Chad A. Rutkowski

Experience

Digital Transformation

• Counseled American Water Works Company in its development of enterprise software, data analysis and machine learning technologies for operational and water quality enhancements, including implementation of IP capture, enforcement and licensing practices and protocols.
• Counseled a large medical device client on best practices in software licensing for software embedded medical devices and helped negotiate several large purchase agreements related to same.
• Negotiated a complex data lake construction, management and analytics software implementation on behalf of a vendor to a multinational consumer packaged goods conglomerate.
• Counseled a large healthcare plan and provider company on data ownership and IP protection strategies.
• Counseled encrypted browser technology provider on source code and data ownership strategies and open source dedication issues.
• Counseled a large pharmaceutical and consumer health corporation in software UX ownership and infringement issues.
• Negotiated a complex three way data analysis agreement between a healthcare cost management consortium, healthcare plan providers and IBM regarding use of Watson in optimizing healthcare costs.
• Conducted an audit of client’s business practices to identify IP in technology firm enabling population health management, and designed best practices for IP development and management.
• Drafted multiple IP and IT licensing contracts for client’s provision of learning management system and student drop/fail/withdraw analytics software.
• Drafted IP and IT licensing contracts for client’s development of smart cities project.
• Drafted IP and IT licensing contracts for client’s retail data analytics and reporting software platform utilizing Tableau and other software products.

Digital Media and Content Delivery

• Serves as intellectual property counsel for 2U, Inc., a distance learning platforms and services for prestigious higher education institutions. In addition to helping 2U protect its intellectual property platform, he has helped draft and review numerous complex licensing deals.
• Defended a client in copyright litigation against claims that photographs were used without permission on an audiovisual content menu guide.
• Drafted licensing deal between audiovisual production company and retail brand client for development of over the top platform distribution.
• Assisted video hosting company with development of content management best practices and DMCA compliance.
• Helped client reach a favorable settlement in a copyright infringement assertion against an advertising agency that created an auto dealership marketing campaign on YouTube.
• Successfully negotiated the resolution of an infringement claim by Facebook against a client, a provider of webpage layout services that allows users to customize their Facebook pages.

Technology Platform Protection

• Pursued CFAA and breach of contract claims against data scraping company for losses experienced by client’s retail ecommerce website.
• Assisted in client’s protection of IP assets in acquisition of technology-enabled consumer credit analysis firm.

Intellectual Property Licensing Litigation

• Counseled online gaming provider on appeal options after a loss on DMCA content management information violation claims.
• Developed copyright infringement and trade secret misappropriation claims against hold-over software licensee for unauthorized modifications to client’s virtual workspace software.
• Pursued trademark infringement claims against hold-over licensee for unauthorized uses of nutraceutical trademarks.
• Pursued trade secret misappropriation and unfair competition claims on behalf of value added reseller of software solutions against competitor that engaged in corporate raiding activities.
• Defended client against hold-over licensee claims of copyright infringement relating to alleged use of photographs in marketing and promotion of home improvement goods.
• Obtained a high seven-figure settlement in a patent licensing dispute involving technology for the location of cell phone users over wireless networks.
• Pursued International Chamber of Commerce arbitration proceedings in London relating to a breach of an exclusive trademark license agreement for the licensee’s asserted failure to properly promote and increase the value of licensed nutraceutical trademark.

Intellectual Property Indemnification Recovery

• Spearheaded the indemnification recovery efforts of a large wireless carrier in more than 100 patent infringement lawsuits since 2010. Helped develop processes to ensure timely notice and case updates to more than 200 potential indemnitors; established complex but transparent formulae for the allocation of responsibility across multiple technology fields; and increased both indemnitor tender acceptances and post-loss reimbursements for his client.
• Successfully defended multiple clients against indemnification assertions, including a supplier of equipment used in polishing and finishing semiconductor wafers and the supplier of voltage metering equipment.

Memberships

• Copyright Society of the USA
  • Secretary (2020 to 2022)
  • Trustee and Executive Committee (2013 to present)
  • Philadelphia Chapter: Chair (2012 to 2013)
• American Bar Association, Intellectual Property Law Section
  • Copyright Division, Emerging Technology Committee: Chair (2020); Vice Chair (2019)
  • Artificial Intelligence Task Force: Co-Chair
  • Copyright Division, Social Media Committee: Vice Chair (2021 to 2022)