As co-head of the firm’s Intellectual Property Practice Group, Tyler focuses his practice on complex intellectual property and technology contracts. Tyler represents clients ranging from Fortune 100 companies to startups in structuring, drafting and negotiating complex intellectual property and technology contracts, including patent and technology license agreements, joint development agreements, master services agreements, software licenses, software as a service (SaaS) agreements, data licensing, API license agreements, technology escrow agreements, trademark license agreements, university license agreements, and IP and technology transfer agreements. He also has extensive experience in structuring and negotiating IP and technology provisions in M&A transactions, conducting IP and IT due diligence investigations, advising on open source software compliance, litigation of intellectual property rights, and resolution of IP and technology contract disputes. His practice covers a range of industries, including energy, life sciences, fintech and blockchain, artificial intelligence (AI) and machine learning (ML), and information technology.

Tyler is a member of the Licensing Executives Society and is admitted to practice before the U.S. Court of Appeals for the Federal Circuit and the U.S. District Courts for the Eastern District of Virginia and Eastern District of Texas. He is also registered with the U.S. Patent and Trademark Office.

Bar Admissions

Education
JD, The George Washington University Law School, cum laude, 1995

BA, Harvard University, cum laude, 1988

• Represented medical device manufacturer in drafting and negotiating development agreement, quality agreement and trademark license for the international development and commercialization of technology relating to fluorescent in situ hybridization (FISH) probes for cancer detection.
• Represented Fortune 100 company in drafting and negotiating international research collaboration agreement relating to imaging agents comprising proprietary compounds for the detection of Alzheimer’s disease.
• Represented Fortune 100 company in drafting and negotiating license agreement relating to imaging agents comprising proprietary peptides for cancer detection.
• Represented pharmaceutical company in negotiating sublicense and commercialization agreement relating to pharmaceutical composition for treatment of hypertension.
• Represented medical device company in settlement and license negotiations relating to hip prosthesis patents.
• Represented medical device manufacturer in licensing of optical imaging technology.
• Represented manufacturer of test and measurement equipment in negotiation of joint development agreement and supply agreement relating to thermal imaging technology.
• Represented manufacturer of network security hardware and software in negotiation of agreements for combined cloud-based and on-premise network security solution for mitigation of distributed denial of service (DDoS) attacks.
• Represented information technology services company in resolution of numerous contract disputes.
• Represented major financial institutions in defense and settlement of lawsuits by patent assertion entities.
• Represented major financial institution in development of its patent portfolio on financial services inventions covering multiple lines of business.
• Represented major manufacturer of consumer and professional lawn and garden products in drafting and negotiating IP terms in asset purchase agreements, IP assignments, and license agreements.
• Represented biotech company in IP aspects of merger agreement with startup company in the field of monoclonal antibody technology.
• Represented pharmaceutical company accused of infringing patents to abuse-resistant opioid products in licensing and litigation settlement negotiations. Obtained favorable settlement for client on the eve of summary judgment hearing.
• Represented pharmaceutical manufacturer in negotiation of license, development and commercialization agreement relating to opioids.
• Represented manufacturer of magnetic resonance imaging (MRI) machines in patent interference proceeding, appeal, and worldwide licensing and settlement negotiations.
• Represented patent owner, NTP, Inc., in drafting and negotiating license and settlement agreements to settle patent litigation against the manufacturer of the BlackBerry® wireless handheld in NTP, Inc. v. Research in Motion, Ltd. Obtained substantial settlement for client, NTP, Inc.
• Represented Fortune 100 company in negotiation of international license agreement relating to locomotive technology.
• Represented manufacturer of industrial equipment in international license dispute relating to steel manufacturing equipment.
• Represented developer of carbon and acid gas capture technology in negotiation of collaboration and license agreement with electric power generator.
• Represented power plant developer in negotiation of intellectual property provisions in engineering, procurement and construction contract for development of solar power generation facility.
• Represented industrial printer in acquisition of newspaper printing technology and equipment from global manufacturer of imaging products.
• Represented manufacturer of paper shredders in patent infringement lawsuit through discovery, claim construction, summary judgment motions, and trial.
• Represented designer of memory chips in patent infringement and interfering patents suit.
• Represented Fortune 100 company in patent assertion against manufacturer of digital cameras.
• Drafted and negotiated numerous other license agreements for domestic and international transfer of intellectual property rights including patent, technology, software, and trademark license agreements.
• Conducted intellectual property due diligence investigations of companies targeted for acquisition.
• Prepared formal opinions on patent validity, enforceability and infringement.
• Conducted patent clearance studies to identify potential infringement issues for new product introductions.
• Prepared and prosecuted patent applications in mechanical, electromechanical, medical device and financial services arts.

• Member, Licensing Executives Society
• Member, American Intellectual Property Law Association

• Legal 500, United States, 2009, 2010

• Chapter: The Shifting Subject Matter of IP Licensing in the Information Age: Maximizing the Licensor’s Asset Monetization while Facilitating the Licensee’s Success, Published in Aspatore Books: Intellectual Property Licensing Strategies 2016
• “Chapter. The Shifting Subject Matter of IP Licensing in the Information Age: Maximizing the Licensor’s Asset Monetization while Facilitating the Licensee’s Success,” Intellectual Property Licensing Strategies Leading Lawyers on Analyzing Trends in IP Licensing and Drafting Effective Agreements (Aspatore)
• Medical Devices Law and Regulation Answer Book, Chapter 16: Licensing, Product Development and Commercialization, Practicing Law Institute
• The Scope of Patent Exhaustion, Intellectual Property Magazine
• Medical Devices Law and Regulation Answer Book, Chapter 16: Licensing, Product Development and Commercialization, Practicing Law Institute
• Hunton AI and Emerging Technologies 2023 Year in Review
• Training a Machine Learning Model Using Customer Proprietary Data: Navigating Key IP and Data Protection Considerations, Pratt’s Privacy & Cybersecurity Law Report
• With All the New Technologies Out There, Does Your IP Due Diligence Need an Upgrade?, The Licensing Journal, Vol. 40, No. 3, IPAA