Thomas Nelson

General Counsel & Senior Vice President

Arlington, Virginia, United States

About

A skilled advisor with strong business acumen, responsible for oversight and performance of all legal matters at an energy technology company, with experience in commercial contracts, licensing, litigation, employment law, a wide variety of intellectual property matters, and a background in electrical engineering, sales, and marketing. Admissions: Virginia, District of Columbia, New York, and U.S. Patent and Trademark Office.

Experience

  • General Counsel & Senior Vice President at GridPoint, Inc.
    Jul 2011 - Present · 15 yrs

    Responsible for oversight and performance of all legal matters arising out of GridPoint's energy management business involving energy monitoring, sensing, control hardware and software. Provide advice on legal issues at all levels and functions of the company. Ensure company compliance with laws and regulations. Provide risk assessments and mitigation advice to senior management. Draft and negotiate agreements, including customer-facing SaaS contracts, quote terms, end user terms, reseller and referral agreements; general operations agreements such as vendor and subcontractor contracts; employment contracts; employee equity agreements; and loan agreements. Retain, manage, and support outside counsel in a wide variety of cases and court proceedings. Assess pre-litigation claims, draft pleadings, manage discovery, negotiate settlements, and interface with insurance carriers for insured claims. Provide advice on a variety of employment matters, including RIF programs, employment offers, separation agreements, non-compete matters, and EEOC claims. Plan and implement patent strategies to maximize the value of company IP. Monitor product development, identify patentable subject matter, and draft original patent applications and related prosecution filings. Manage prosecution counsel and patent annuity and maintenance fee payments. Identify patent assertion threats, perform risk analysis, and prepare patent clearance opinions. Negotiate IP acquisition and license agreements. Ensure compliance with open source software licenses and security matters. Manage trademark counsel, declarations of use and incontestability filings, and perform trademark searches. Provide advice on trademark infringement, fair use, and respond to trademark violations. Maintain corporate minutes, draft board resolutions; maintain capitalization table for employee incentive plan. Maintain stock ledger, perform stock transfers, and respond to investor requests.

  • Of Counsel at Morgan, Lewis & Bockius
    Aug 1998 - Jun 2011 · 12 yrs 11 mos

    Litigation practice included representing clients in patent cases involving wireless networking, computer architecture, cell phones, LCDs, and medical devices. Demonstrated independence and leadership while building and defending patent infringement cases, including managing technical discovery and experts, and making arguments at a claim construction hearing. Experienced in teaming with large joint defense groups. Patent prosecution practice includes drafting and prosecuting patent applications in the electrical, wireless, computer, and communication arts. Technology experience: cable modem standards; DSL modem standards; digital television standards; WiFi; cell phone antennas; image compression; RF distance measurement; clock recovery circuits; phase locked loops; A/D converters; bus standards; cache coherency; instruction pipelines; personal computing hardware platforms (chipsets, processors, and peripherals); DRAMs and DRAM controllers; BIOS routines; printer rendering technology; and LCD screens.

  • Marketing Manager & Sales Engineer at Anaren Microwave, Inc.
    Aug 1994 - Jul 1998 · 4 yrs

    In-house Sales Engineer in the Wireless Group at Anaren, whose goal was to transfer military electronics technology and manufacturing expertise to commercial product lines sold into the wireless and cellular infrastructure sectors. Later served as Marketing Manager in the Wireless Group, identifying and pursuing business opportunities in the wireless and cellular infrastructure sectors. • Increased commercial sales by obtaining design-ins of Anaren’s first commercial components (RF couplers) into base station equipment for major cellular infrastructure customers, such as Motorola, Alcatel, AT&T, and Nortel. • Trained regional sales representatives on Anaren’s new commercial technology and met with customers to educate them on Anaren’s product lines. Used feedback from customers to improve and expand product lines leading to additional market penetration. • Worked closely with engineering staff during various phases of product design and development to ensure that product lines conformed to customer expectations. • Presented marketing plans to senior management and board of directors based on the identification and analysis of emerging technologies and trends. Estimated long range sales forecasts by combining cellular and wireless market projections with known customer opportunities thereby facilitating business planning. Technology experience: laminated stripline components; hybrid couplers, power divider/combiners, and baluns used in cellular amplifiers; integrated splitter/combiners for cellular amplifiers; hybrid matrix amplifiers; integrated mixed-signal backplanes for use in cellular base stations; and antenna beamformers.

  • Law Clerk at Smith Sovik
    1992 - 1993 · 1 yr

    • Performed legal research. • Prepared legal memorandum, pleadings, and discovery responses. • Conducted accident investigations. • Assisted counsel at trial.

  • Electrical Engineer at Syracuse Research Corporation
    Nov 1985 - Aug 1990 · 4 yrs 10 mos

    Designed digital signal processors and related software for use in radar prototypes, including: • A three stage digital filter and frequency analyzer using interleaved computational cycles. • Custom firmware assemblers for compiling DSP code. • Digital waveform generator for creating radar source signals. • Phase locked loop for synchronizing radar scans with rotating illuminators. • Test software for emulation and testing of DSP hardware. • Radar system control software. Technology experience: digital signal processing; FFT, FIR, correlation, and target detection processors; digital hardware design; radar; and software.