Milad Shara

Founder and Managing Director
Registered Patent Attorney

University of New Hampshire School of Law
● Juris Doctor
● Master of Intellectual Property

Lawrence Technological University
● B.S. Electrical Engineering

Registration and Admissions
● U.S. Patent and Trademark Office
● State Bar of Michigan (Not CA)

Milad Shara is the founder and managing director of Wheatstone IP Law Corporation, a firm focused on the microelectronics industry and its various technology concentrations. The firm is adept at translating complex microelectronics technologies in the providing of IP legal services across the global technology supply chain for materials fabrication & processing, electronic device designs, and integrated system applications. The firm’s IP legal services include drafting and prosecuting patent applications, investigating patent assertions in licensing matters, providing project-based support in litigation management of IP disputes, and performing due diligence of IP and technology rights in business operations and M&A transactions.

He works closely with corporate legal departments to help add depth to their department resources in handling complex IP tasks involving microelectronic technologies such as transistor device structures, fabrication equipment, and packaging processes for digital logic, analog circuits, and optical sub-systems, as well as electronic devices that drive current and emerging integrated system applications.

Milad started his career as first in-house counsel for a group of small aﬃliated high-tech companies in the automotive hub of Dearborn, Michigan. He collaborated with their management and employees to initiate and institute the technology rights infrastructure that would allow for the prioritization of each company’s growing legal services workload — in a fast-paced, cost-sensitive research, development, and manufacturing environment. He worked closely with client stakeholders to provide high-volume, hands-on intellectual property and technology law services worldwide for each aﬃliated company.

During his 18+ years at Western Digital Corporation from 1997 to 2015, Milad led the data storage company’s global IP strategy, services, and operations through a period of major corporate acquisitions and remarkable transformation from a manufacturer to a technology leader – during which annual company revenue grew from $2 billion to $16 billion and annual research & development grew from $150 million to $1.6 billion. He worked closely with the General Counsel to structure the vision, services, budget, staﬀ, metrics, and operations for the Legal Department during this 18-year corporate transformation. Milad counseled management and provided hands-on IP legal services while directing all aspects of intellectual property and technology law matters for Western Digital, a public multinational disk drive company.

Milad created Wheatstone IP Law Corporation to provide IP legal services supporting diverse microelectronics technology clients in the creation, protection, investigation, and defense of their intellectual property worldwide. Also, he is developing an intellectual property risk analytics software platform to support corporate legal teams.

Representative Matters

Patent Portfolio Management and Protection. Created corporate infrastructure for developing and managing 4,000 high tech patent applications aligned with corporate patent strategies and business metrics, including:

Drafted patent applications, responded to non-final and final oﬃce actions, and filed petitions and appeal briefs.
Performed prior art searches and invention summaries showing patentable scope.
Researched and generated industry patent landscape analytics for developing oﬀensive & defensive patent strategies.
Retained and managed foreign patent agents for counterpart foreign filings.
Held IP protection training for inventors in US and Asia: trade secret protection awareness and invention disclosure drafting workshops.
Conducted invention mining sessions with scientists and engineers in US and Asia to capture key product and manufacturing inventions.
Developed invention disclosure evaluation metrics aligned with global patent filing strategy.
Established invention review boards to evaluate and prioritize invention disclosures.

Formed and chaired IP protection steering committee to align IP legal services (including patent filings) with business strategy and operations worldwide.

Trademark Portfolio Management and Protection. Developed corporate infrastructure for 900 registered trademarks and pending trademark applications aligned with business strategy for company products, marketing, and sales worldwide. Performed trademark searches and clearance opinions. Filed and prosecuted trademark applications. Developed trademark usage guidelines for company and licensed users to strengthen branding and trademark rights.

Negotiated trademark license and acquisition agreements. Formed global trademark enforcement program that included monitoring and enforcing trademark rights against unauthorized use of marks to avoid brand dilution. Established China anti-counterfeiting team and relationships with local agents to conduct raids against fake products.

Patent Licensing Assertions. Investigated incoming and outbound pre-litigation patent licensing assertions involving non-practicing entities and practicing entities. Created claim charts with business impact scenarios to develop strategies and readiness for license agreement negotiations. Coordinated patent indemnification claims related to components purchased from suppliers and products sold to customers. Negotiated and drafted numerous intellectual property license agreements, including patent and trade secret license agreements with multinational companies in US, Asia, and Europe.

Created infringement monitoring program to prioritize patents based on claim charts and potential exposure of unlicensed products made by others companies. Created and maintained patent marking program to support royalty calculations in patent license negotiations. Collaborated with litigation firms on patent assertion strategies to support potential licensing negotiations and litigation.

Patent and Open Source Litigation. Worked closely with litigation firms to manage complex patent and open source litigation cases in district courts, international trade commission, and 365(n) bankruptcy court proceeding. Managed early case assessment of claim charts, defenses, counterclaims, potential exposure, and resolution scenarios. Collaborated with outside counsel on pre-trial and trial budgets and timelines, interrogatories, document production, depositions, expert support, motion drafting, Markman hearings, mediation and settlement negotiations, mock trials, and trial preparation.

In-house litigation management included:

In re: Read-Rite (365(n) Bankruptcy Court)
(rejecting pre-existing licenses to patents acquired by WDC)
WDC v. Cornice (Central District of California)
Reiber v. WDC (International Trade Commission)
Convolve v. WDC (Eastern District of Texas)
StorMedia v. WDC (Eastern District of Texas)
Rembrandt v. WDC (Western District of Wisconsin)

Papst v. WDC (Central District of California)
Cambrian v. WDC (Central District of California)
Acticon v. Orange Micron (Northern District of California)
Dynacore v. WDC et al. (Southern District of New York)
Guzik v. WDC (Central District of California)
Collins v. WDC (Southern District of New York)
Nazomi v. WDC (Eastern District of Texas)

Merger & Acquisition Transactions. Performed IP due diligence for M&A transactions to determine and characterize business impact of legal rights and risk exposure in prospective acquisitions or transfer of intellectual property assets such as trade secrets, patents, trademarks, and copyrights. Evaluated technology rights and transaction agreements to support M&A valuation and risk assessment projects. Negotiated and drafted intellectual property provisions in letters of intent, stock purchase agreements, asset purchase agreements, transition services agreements, secondment agreements, and technology licensing agreements.

Technology Transactions in Business Operations. Worked with stakeholders to negotiate and draft commercial and technology transaction agreements to support strategic technology rights infrastructure and protect supply chain sourcing freedom, design exclusivity, and brand differentiation.

non-disclosure agreements
letters of understanding
joint development agreements
purchase orders
volume purchase agreements
capital purchase agreements

employee confidentiality and invention agreements
consulting agreements
university research agreements
standards setting organization agreements
patent pool licensing agreements
software license agreements

Milad started his career as first in-house counsel for a group of small affiliated high-tech companies in the automotive hub of Dearborn, Michigan. He collaborated with their management and employees to initiate and institute the technology rights infrastructure that would allow for the prioritization of each company’s growing legal services workload — in a fast-paced, cost-sensitive research, development, and manufacturing environment. He worked closely with client stakeholders to provide high-volume, hands-on intellectual property and technology law services worldwide for each affiliated company.

During his 18+ years at Western Digital Corporation from 1997 to 2015, Milad led the data storage company’s global IP strategy, services, and operations through a period of major corporate acquisitions and remarkable transformation from a manufacturer to a technology leader – during which annual company revenue grew from $2 billion to $16 billion and annual research & development grew from $150 million to $1.6 billion. He worked closely with the General Counsel to structure the vision, services, budget, staff, metrics, and operations for the Legal Department during this 18-year corporate transformation. Milad counseled management and provided hands-on IP legal services while directing all aspects of intellectual property and technology law matters for Western Digital, a public multinational disk drive company.

During his 18+ years at Western Digital Corporation from 1997 to 2015, Milad led the global IP strategy, services, and operations through a period of major corporate acquisitions and remarkable transformation from a manufacturer to a technology leader – during which annual company revenue grew from $2 billion to $16 billion and annual research & development grew from $150 million to $1.6 billion. He worked closely with the General Counsel to structure the vision, services, budget, staﬀ, metrics, and operations for the Legal Department during this 18-year corporate transformation. Earlier in his career, Milad served as first In-house counsel at a small materials fabrication & equipment supplier in the automotive hub of Dearborn, Michigan from 1993 to 1997. He worked closely with principal shareholders and oﬃcers to protect and commercialize the company’s proprietary diamond coating processes, high speed dry machining equipment, and integrated drilling & threading tools. While in law school, Milad prepared patent applications related to virtual reality and semiconductor technologies. Prior to law school, Milad worked as an electrical engineering co-op at the Disk Drive Division of Northern Telecom.

For corporate technology rights management, Milad provides consulting services and is developing the TRIO™ enterprise risk management (ERM) software. The TRIO ERM software is a technology-stakeholder relationship management (TsRM) platform using systematic methodology for adapting technology rights infrastructure to interactive operational risk analytics. Click here to learn more about the TRIO ERM consulting services and software.

*Milad is registered to practice before the United States Patent & Trademark Oﬃce, and is licensed in the State of Michigan (not in California).

Milad Shara

Representative Matters

Offices