Christopher J. McKenna

Partner

Overview

Christopher McKenna is a partner and intellectual property lawyer with Foley & Lardner LLP, office managing partner of the Boston office, leadership team member of the Innovative Technology Sector and co-chair of the firm’s Electronics Practice, in which he helps leading-edge technology companies capture, protect, manage and leverage their intellectual property assets with practical, business-orientated prescriptive guidance based on his significant experience spanning technology, business and law.  

Strategic IP Management and Execution

Mr. McKenna acts as a strategic advisor to technology companies to identify, capture and protect its most important intellectual assets that support and drive the company’s products, competitive differentiators and business value. He formulates strategies to provide a framework for company’s decisions regarding the development and management of IP assets. With a strategy first approach, Mr. McKenna manages each IP asset to assure continuous alignment with company’s business goals and commercialization efforts. 

Mr. McKenna is sought after for leading large teams of attorneys, paralegals and assistants to develop, execute and manage clients’ patent portfolios to budget, quality and scale.  His teams handle all aspects of patent portfolios including establishing core patents positions for startups, dynamic patent portfolio development for emerging technology companies, and worldwide patent portfolio management for larger companies. He also provides strategic counseling on the development and integration of patent portfolios obtained via merger and acquisition.

Mr. McKenna also advises and provides guidance on establishing business processes for companies to make intellectual property intentional and part of a company’s culture.  He uses a strategic, systematic, collaborative and lightweight processed for companies to apply intent and well-informed business decision making to its intellectual property development and protection programs.

Commercialization of IP Assets

Mr. McKenna counsels technology companies on the legal, technical and business issues of intellectual property aspects in various transactions and agreements, from vendor and contractor agreements, supplier, partner, reseller and distribution agreements to terms of use, license agreements, master services and solution agreements to joint development and collaboration agreements. He implements agreements to maximize the Company’s intellectual property footprint and to reduce the risk of intellectual property leakage that can result from performance under such agreements. Mr. McKenna also provides strategic counseling on data as another form of intellectual property through formulation of data governance models for the monetization and licensing of data through agreements. 

Transaction Advisory and Litigation Support

Mr. McKenna also counsels on intellectual property under transactions such as for merger and acquisition deals, investments via venture capital or private equity and licensing, assignment and purchase agreements.  Mr. McKenna performs due diligence on target intellectual property assets as well as represent companies under due diligence or otherwise being postured for a transaction.

His experience with intellectual property litigation includes providing technical and patent support for complex patent infringement cases within high technology industries, trade secret misappropriation cases involving complex software and technology; and pre-litigation patent related counseling, including patent analysis, non-infringement and infringement opinions.

Prior to his legal career, Mr. McKenna held technical and executive roles in a variety of software, system integration and information technology companies. He was previously the chief operations officer of a solution integrator of manufacturing software systems to semiconductor, electronic and medical device manufacturers. He also previously worked as the director of professional services for an enterprise software company delivering operational performance solutions to global manufacturers. 

Representative Engagements*

Intellectual Property Development and Management

  • Oversee the strategic day to day development and management of the global patent portfolio of a Fortune 100 company directed to software, information technology, networking, application delivery and security related technologies.
  • Oversee the strategic day to day development and management of US patent portfolio of Global 100 company directed to augmented and virtual reality technologies and related wireless implementations.
  • Oversee the strategic day to day development and management of fast-growing global patent portfolio of enterprise artificial intelligence (AI) software and SaaS company.
  • Oversee the strategic day to day development and management of US patent portfolio of Fortune 500 global technology company, which develops semiconductor and infrastructure software.
  • Patent portfolio counseling and development for fast growing Inc. 500 company providing a security awareness training platform.
  • Developed strategy and patent positions for various SaaS based platforms, blockchain and artificial intelligence based emerging technology companies.
  • Counseled and developed defensible patent positions and content, filing and budget strategies for various start-up companies.
  • Provide strategic IP counseling for cross-border companies entering the US market.

IP Transaction and Advisory Support

  • Draft, negotiate and execute patent and IP related asset purchase agreements for various innovative technology and SaaS based companies.
  • Draft, negotiate and execute various terms of use, master services and solution agreements for enterprise software, artificial intelligence, blockchain and SaaS-based  application technology companies.
  • Performed intellectual property due diligence and counseled on intellectual property terms and conditions on a multitude of purchase and sales agreements with experience on the buy-side and sell-side of merger and acquisition transactions in the technology sector.
  • Provide strategic counseling and advice to innovative technology companies on protecting and posturing its intellectual property in joint development and collaborative agreements

IP Litigation Support

  • Provide freedom to operate analysis, counseling and non-infringement and invalidity opinion work for various technology companies.
  • Provide strategic counseling and risk management on competitive landscape patent portfolios.
  • Defense counsel in a patent infringement litigation involving digital imaging. Polaroid Corporation v. Hewlett-Packard Company, D. Del.
  • Court designated technical counsel in trade secret misappropriation case involving advanced speech recognition technologies. Nuance, Inc. v. Voice Signal Technologies, Inc., D. Mass.
  • Counsel in patent litigation involving speech recognition and mobile communications technology. Nuance, Inc. v. Voice Signal Technologies, Inc., D. Mass

*To reflect the breadth of experience, the foregoing lists of representative engagements include representations by Mr. McKenna prior to joining Foley.

Recognition

Mr. McKenna was recognized in IAM Patent 1000 – The World’s Leading Patent Practitioners for his work in patent prosecution in 2020 and 2021. He was also recognized by Chambers USA: America’s Leading Lawyers for Business in the practice area of intellectual property (2021). He was selected for inclusion in the 2009 - 2011 Massachusetts Super Lawyers – Rising Stars® lists. In 2011-2014, The Legal 500 recognized him for his work in patent licensing and transactional, and patent prosecution

Education

Mr. McKenna earned his law degree, cum laude, from Suffolk University Law School (J.D. 1997). His undergraduate degree was conferred, magna cum laude, from the University of Lowell (B.S.E.E., 1989).

Admissions and Professional Memberships

Mr. McKenna is admitted to practice in Massachusetts and before the U.S. Patent & Trademark Office. He is a member of the Boston and Massachusetts Bar Associations. He also is a member of the American Intellectual Property Law Association.

Community Engagement

Mr. McKenna participates as a member in a variety of community based groups, such as the Museum of Science and New England Aquarium, as well as being actively involved in youth sports in Lexington, Massachusetts.

Presentations

Mr. McKenna is often a guest presenter on intellectual property strategies and protecting and leveraging intellectual property for many startup, early-stage and technology acceleration ecosystems