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Resume for William W. for Attorney / Paralegal / Electronics in St. Charles, Illinois

Occupation: Attorney / Paralegal Industry: Electronics
Country: United States City: St. Charles
State: Illinois ZIP: 60175

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N Falcon’s Trail St. Charles, Illinois Cell: .. email: 

Seasoned legal executive with considerable expertise in representing technology driven product businesses e.g., robotics, semiconductors, cellular devices, telematics i.e.,OnStar® as well as some brick and mortar businesses such as construction equipment, electrical distribution, and light rail vehicles


Applied Micro Circuits CorporationSunnyvale, CA  Director of Contracts as Consultant Responsible for negotiating and drafting major domestic and international transactions with customers and vendors, as well as channel agreements, for this $M+ NASDAQ designer and marketer of control and transport semiconductors and storage controllers, and other responsibilities as assigned. SYMONS CORPORATION, subsidiary of Dayton Superior Corporation, Des Plaines, Illinois  Vice President, General Counsel

Responsible for domestic and international legal affairs for leading manufacturer of concrete forming equipment, construction chemicals, and related accessories.   

MOTOROLA, INC., Schaumburg, Illinois 

Senior Counsel, Telematics Communications Group,

Manager, Contracts Automotive Electronics & Controls Sector,

Served in several senior leadership roles during business unit’s growth to $. billion group; legal leadership of numerous multimillion dollar product sales/purchases, joint ventures/strategic alliances and technology licenses, and developed contract risk control policies.

SIEMENS CORPORATION, Auburn Hills, MI/Schaumburg, Illinois  Counsel

Functioned as general counsel to, and managed the legal affairs of, companies that design, develop, and manufacture automotive electronics; electrical and electronic systems; and medical diagnostic imaging products.



Serviced business in robotic equipment and systems, process automation and computer control systems, industrial and computer/instrument services, electrical component manufacturing, and industrial/utility motor joint venture.

  • Admitted to practice, Supreme Court of Pennsylvania
  • Speaker, “Contracts and Controlling Product Liability Risk,” CNA Insurance Product Liability Advisory Council Meeting, Madison, WI, September
  • Speaker, “Contracts and Controlling Product Liability Risk,” Annual Product Liability Safety and Liability Conference, Brookfield, WI, July
  • Panelist, “Corporations are from Mars, Insurers are from Venus, and Outside Counsel are from…: A Primer for Managing Our Corporate Relationships,” ABA Litigation Section, Committee on Corporate Counsel, Midwest Regional Product Liability Workshop, Chicago, Illinois, November
  • Speaker/Panelist, “ITS and Liability”, ITS America Intelligent Transportation Systems and the Law Symposium, Chicago, Illinois, October
  • Speaker, “Trends and Technologies in Transportation Systems,” Executive Workshop, National Association of Independent Insurers, Rosemont, IL
  • Moderator/Panelist, “Legal Issues in Deployment of Intelligent Transportation Systems”, ITS America Annual Meeting, Washington, D.C.
  • Member, Board of Editors, Journal of Products Liability 
  • Languages: German, French both need refreshing

    EDUCATION JURIS DOCTOR, Villanova University School Of Law, Villanova, Pennsylvania  BACHELOR OF ARTS, cum laude, Villanova University, Villanova, Pennsylvania  REPRESENTATIVE HIGHLIGHTS AND ACCOMPLISHMENTS  
  • Emerging Technology – Transactions and Licensing: Together with senior management of group, conceived, negotiated, and consummated strategic alliances aimed at developing new technologies and channels to market, to help implement client’s strategy to grow and maintain position as preeminent supplier of telematics products and technology.  Repeatedly demonstrated ability to understand working details of complex technologies and business issues relating to their development and exploitation, and create pragmatic solutions consistent with business objectives. 
  • For example, in months after assignment to newly formed group, led or played significant role in finalizing transactions with:
  • US entities for ondemand audio replay technology, satellite radio receiver technology, systems integration and development tools software, supply and marketing of handsfree cellular accessories and associated technical information.
  • British and German companies for communications protocols and traffic information services, and supply of  traffic information receiver equipment.
  • Israeli firm for optical microphone supply and technical information concerning noise reduction microphones for vehicles.
  • French software company for extension and integration of thinclient, serverbased vehicle navigation technology.
  • Execution of these transactions involved responsibility for teams of other house counsel and in some cases foreign attorneys who had to be integrated into the negotiations under my direction.

  • As member of telematics industry trade association legal affairs committee, helped shape legal thinking and recommended solutions for the many issues involved in this leadingedge technology, both inside corporation and in public sector.
  • Negotiated funding agreement with European quasigovernmental technology development agency for development of new robotic product that would become mainstay of client’s product line; took over responsibility for negotiations after acquisition of company, developed and executed strategy with new management to minimize obligations to lender for royalties and retain important technology rights relating to developments.  Product became very successful part of company’s expansion into new applications.  Later negotiated agreed settlement of arrangement to enable sale of company. 
  • Worked with new management of technology company that wanted to take the business in a different direction because of changes in the market.  Anticipated the likelihood that one of the oldest and most extensive license relationships in Japan would need to be altered to enable this shift. Developed and helped negotiate strategy for an equitable, saleable “divorce” that allowed client to retain rights to some important technology, and proceed with broader, strategic joint venture that would solidify position in wider market.
  • Acquisitions/Divestitures:
  • Executed corporate management’s decision to divest robotics business; negotiated divestiture agreement with Swiss purchaser of the assets, most importantly the intellectual property, distribution and manufacturing capabilities. Transaction further complicated by employees and facilities in four countries, a variety of foreign third party entanglements, some of which required consent to the sale, and the usual need for limited disclosure – as well as closing by year end.  While negotiating in Switzerland, coordinated attorneys in France, the UK and Germany, and with intellectual property attorneys in U.S. to deal with the extensive IP portfolio.  Closed deal and accomplished all management objectives on time.
  • Conceived, drafted and negotiated license to divested operation for robotic control software and trademark; developed mechanism terminating trademark rights based on scope of software developments by licensee, to maintain integrity of client’s mark.
  • Recommended client to license, rather than sell technology to product line buyer who was financially troubled in product line divestiture, so that by retaining ownership, client could use technology to service existing customer base, if buyer’s financial challenges caused bankruptcy.
  • Corporate Governance
  • Authored and presented numerous programs on compliance issues and operational improvement. Created and presented product liability and safety design training for engineering personnel, as well as programs relating to regulatory requirements in automotive components operations, antitrust, contracting and commercial risk identification and mitigation for sales personnel in various industries, export compliance, Foreign Corrupt Practices Act, NHTSA and TREAD Act, commercial bribery statutes, and a full day seminar for purchasing personnel which covered the major aspects of contracting, intellectual property rights, liability issues and other issues relevant to risk sharing with vendors. 
  • Served as Secretary to internal Board of Directors for two U.S. subsidiaries, responsible for development of Board meeting agenda, drafting of resolutions, unanimous consents and other legal documentation necessary to implement Board’s decisions; developed and distributed documentation in support of meeting agendas to Board members and consulted with Board members as required to clarify or answer questions relating to agenda items; attend Board meetings to record proceedings and provide advice to Directors as required on legal issues related business or corporate actions; and assisted in communication and implementation of Board actions after meetings.
  • Assisted a number of clients in conception and execution of paper and electronic media records management programs.
  • Worked on corporate task force revising employee invention and nondisclosure agreement and promulgating new intellectual property management policy to reflect importance of rapidly developing technology to corporation’s future. 
  • Expanded role of contracts function within business unit; lead development of contract and legal risk management policies and procedures. Hired and trained contractors to assist with workload, who ultimately obtained other fulltime positions within corporation.
  • Operational Effectiveness 
  • Negotiated hundreds of outward and inbound license, support and maintenance agreements with software vendors large and small in context of various client products. 
  • Legal representative of negotiating team for sale of computercontrolled light rail transit system for airport, requiring resolution of extensive system performance and “uptime” warranties, and construction and project management issues; completed negotiation in four weeks to enable aggressive construction plan required by airport authority for system.
  • Coordinated review of cybersquatters for client domain names; developed successful strategy to recover domain names from several registrants through negotiations; prepared cease and desist letters for unwilling website operators; prepared policy for use of client owned marks and terminology by third parties; created release forms for use of images and electronic documents on third party websites.
  • Two Marketing Awards for successful completion of two complex, multimillion dollar sales transactions.
  • Argued on behalf of client division in appealing National Fire Protection Association revision to the National Electrical Code; successful appeal saved client division millions in immediate redesign, retooling, and many other transition costs. 
  • Managed extensive portfolio of product liability, commercial and other types of litigation, selecting and supervising outside counsel in U.S. and a number of foreign countries; led support of litigation discovery, litigation tracking mechanisms, development of defensive and offensive strategy and settlement or trial as warranted. 

    Consulting & Contract Legal Assignments Representative Sample Present  

    Abbott Laboratories, Abbott Park, ILReview and negotiate a variety of agreements concerning Abbott’s Medical Products and Pharmaceutical business segments.

    BP plc, Chicago, IL  – Document review for major antitrust litigation. Document review for dealer litigation

    Major Law Firm, Chicago, IL – Legal auditing of outside counsel bills in mass tort litigation.

    Major Law Firm, Chicago, IL – Review of large quantity of complex, shopping center and commercial lease agreements for client.

    Major Law Firm, Chicago, IL – Document review in antitrust price fixing litigation.

    Motorola, Inc., Libertyville, ILDrafting and negotiation of variety of software and content license agreements with vendors for inclusion of software in cellular handsets; reviewing and negotiating complex planning and implementation agreements for wireless radio systems for public safety agencies; additional project work involving international product sale agreements. 

    Omron Management Corporation of America, Inc., Schaumburg, IL  – General legal work, litigation management, domain name disputes, software licensing, and regulatory compliance policy development.

    Sears Roebuck & Co., Hoffman Estates, ILResearch state and federal laws relating to several subjects to update compliance efforts in several business areas; general contract drafting.

    SüdChemie, Inc., Louisville, KYGeneral legal work, litigation management, employment matters, international sales representative agreements negotiation and termination, policy development for US subsidiary of German chemical company.

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