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EMMETT J. MURTHA PROFESSIONAL AND 1960-1962: Junior Auditor 1962-1969: Computer Marketing Representative 1969-1973: Commercial Relations Manager 1981-1995: Director of Licensing 1997-Present Founder, President & CEO
Emmett Murtha formed Fairfield Resources International in 1997 after 35 years with IBM Corporation. The firm serves clients interested in developing, organizing and leveraging their intellectual assets, as well as with related strategy development, IP licensing or sale transactions and acquisitions. At IBM, Mr. Murtha was named Director of Licensing in 1981, leading a group which acquired rights from others under patents, copyrights, trademarks and technology, and also granted licenses under IBM’s intellectual property. He was responsible as well for worldwide licensing policies and practices. Between 1987 and 1997, IBM’s annual royalty revenues grew by over seven thousand percent. From 1995, Mr. Murtha was responsible, as Director of Business Development, for finding new ways to leverage IBM’s intellectual property and related strengths. Again, results were dramatic, with substantial transactions in medical technologies, and a continuous stream of future revenue opportunities clearly identified. He has been a member of Licensing Executives Society for many years, including as an officer and a member of the Executive Committee. The Society has 13,000 members, of which 6000 are in North America. Mr. Murtha was President of LES USA/Canada 1999-2000. Emmett served for eight years on the board of the University of Connecticut Research & Development Corporation, retiring in September 2009. Until June 2008, he was on the board of Venomix, Inc. a startup company based on technology from the university. He also headed the Intellectual Property unit of the National Advisory Committee on Semiconductors, has been a frequent speaker on licensing, negotiating, and related topics, and is an Editorial Board member of The Licensing Journal and Patent Strategy and Management. Emmett was named a Certified Licensing Professional by the Licensing Executives Society in November 2007 in recognition of his accomplishments in and contributions to the licensing profession. On May 15, 2009 he was selected by Intellectual Asset Management magazine as a member of the IAM 250, the 250 leading IP management strategists in the world. PROFESSIONAL AND Member, Licensing Executives Society, USA/Canada: EMMETT J. MURTHA Tulip Computers International B.V. v. Dell Computer Corporation. 2003 (Fact witness for Tulip) Patent infringement. Deposed by Dell and testified at trial before Judge Jordan in Federal District Court at Wilmington, DE. Case settled mid trial. Kodak v. Sun Microsystems, Federal District Court for Northern NY, Judge Telesca. Patent infringement. (Licensing and reasonable royalty expert for Sun) Prepared extensive report. Kodak declined to depose. Case settled during final week of trial in September 2004. Atmel Corporation v. LB Ericsson Telefon AB, American Arbitration Association, NYC. Misappropriation of trade secrets. (Expert witness for Atmel on licensing language, licensing practices, and royalty base) Report submitted March 25, 2005. Deposition April 22, 2005. AAA testimony on May 19, 2005. Atmel awarded $43 million. Phillip M. Adams v. Gateway, Inc., Federal District Court, Central District of Utah, Judge Stewart. Patent infringement. (Reasonable royalty expert for Gateway). Report submitted December 15, 2005. Case settled April 2006. Microprocessor Enhancement Corporation and Michael H. Branigan v. Texas Instruments Incorporated, Federal District Court, Central District of California, Southern Division, Judge Stotler. Patent infringement. (Reasonable royalty, licensing and damages rebuttal expert for Texas Instruments) Report submitted May 12, 2006. Deposition May 31, 2006. Summary Judgment granted to Texas Instruments February 9, 2007. Paul Cozza v. McAfee, Inc., Federal District Court, District of Massachusetts, Judge Stearns. Misappropriation of trade secrets. (Reasonable royalty expert for Cozza) Report submitted April 21, 2006. Deposition June 30, 2006. Settled February 26, 2007. Nanodetex Corporation v. Sandia Corporation, Federal District Court for New Mexico, Judge Black. Patent infringement. (Patent licensing expert for Nanodetex) Report submitted November 9, 2006. Deposition December 19, 2006. Case settled November 2007. DE Technologies v. Dell, Inc., Federal District Court for the Western District of Virginia, Roanoke Division, Judge Conrad. Patent infringement. (Licensing and reasonable royalties expert for DE Technologies) Report submitted November 22, 2006. Deposition December 30, 2006. Case settled October 2007. Marvell International Ltd. v. Agere Systems, Inc. American Arbitration Association, Inc., NYC. Re: Scope of license grant to Marvell. (Licensing practices and agreement language expert for Agere) Report submitted March 8, 2007. Deposition March 20, 2007. Testimony at AAA hearing March 27, 2007. Agere prevailed. Timeline Inc. v. Proclarity Corporation and Microsoft Corporation, Federal District Court of Western Washington, Judge Robart. Patent infringement. (Licensing and agreement language expert for Timeline) Report submitted March 2, 2007. Deposition March 29, 2007. Partial summary judgment granted to Microsoft (but not Proclarity) in May, 2007. Case settled October 2007. InSyst, Ltd. v. Applied Materials, Inc., Superior Court, State of California, Santa Clara. InSyst alleged fraud, misappropriation, unfair competition and breach of contract by Applied. (Licensing and reasonable royalty expert for Applied) Report submitted September 28, 2007. Case settled January 2008. Convolve Inc. and Massachusetts Institute of Technology v. Seagate Technology LLC, Federal District Court, Southern District of New York, Judge Daniels. Patent infringement and misappropriation of trade secrets. (Reasonable royalty and damages rebuttal expert for Seagate) Report Submitted March 28, 2008. Deposition September 9-10, 2008. Trial date set for Q1 2010. U.S. International Trade Commission Investigation 337-TA-630 (Complainant Tessera, Inc.; multiple defendants), Judge Essex. Allegation of non-payment of royalty by chip packagers. (Licensing expert for Elpida Memory, Inc.) Report submitted July 30, 2008. Deposition August 19, 2008. Testimony October 2, 2008. An August 2009 decision found no infringement of the Tessera patents. Positive Technologies, Inc. v. LG Display Co. Ltd., Federal District Court, Eastern District of Texas, Judge Hall. Patent infringement. (Licensing and reasonable royalty expert for Positive) Report submitted August 1, 2008. Deposition October 13, 2008. Case settled October 2008. Lutron Electronics v. Control4 Corporation, Federal District Court, District of Utah, Judge Waddoups. Patent infringement. (Damages rebuttal expert for Control4) Report submitted August 8, 2008. Deposition August 22, 2008. Case settled February 2009. LaserDynamics, Inc. v. Asus Computer International; Quanta Computer Inc. et al, Federal District Court for the Eastern District of Texas, Marshall Division, Judge Ward. Patent infringement. (Licensing and reasonable royalty expert for LaserDynamics) Report Submitted March 2, 2009. Deposition April 13, 2009. Asus settled May 2009.Trial with Quanta June 30-July 6, 2009. Jury awarded $52 million to LaserDynamics. STMicroelectronics Inc., v. E. Harari and SanDisk Corporation, Superior Court of the State of California, County of Santa Clara. Damages and equitable relief for breach of fiduciary duty, breach of written contract, fraud, conversion, inducing breach of contract, unjust enrichment, and unfair competition. (Expert for STMicroelectronics on licensing strategy and transactions) Report submitted on May 22, 2009. Deposition August 13, 2009. Case settled October 2009. In Re: Rembrandt Technologies, LP, Federal District Court for the District of Delaware. Patent Infringement. (Licensing and royalty expert for Rembrandt) Report submitted May 27, 2009. Deposition pending. Wisconsin Alumni Research Foundation (“WARF”), v. Intel Corporation, Federal District Court for the Western District of Wisconsin. Patent infringement. (Licensing and reasonable royalty expert for WARF) Report submitted June 19, 2009. Deposition July 28, 2009. Case settled October 3, 2009.
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Principals Senior Consultants
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