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
  • LMG Life Sciences Licensing & Collaboration Firm of the Year (2020)
  • Massachusetts Lawyers Weekly  “Top Women of Law” (2020)
  • Legal 500 (2020)

Regina Sam Penti

Partner

Regina is a partner in the intellectual property transactions and data practice groups, with offices in Boston and London.  She leads strategic transactions such as mergers, acquisitions, asset purchases, joint ventures, and licensing of technology and data.  She is also an experienced legal strategist who helps clients grow, defend, commercialize, and manage critical IP and technology assets.  An MIT-trained engineer and computer scientist, Regina has deep experience and clients across a range of industries, including financial technology (fintech), healthcare, artificial intelligence (AI), and semiconductor, among others.

With a dual-qualification as a U.S. lawyer and Solicitor of England & Wales, Regina is a frequently invited to comment on global intellectual property and technology law issues.  She is a guest lecturer on patent law at the MIT Sloan School of Business.  She is co-chair of the Internet and Technology Law Committee of the Boston Bar Association and the International IP Summit, an annual symposium for leading legal and business executives.  

Regina also co-chairs the firm’s global Diversity Committee and maintains a pro bono practice focused on gender and immigration matters.

Experience

Mergers, Acquisitions and Investments

  • Advised GI Partners in complex and strategic intellectual property matters in connection with its acquisition of Clinical Ink, a global clinical trial technology company and provider of eSource solutions.
  • 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.
  • Represents Qorvo, a leading provider of RF solutions, in several ongoing matters, including in its acquisition of Decawave, a pioneer in ultra-wideband (UWB) technology and provider of UWB solutions for mobile, automotive and IoT applications, and of Custom MMIC, a supplier of gallium arsenide (GaAs) and gallium nitride (GaN) monolithic microwave integrated circuits (MMICs), for $500M combined.
  • Advised GHO Capital Partners LLP, a European specialist investor in healthcare, in its acquisition of X-Chem, Inc. (X-Chem), an industry-leading provider of DNA-Encoded Library (DEL)-based discovery services.
  • Represented Change Healthcare, a leading independent healthcare technology company, in the sale of its Connected Analytics business to Kaufman Hall, a provider of enterprise performance management software, data, and management consulting services.
  • 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.
  • 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).
  • 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 aspects of the acquisition of U.S. Renal Care, Inc., a leading provider of dialysis services for patients suffering from end stage renal disease that serves approximately 25,000 patients in 335 dialysis facilities across 32 states.

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 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, “U.S. IPO Public Offering & Intellectual Property Due Diligence Common Issues,” 2020 Korea IP Summer Forum (August 27, 2020)  
  • Speaker, “Optimization of Intellectual Property Rights and Intangible Assets: Corporate and Transactional Tools for Value Generation with Data,” New England Corporate Counsel Association (May 6, 2020)
  • Speaker, “How to Harness the Power and Manage the Risks of Alternative Data,” Centerforce IP Strategy Summit (November 20, 2019)
  • Speaker, “Integrating Emerging Technologies,” Future of Privacy Law Seminar (November 13, 2019)
  • Moderator, “Doing Business in China,” Roundtable Series, International IP Summit, Boston College Law School (October 17-18, 2019) 
  • 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)
  • 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, “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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