Regina Sam Penti

Partner

regina-penti

Contact

  • JD, cum laude, Harvard Law School, 2010; Dean’s Scholar Prizes in International Commercial Arbitration and Constitutional Law
  • MEng (Electrical Engineering and Computer Science), MIT, 2003
  • BS (Electrical Engineering and Computer Science), MIT, 2002; Eta Kappa Nu, Tau Beta Pi

Qualifications

  • New York
  • Massachusetts
  • England and Wales, Solicitor
  • U.S. Patent and Trademark Office
  • European Patent Office
  • Co-Chair, Internet and Technology Law Committee, Boston Bar Association (2019-2021)
  • European Practice Committee Voting Member (2018-2019), Intellectual Property Owners Association
  • Boston IP American Inn of Court

Regina Sam Penti

Partner

Regina counsels clients on their most complex intellectual property and technology matters. She advises companies in managing critical intellectual property and technology assets, and leads strategic transactions such as mergers, acquisitions, and licensing of technology and data. She is also an experienced legal strategist who helps clients grow, defend, commercialize, and design around significant IP assets. With a dual-qualification as a U.S. lawyer and Solicitor of England & Wales, Regina is experienced in contested proceedings and IP risk management in both Europe and the U.S., and represents clients in European patent oppositions and U.S. inter partes reviews (IPRs).

An MIT-trained engineer and computer scientist, Regina has deep experience across a range of industries, including financial technology (fintech), digital health, artificial intelligence (AI), cloud computing, blockchain, nanotechnology, sensing technology, and semiconductors.

Regina is a frequent commentator on global intellectual property and technology law issues. She is a guest lecturer on patent law at the MIT Sloan School of Business, Co-Chair of the Internet and Technology Law Committee of the Boston Bar Association, and Editor of The EU's Unitary Patent and Unified Patent Court: A reference guide to the core legislation, regulations and rules of procedure.

Experience

Strategic Mergers, Acquisitions and Investments

  • Advised Milacron Holdings, a publicly-traded company which manufactures, distributes, and services engineered and customized systems for the plastics technology industry, in complex intellectual property matters relating to a definitive agreement to be acquired by Hillenbrand, Inc. for $2 billion.
  • Represented Flight Centre Group, a leading publicly-traded travel commerce company, in a strategic transaction with The Upside Travel Company, including advising on Flight Centre’s 25% stake in Upside and on a complex commercial agreement regarding cooperation on various development and distribution initiatives. The transaction made Flight Centre Upside’s largest shareholder and will facilitate a joint collaboration between Flight Centre and Upside to integrate Flight Centre’s knowledge of the travel industry with Upside’s technology platform. 
  • Represented TPG Capital and its portfolio company BVI (Beaver-Visitec International), a leading developer of specialized surgical devices and custom procedure packs for the ophthalmic marketplace in intellectual property maters relating to BVI’s strategic acquisition of 100% stake in PhysIOL Group SA (PhysIOL), a Belgium-based ophthalmic company specializing in the research, development, and manufacture of intraocular lenses (IOLs), from TA Associates. The transaction will allow BVI to expand its portfolio to further the company’s transformation into a fully-integrated, technology-enabled ophthalmic player. 
  • Represented IQE Group, a leading semiconductor company, in an asset purchase agreement with Taiwan-based Luxtaltek, including the purchase of 54 patents covering a range of novel technologies and applications based mainly on Quasi Photonic Crystals (QPC), and in various ongoing licensing and collaborative arrangements.
  • Advised TPG Capital and its portfolio company Fenwal, Inc., a global leader specializing in separation technologies for blood and cell collection and therapy, in the sale of Fenwal Holdings, Inc. to Fresenius Kabi.
  • Advised a Bain Capital-led investor group on intellectual property strategy relating to the acquisition of U.S. Renal Care, Inc., a leading provider of dialysis services for patients suffering from end stage renal disease.

Technology Collaborations, Licensing and Strategy

  • Represents a leading global investment banking firm in a number of high-profile, financial services technology transactions related to data distribution, index-licensing, data use, and licensing of technology directed towards trading platforms, including providing strategic guidance for licensing and patent strategy.
  • Advising a leading entertainment technology company in connection with evaluating, and negotiating a license for, standard-essential patents (SEPs) relating to video encoding and decoding.
  • Represented a leading global healthcare company in various strategic collaborations and commercial arrangements relating to its respiratory and patient monitoring line of products.  Drafted and negotiated several agreements, including complex cross-border technology licenses, joint development agreements, supply agreements, and distribution agreements.
  • Represented a major technology company in licensing negotiations relating to server and distributed storage technology. Regina also assessed infringement assertions and successfully identified patent vulnerabilities that provided leverage in the negotiations and substantial reduction in royalty rates paid by the client.
  • Advised several leading technology and life sciences companies in devising and executing domestic and cross-border defensive and offensive patent strategies. Advised on freedom-to-operate and IP development and management strategies for critical global patent portfolios consisting of hundreds of patents and relating to a wide array of technologies with assets spanning Europe, Asia and North America.

Fintech, Big Data/Alternative Data and Artificial Intelligence

  • Advising an asset management company on issues around the acquisition and management of artificial intelligence, data and other technology systems for application in developing investment alpha and beta, use in algorithmic and quantitative trading, and the technologies associates with executing their strategies.
  • Represent a New York-based value investment firm with technology and data acquisition and management issues in connection with their investment platform and financial technologies.
  • Assisted a US hedge fund with over $30B in assets under management in evaluating, negotiating, and drafting agreements for a complex collaboration with an engineering firm that uses machine learning and artificial intelligence to advance trading strategies.
  • Advising a large global data broker in alternative data strategies and agreements with downstream third party data providers, including providing guidance on vendor screening and qualification and negotiating agreements with data providers.
  • Advising one of the largest global hedge funds on privacy and other issues relating to the acquisition and management of mobile device data for use in developing investment strategies.

European Oppositions and IPRs

  • Represented a major global media and entertainment company in numerous contentious oppositions at the European Patent Office (EPO), defending a large portfolio of patents deemed foundational to certain electronic systems.
  • Represented Seekeeper, Inc. in inter partes reviews (IPR2017-01996, IPR2017-01931) for patents related to cooling apparatus for boats; all IPRs terminated following preliminary response.
  • Advised a global technology company in a European patent opposition and related appeal before the EPO Board of Appeals for patents related to mobile-to-mobile communication technology.

Publications

Presentations

  • Speaker, “Examining Technology Transactions Under the Lens of the America Invents Act,” 6th Annual MIP International Women’s Leadership Forum (June 6, 2019)
  • Speaker, “Alternative Data: How to Harness the Power and Manage the Risks of Third-Party Alternative Data,” Centerforce IP Strategy Summit (April 11, 2019)
  • Co-Chair, European IP Summit, Boston College Law School (October 4-5, 2018) 
  • Speaker, “Competition Law and IP,” European IP Summit, Boston College Law School (October 4-5, 2018)
  • Speaker, “Analyzing US IP Trends and the Impact on European IP Strategy,” Managing Intellectual Property European Patent Forum, Paris (September 11, 2018)
  • Speaker, “Practical Implications of Oil States, SAS Institute and Aqua Products on PTAB Practice,” European Committee of the Intellectual Property Owners (IPO) Association (August 16, 2018)
  • Speaker, “Identifying Opportunities for Partnering with FinTech Companies,” Summit on Protecting Innovations in the Financial Services Industry (July 26, 2018)
  • Speaker, “European Patent Practice Points for U.S. Attorneys: Lessons Learned from EPO Oppositions on Parallel Litigations,” Boston Patent Law Association’s Technical Inventions in European Patent Law Conference (June 7, 2018)
  • Speaker, “Beyond NDAs: Managing Confidential Information in M&A and Commercial Agreements,” 4th Annual IP Strategy Summit (May 15, 2018)
  • Speaker, “Blockchain and Cryptocurrency Forum,” Boston Bar Association (March 2018)
  • Speaker, “Semiconductor Industry Roundtable”, Ropes & Gray (March 2018)
  • Speaker, “The Business of Licensing 2.0: Cross-Border IP Licensing,” 40th Global IP Conference and Exhibition (February 2018)
  • Speaker, “European Patent Oppositions for US Lawyers,” Boston Bar Association (February 2018)
  • Speaker, “Interplay Between the U.S. and European Patent Systems,” MIP European Patent Forum, Paris (September 2017)
  • Speaker, “Patent Trial and Appeal Board (PTAB) and the Role of the Courts,” MIP International Women’s Leadership Forum (June 2017)

Disclaimer

Ropes & Gray International LLP is a limited liability partnership registered in Delaware, United States of America and is a recognised body regulated by the Solicitors Regulation Authority (with registered number 521000).
  • JD, cum laude, Harvard Law School, 2010; Dean’s Scholar Prizes in International Commercial Arbitration and Constitutional Law
  • MEng (Electrical Engineering and Computer Science), MIT, 2003
  • BS (Electrical Engineering and Computer Science), MIT, 2002; Eta Kappa Nu, Tau Beta Pi
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