Chuck Lobsenz has over 25 years of experience practicing law primarily in the areas of technology transactions, patents and intellectual property. Prior to law school, Mr. Lobsenz worked as a semiconductor design engineer as well as a software engineer. He has structured, drafted and negotiated agreements of almost every conceivable kind as they relate to technology companies. In addition, Mr. Lobsenz often serves as outside general counsel to technology companies helping them address a great variety of business and legal issues as they arise.
Mr. Lobsenz has also prepared and prosecuted patents relating to electrical and mechanical technologies as well as software, computer related inventions and business methods. He has a particular expertise in assisting early stage technology companies in connection with the strategic creation of their patent portfolios from the ground up.
- Advises licensor and licensee clients with respect to and drafts and negotiates software license agreements, content license agreements and digital media rights agreements.
- Provided contract management, sourcing and negotiation services relating to contracts for the procurement of SaaS and telecom services for a premier hospitality company.
- Regularly conduct due diligence reviews relating to patent, intellectual property, freedom to operate and contractual matters generally in the context of M&A transactions.
- Provided strategic guidance in supply chain activities as well as the negotiation and closing of major technology procurement deals on behalf of large telecom operators and OEMs.
- Regularly counsel SaaS solution provider clients regarding business and legal issues in connection with customer sales agreements including issues relating to information security, privacy and intellectual property.
- Served as lead legal counsel supporting and closing numerous major hardware purchase transactions valued at multiple hundreds of millions of dollars and associated with a major wireless carrier’s build out of its 4G network.
- Represented Sprint as a member of deal team which successfully closed a $3.2B joint venture transaction to form Clearwire – the first company to deploy a 4G WiMAX network in the United States.
- Served as General Counsel to Virtustream, Inc., a cloud technology and services company during a period of rapid growth, with an emphasis on closing key strategic transactions and managing critical intellectual property initiatives.
- Served as primary legal counsel negotiating and closing a wholesale services and strategic relationship transaction on behalf of an emerging provider of satellite based global broadband capacity and services.
Patents and Intellectual Property
- Served as lead negotiator/transaction counsel for a major wireless carrier in connection with WiMAX and LTE patent pool formation efforts including obtaining necessary patent “essentiality” determinations for contribution to patent pools.
- Managed the growth of a patent portfolio as well as implementing an intellectual asset management program for a publicly traded telecommunications operator resulting in the creation of a substantial patent portfolio comprising over 60 issued patents in the US and abroad including multiple standard essential patents.
- Managed the trademark portfolio for a major wireless carrier including the policing of the unauthorized use of marks to include implementing a domain name enforcement program to protect key brands resulting in a number of wins under the Uniform Dispute Resolution Procedure (UDRP) process and a significant reduction in the unauthorized use of marks.
Publications and Speeches
- Speaker at ITECHLAW 2010 Annual Meeting and World Conference – “Current Issues and Practices in Patent Pooling” (May 2010)
- Coauthor, “Avoiding the Bite of ASP Relationships Gone Bad”, National Law Journal (November 13, 2000)
- Coauthor, “Internet Software May Be Protected Abroad,” National Law Journal (October 18, 1999)
- Coauthor, “Tech Start-Ups Must Assess IP Before Pursuing Cash,” National Law Journal (June 21, 1999)
- Coauthor, “New Weapons in the War Against Internet Software Pirates,” National Law Journal (April 13, 1998)
- Co-Host, TechLaw 2000 Radio Show (WMET AM 1150, Washington DC)
News, Events & Insights
Albany Law School of Union University, J.D.
- cum laude
- Associate Editor, Albany Journal of Science and Technology
Bucknell University, B.S. Computer Science and Engineering
- Virtustream, Inc., General Counsel
- Clearwire Corporation, Chief IP Counsel and Associate General Counsel
- Hunton and Williams, Corporate and Technology Group and Patent Group
- Shaw Pittman, Technology Transactions Practice Group
Areas of Practice
- New York
- U.S. Patent and Trademark Office