Christopher J. McKenna

Partner

Overview

By helping cutting-edge companies leverage their intellectual property (IP) assets into competitive advantages, Christopher McKenna combines his background in the technology industry with legal acumen to provide pragmatic and actionable advice.

As the Office Managing Partner in Boston, Co-Chair of the Electronics practice, and Chair for Cloud Computing Infrastructure and Solutions within our Innovative Technology sector, Chris helps lead Foley & Lardner LLP’s efforts to assist clients with implementing their strategic plans.

Strategic IP Management

Chris focuses his practice on acting as an advisor to technology companies, helping identify, capture, and protect their most important IP. This bedrock forms the foundation that supports and drives products, competitive differentiators, and business value, and Chris formulates strategies to provide a framework for decisions regarding the development and maintenance of each asset. With a strategy first approach, he works to assure their continuous alignment with company’s business goals and commercialization efforts.

To assist with these goals, Chris leads large teams of attorneys, paralegals, and assistants on developing, executing, and managing patent portfolios in line with budget, quality, and scale. His teams handle all aspects including establishing core patents positions for startups, dynamic patent portfolio development for emerging companies, and worldwide patent portfolio management for established corporations. He also provides strategic counseling on the development and integration of patent portfolios obtained via merger and acquisition.

Chris also provides guidance on establishing business processes for companies to make IP part of a company’s culture. He encourages the use of strategic, systematic, collaborative, and lightweight processes for companies to apply well-informed business decision making to IP development and protection programs.

Commercialization

Outside of portfolio management, Chris also counsels companies on the legal, technical, and business issues of IP in various transactions and agreements, including vendor and contractor agreements, supplier, partner, reseller, and distribution agreements, terms of use, license agreements, master services and solution agreements, and joint development and collaboration agreements. His advice is targeted to maximize the clients IP footprint and to reduce the risk of leakage that can result from performance under such agreements. Chris also provides strategic counseling on data, viewing it through the IP lens through formulation of data governance models for the monetization and licensing of data. 

Transaction Advisory and Litigation Support

Finally, Chris also counsels on IP aspects during transactions such as merger and acquisition deals, investments via venture capital or private equity, and assignment and purchase agreements. He helps perform due diligence on target assets as well as representing 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 the technology industry, 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 joining Foley & Lardner, Chris held technical and executive roles at a number technology companies focusing on software and systems integration. Highlights include serving as the chief operations officer of a manufacturing software systems solution integrator for semiconductor, electronics, and medical device manufacturers and working as the director of professional services for an enterprise software company focused on 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