed Microsoft’s patent portfolio of more than 35,000 issued patents and managed a team of more than 100 patent professionals, offering patent counselling and product development support across Microsoft’s business and research divisions. Under his guidance, Microsoft’s patent portfolio resulted in an extremely successful IP licensing programme and received top rankings in IEEE Spectrum, BusinessWeek and The Patent Board.
Before his role as chief patent counsel, Mr Eppenauer was lead patent counsel for the digital media division at Microsoft and provided extensive patent counselling for Microsoft’s digital media offerings, including counselling and design-around guidance on numerous third-party patent assertions. He also spearheaded Microsoft’s patent submissions and participation in patent pools formed on the MPEG-4 Visual, H.264/AVC and VC-1 standards.
Mr Eppenauer’s practice at Shook focuses on strategic IP counselling and analysis, pre-litigation and litigation strategy, complex multilateral IP transactions and licence agreements and IP policy advocacy. He has extensive experience in IP transactions involving:
- product development agreements;
- patent licensing, sales and acquisitions;
- open source software licensing, usage and contributions;
- industry standards usage, participation and contributions;
- strategic alliances; and
- due diligence involving IP asset evaluation.
Mr Eppenauer works closely with government and judicial officials, academics and industry leaders worldwide on IP policy issues, including ongoing judicial and legislative patent reform efforts.
Mr Eppenauer was counsel of record and co-authored the US Supreme Court amicus briefs filed on behalf of the Intellectual Property Owners Association in Cuozzo Speed Technologies v Lee (2016) and Alice Corp v CLS Bank (2014). He frequently authors and speaks on a range of IP issues, with particular expertise in patent subject-matter eligibility of computer-implemented inventions, and has been published on the IAM blog. He has also been published and quoted in Inside Counsel, Morning Consult, Law360, PatentlyO, Managing Intellectual Property and IP Watchdog.
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