Mandy Chan | Consultant

Ms. Chan is an experienced technical and licensing consultant with particular expertise in the telecommunications and semiconductor areas. In addition to working with clients on settlement valuation and handling negotiations, she supports pre-trial investigations, claim construction, and motion practice; works with expert witnesses; and assists with technical and financial depositions and discovery. Ms. Chan analyzes patents, prior art, and licensing demands not only from the technical perspectives of infringement and invalidity, but also in light of her deep knowledge of the history and organization of telecommunications and semiconductor markets, including potentially-relevant standard-setting organizations, patent pool commitments, and potential sources of prior art.

Ms. Chan spent more than a decade as an in-house patent professional at Microsoft and Nokia before beginning her consulting practice. Starting in 2004 as the first and only Intellectual Property Specialist supporting Nokia’s Vancouver, Canada operation with over 500 R&D staff, she identified inventions, performed patentability reviews, and supported outside counsel in preparing and prosecuting U.S. and international patent applications. Her responsibilities steadily grew to include handling intellectual property matters for research and product development teams throughout North America, Europe and Asia, including patent clearances, design-arounds, landscaping analyses, and license valuations.

Promoted to IPR Business Manager in 2008, Ms. Chan’s duties expanded again as she was also called on to advise Nokia’s business units on intellectual property questions generally, such as development of patent strategies in relation to products incorporating open-source software; to perform IP related due diligence, integration and post-closing activities in a number of Nokia merge and acquisition transactions including Loudeye, Twango, Oz Communications, Plum Ventures, Motally and Earthmine; and performing detailed technical, non-infringement, and validity analyses in connection with licensing proposals, indemnification demands, US re-examinations, EP opposition proceedings, pretrial investigations, and US patent litigation. After 2012, as lead negotiator for Nokia in license negotiations with patent holders and patent pools, she closed numerous deals on terms favorable to Nokia. Following Microsoft's acquisition of Nokia's Device and Services business, Ms. Chan was involved in managing the company's patent portfolio, including trimming and continuation activities, and mining key patent assets in support of out-licensing, litigation and strategic acquisitions.

As a professional engineer and IP specialist, Ms. Chan’s work has involved a wide array of technology areas including wired and wireless telecommunications and standards, mobile devices hardware and software, embedded systems, multimedia codecs, memory and storage, mapping technologies and navigation, music services and applications, data analytics, cloud computing, context-aware personal agents, machine learning and artificial intelligence, search engine algorithms, computer networks and architecture, operating systems, and compilers.