Scott Jacobson

About Scott Jacobson

High Tech General Counsel and Chief Intellectual Property Counsel - Practical…

Experience

1. General Counsel and Chief Intellectual Property Counsel

   RAB Lighting

   Aug 2016 — Present

   First GC hired for RAB managing $MM legal budget across ~ 15+ law firms in the US, China, and Southeast Asia. Coordinate all legal matters globally, including contracts, dispute resolution, litigation, insurance mitigation, patents, trademarks, real estate, HR/labor, M&A, corporate governance, customs, and compliance matters. Broad spectrum of legal issues favorably resolved including the following: • Reduced outside counsel costs by ~$2.5M in first 2 years of being hired • Drafted and negotiated the following agreement types: distributor, China and Mexico supplier, independent sales representative, R&D, licenses, consultant and service, software, rebate, employment, severance, confidentiality • Resolved favorably two patent litigations that threatened business shutdown and $MM damages • Successfully enforced design and utility patents against China supplier and US competitor • Resolved $ MM real estate lease dispute induced by company’s footprint reduction • Significant recovery from suppliers and insurance for a product liability claim with no counsel fees • Significant recovery from insurance and third party concerning environmental issue at low cost • Resolved various employee hiring and termination issues • Closed real estate sales and leases of various properties in the US and China • Resolved various trade and compliance issues • Managed globabl patent and trademark portfolio for ~ 250 patents and 300 trademarks • Quarterbacked complex patent inter partes reexamination (IPR) strategies

Education

• United States Navy Officer Candidate School (OCS)

  Commissioned Officer, Leadership

  1991 — 1991

• St. John's University School of Law

  Doctor of Law (J.D.), Law

  1993 — 1996

• Rutgers Business School

  Mini-MBA Innovation Certification, Business Fundamentals

  2015 — 2015

• The United States Naval Postgraduate School

  MS equiv, Nuclear Engineering

  1991 — 1992

• University at Buffalo

  BS, Mechanical Engineering

  1986 — 1990

Skills

• Mergers & Acquisitions
• Patentability
• Patents
• Business Intelligence
• Trade Secrets
• Market Intelligence
• Joint Ventures
• Commercial Litigation
• Patent Prosecution
• Leadership
• Corporate Law
• Patent Law
• Patent Litigation
• Patent Portfolio Analysis
• Intellectual Property
• Due Diligence
• Licensing
• Management
• Patent Applications
• Strategy
• Trademarks
• Ip
• Litigation