Soyeon Pak "Karen" Laub advises clients on the full spectrum of intellectual property (IP) matters, including patent prosecution, licensing, technology transfer, mergers and acquisitions (M&A), IP due diligence, open source software (OSS), and strategic counseling. Karen is a co-leader of the IP Open Source Software Working Group. She has experience with technologies relating to computer hardware, software, wireless communications (Wi-Fi, Bluetooth, LTE, OFDMA), semiconductors, circuits, ASICs, chip packaging, data storage, displays, aerospace, defense, automotive, consumer products, financial services, Software as a Service (SaaS), and medical and healthcare.
Karen has worked extensively to help companies maximize their competitive position and profits from proprietary IP. These matters include negotiating more than 1,000 complex licensing, development, supply, transfer, and employee/consulting agreements; conducting due diligence for more than 500 M&As valued up to more than $1 billion; managing worldwide patent portfolios having 7,000-plus cases; rendering more than 300 infringement/validity patent opinions; and handling 100-plus OSS license projects and reviews. Karen also regularly prepares and prosecutes US and foreign patent applications.
Karen has successfully arbitrated and litigated cases before federal courts in California, Texas, Kansas, Georgia, and Delaware and before the US Court of Appeals for the Federal Circuit. She has guided clients through the entire litigation process, including preliminary injunctions, Markman claim constructions, infringement and validity summary judgment motions, depositions, expert reports, settlements, and trial.
Prior to joining Morgan Lewis, Karen served as general counsel for a leading chip company for telecommunications and wireless products. She also worked for years as an electrical and software engineer, researcher, and inventor before launching her legal career, including six years at Hughes Research Laboratories, during which time the Smithsonian National Air and Space Museum honored and took delivery of the 3D signal processing computer built by Karen and her technical team as the world's fastest computer for its size. She also designed and oversaw CMOS circuit fabrication and developed vertical interconnect technologies and novel power and ground techniques for high-performance computing, for which she was the principal inventor.
Co-managed global patent portfolios and prosecution of a worldwide portfolio having 7,400 cases for a global wireless telecommunications corporation with $25 billion in revenue; a patent portfolio of 3,000 cases for a multinational internet company with $60 billion in revenue; a patent portfolio of 3,000 cases for a global aerospace and defense company with $40 billion in revenue; and a patent portfolio of 1,300 cases for a top 10 semiconductor company. This work included managing portfolios covering mobile phone and Institute of Electrical and Electronics Engineers (IEEE) standards and quickly obtaining internet-related patents (within six months instead of the normal two to four years) enforceable against direct competitors
Rendered more than 300 critical infringement and validity patent opinions and analyses for one of the world’s largest flat-panel display manufacturers having $25 billion in revenue; a premium international gaming technology company; a multinational audio/video system supplier; and a leading precious metal producer with $20 billion in revenue
Led intellectual property due diligence in an acquisition of a $1 billion patent portfolio for integrated circuit (IC) chip packages and fabrication; a $1.2 billion acquisition of a global sports technology business; a $500 million acquisition of a real-time video content provider; and a $380 million acquisition of a healthcare quality management SaaS company. The work included evaluating IP portfolios and enforceability, and negotiating/preparing sophisticated IP agreements related to technology transfer, licensing, warranties, indemnities, and open source issues
Successfully prepared and negotiated more than 400 complex and extensive IP license, transfer, development, and acquisition agreements related to original equipment manufacturer (OEM) for encrypted data storage; Voice-over-Internet Protocol (VoIP) software; long-term evolution (LTE) and WiMAX chipsets; Bluetooth devices; and healthcare supply chain SaaS technology that is critical to clients’ IP
Mobile, wireless, and wired technologies: Wi-Fi, Bluetooth, LTE, multiple-input and multiple-output (MIMO), Multimedia over Coax Alliance (MoCA), near field communication (NFC), global positioning system (GPS), interference mitigation, noise cancellation, improving data traffic performance, error correction, orthogonal frequency-division multimedia access (OFDMA), differential quaternary phase-shift keying (DQPSK) processing
Software and cloud computing: On-demand delivery, hypertext transfer protocol (HTTP) video streaming and seeking, operating systems, graphical animation, electronic games, ecommerce transactions, e-wallet, secure networking (encryption, virtual private network (VPN), authentication), multifigure touch
Consumer devices: Cell phone, wearable technology, tablet, smart TV, digital broadcast receiver, digital camera, media player, Internet-of-Things (IoT), Machine-to-Machine (M2M), digital rights management (DRM)
Electronics—analog and digital: transceiver, digital-to-analog converter (DAC), multiplexer, radio frequency (RF) modulator, phase array antenna, tunable oscillator, system on chip (SoC), solid-state memory, light-emitting diodes (LED), liquid crystal displays (LCD), touchscreens, automotive (security, control, wireless communications, combustion), 3D image and video for mobile devices, video/audio compression, encoding, decoding, moving picture experts group (MPEG), adaptive stabilization
Semiconductors and materials: CMOS, bipolar, polysilicon, SiGe, sputtering, plasma etching, carbide, oxide, thin film, solar cells, chip packaging (stacked chip, high-frequency package), nanotechnology (nanotube-RAM, refractory metal particles and coating)