Eversheds Sutherland strengthens IP bench on West Coast with partner Erik Chancellor Smith

Eversheds Sutherland is pleased to share that Erik Smith has joined the firm’s Intellectual Property (IP) Practice as a partner.

Smith will focus on IP asset-based secured financial transactions, strategic patent and trademark portfolio counseling and prosecution, portfolio diligence and acquisition in connection with corporate M&A, and identification of patents for use in monetization strategies based on market opportunities. Prior to joining Eversheds Sutherland, Smith was the Director of IP Finance at Fortress Investment Group.

With more than 15 years of experience, Smith is a highly skilled attorney with a deep understanding of patent valuation, procurement, enhancement, and monetization in pursuit of enhancing company metrics. His extensive knowledge encompasses identifying patent value (and deficiencies) for efficiently driving commercial objectives leveraging companies’ IP as part of a developed strategy for enhancing revenue through a variety of optimized transactions, such as acquiring loans, licensing IP and technology, company acquisition, global litigation and ITC actions and market consolidation.

Smith will offer strategic patent counseling and comprehensive portfolio analysis to a diverse range of clients, from startups to Fortune 100 companies, tech to finance. He will collaborate closely with clients to evaluate and negotiate complex IP transactions, ensuring that the value of a patent portfolio justifies investment for future monetization.

“I am thrilled to welcome Erik to the firm,” said Mark D Wasserman, Co-CEO of Eversheds Sutherland. “Erik’s arrival is a testament to our commitment to expanding our global IP capabilities. His experience not only strengthens our West Coast presence but also highlights the technical excellence and high-quality services that our clients have come to expect from us. With Erik on board, we are better positioned to provide comprehensive IP transactions and patent portfolio counseling, ensuring our clients’ innovations are protected and maximized for their full potential.”

Smith will regularly assist clients in underwriting and performing diligence of IP portfolios during corporation mergers and acquisitions, strategically preparing and prosecuting patent and trademark applications based on competitive marketplace analysis, defending patents in Inter Partes Review proceedings in the USPTO, developing and executing patent valuation and monetization strategies, and patent and technology licensing. He will also counsel clients on mergers and acquisitions, non-infringement and invalidity opinions, analysis of patents for participation in patent pools, and support of litigation and post-grant actions of commercial disputes involving complex technologies.

“Erik’s extensive experience in enhancing post-acquisition investment value by identifying and tailoring key patent claims to bolster a company’s defensive stance and maximize offensive potential will be invaluable to our clients,” said Kevin King, IP Practice Group Leader. “He brings a wealth of knowledge in developing targeted picture claims against high-value targets, navigating invalidity/IPR/litigation/ITC issues, and expanding the total addressable market. Erik will execute monetization strategies by collaborating with outside counsel to meet milestone events and budgets, prosecuting new claims, adding targets, refining claim charts, and adjusting strategies based on IPR and litigation challenges.”

Prior to joining Eversheds Sutherland, Smith served as the Director of IP Finance at Fortress Investment Group. In this role, he assessed and negotiated thousands of IP transactions annually, determining whether a patent portfolio’s value justified investment for subsequent monetization. He also gained extensive experience in analyzing and calculating the capital required for investment by identifying high-value patent claims with measurable confidence of yielding substantial returns. This analysis was based on market and damage assessments, considering pre-grant risks and common post-grant, litigation, and investment risks.

Smith also possesses extensive experience in wired and wireless networks, including infrastructures and handset design, smart vehicle technology, network and data security, storage access technology and networks, streaming technology, Internet protocols, virtualization, AI/AR/VR, protocol harmonization, satellite technology, IOT, traditional and electronic financial transactions/systems, cryptography technologies, optics, natural energy harvesting and conversion, battery and cooling technology, smart agriculture and software development. He has a deep understanding of analog and digital electronics, Internet hardware and design, graphical subsystems, social media, e-commerce, and cloud-based computing.

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