James A. Sheridan

Licensing

Mr.Sheridan is a recognized expert in the licensing of intellectual property rights. He has served as an expert witness in numerous licensing disputes covering a range of technologies and products, from semiconductors to consumer products such as teeth whitening strips and blender bowls. 

Mr. Sheridan has given depositions and trial testimony on issues including:

  • Inequitable conduct
  • The scope of covered products
  • Payment of royalties
  • Patent infringement
  • Confidentiality (non-disclosure agreements) 
  • Technology valuation 

Licensing Negotiations

Mr. Sheridan has negotiated countless licensing deals throughout his career. One of his early roles included serving for many years as the first Director of Patents and Licensing for National Semiconductor Corporation (now part of Texas Instruments), where he negotiated complex multi-billion-dollar licensing deals with global giants such as Siemens, AT&T, and Intel.

Since that time, he has represented clients in numerous licensing negotiations, helping them:

  • Determine subject matter, scope, term and geographic territory
  • Value technology
  • Negotiate beneficial financial arrangements, including royalty rates
  • Define other details, including, for example, the extent of licensed rights, including exclusive, sole or non-exclusive; licensor and licensee obligations; the ability of the licensee to grant sub-licenses; product quality; improvements; and renewal options.

Nonpracticing Entities

Increasingly, Mr. Sheridan counsels clients who are the target of patent-infringement claims by nonpracticing entities—holding companies that buy patents for the sole purpose of securing licensing fees or winning large settlements. Mr. Sheridan advises his clients on the validity of these claims and the best course of action, including whether to pay licensing fees, settle litigation or challenge the merits of the claim in court.