Dispute Resolution through Negotiation
· In 2016, Ms. Martone was advising a client seeking to purchase a portfolio of patents from another company. A dispute arose concerning whether the portfolio would be sold to my client or another company. In addition to advising my client, I directly negotiated with the seller, and got the sales discussion between them back on track. The dispute was resolved and my client was able to purchase the patent on mutually satisfactory terms.
· In 2012, Ms. Martone advised and served as lead negotiator for a Japanese company, in a royalty dispute over payment terms in a patent license agreement. Ms. Martone's client was the licensee. The licensor was a U.S. manufacturing company. The key issue was the application of the definition of net sales. Ms. Martone successfully resolved the dispute without the need to commence arbitration required under the agreement.
· In 2012, Ms. Martone advised a U.S. client about its negotiation with a European company with whom they had a patent license agreement. Her client, the licensor, contended that the European company breached the agreement by granting sub-licenses outside of the specified field in which it had the right to license.
· In 2009, Ms. Martone advised a U.S. based manufacturing company about strategies for its proposed termination of license agreements and minimizing potential damages.
· In 2007-2008, Ms. Martone advised an Asian-based client about its patent infringement claim against a U.S. company. The main issue was whether the U.S. company could legitimately assert a license defense based on the alleged status of the patents as essential to a telecommunications standard, and representations about licensing made by the prior owner of the patents.
· In 2005-2009, Ms. Martone advised a Japanese company about multi-year repeated conflicts over the terms of a joint development and license agreement between that company and a U.S. company. Ms. Martone negotiated new amendments to the agreement which resolved the conflicts.
· In 2006-2007, Ms. Martone represented a Japanese company who had a patent license granted by a U.S. Company. After a royalty audit, the licensor claimed that Ms. Martone's client owed $28 million in back royalties. Through a series of negotiations, Ms. Martone settled the claim for $2 million.