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WILLIAM T. W.
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
Applied Micro Circuits
Corporation – Sunnyvale, CA
Director of Contracts as
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.
subsidiary of Dayton Superior Corporation, Des Plaines, Illinois
Vice President, General
Responsible for domestic and
international legal affairs for leading manufacturer of concrete forming
equipment, construction chemicals, and related accessories.
Senior Counsel, Telematics
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.
Auburn Hills, MI/Schaumburg, Illinois
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.
WESTINGHOUSE ELECTRIC CORPORATION,
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
and Controlling Product Liability Risk,” CNA Insurance Product
Liability Advisory Council Meeting, Madison, WI, September
and Controlling Product Liability Risk,” Annual Product Liability
Safety and Liability Conference, Brookfield, WI, July
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
“ITS and Liability”, ITS America Intelligent Transportation
Systems and the Law Symposium, Chicago, Illinois, October
and Technologies in Transportation Systems,” Executive Workshop,
National Association of Independent Insurers, Rosemont, IL
“Legal Issues in Deployment of Intelligent Transportation Systems”,
ITS America Annual Meeting, Washington, D.C.
Member, Board of
Editors, Journal of Products Liability
French both need refreshing
JURIS DOCTOR, Villanova
University School Of Law, Villanova, Pennsylvania
BACHELOR OF ARTS,
cum laude, Villanova University, Villanova, Pennsylvania
– 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.
company for extension and integration of thinclient, serverbased vehicle
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.
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
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
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.
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.
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.
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
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.
of outward and inbound license, support and maintenance agreements with
software vendors large and small in context of various client products.
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.
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
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
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.
& Contract Legal Assignments Representative Sample Present
Laboratories, Abbott Park, IL
– Review and negotiate a variety of agreements concerning Abbott’s
Medical Products and Pharmaceutical business segments.
Chicago, IL –
Document review for major antitrust litigation. Document review for
Law Firm, Chicago, IL – Legal auditing of outside counsel
bills in mass tort litigation.
Law Firm, Chicago, IL –
Review of large quantity of complex, shopping center and commercial
lease agreements for client.
Law Firm, Chicago, IL – Document review in antitrust price
Inc., Libertyville, IL
– Drafting 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.
Management Corporation of America, Inc.,
Schaumburg, IL –
General legal work, litigation management, domain name disputes, software
licensing, and regulatory compliance policy development.
Roebuck & Co., Hoffman Estates, IL
– Research state and federal laws relating to several subjects
to update compliance efforts in several business areas; general contract
Inc., Louisville, KY
– General legal work, litigation management, employment matters,
international sales representative agreements negotiation and termination,
policy development for US subsidiary of German chemical company.