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Intellectual Property Law Institute 2017


Speaker(s): Benjamin Hershkowitz, Brian W. Brokate, Carolyn H. Blankenship, Charan J. Sandhu, David Bender, Douglas (Chip) A. Rettew, Edwin Wheeler, Gail H. Zarick, Joel Wolfson, Jonathan E. Moskin, Joseph P. Lavelle, Lateef Mtima, Leslie Fischer, Ph.D., Lindsey J. Canning, Mark S. Holmes, Robert Greene Sterne, Robert P. Taylor, Siegrun D. Kane, Steven C. Bennett, Victoria A. Cundiff, William A. Tanenbaum, William Sloan Coats
Recorded on: Oct. 2, 2017
PLI Program #: 180840

David Bender is an Adjunct Professor at the University of Houston Law Center, and also at Pace University Law School, where he teaches Privacy Law.  Mr. Bender is a Distinguished Fellow of the Ponemon Institute.  He has had extensive Privacy, Intellectual Property, and Information Technology litigation, counseling, and transactional experience.  He was a founder of the IP practice, and co-founder of the Privacy practice, at White & Case.  Before retiring from White & Case, he headed the firm’s privacy practice.


Mr. Bender served in-house at AT&T for ten years, during the latter half of which he was responsible for all IP litigation brought by or against any Bell System company.  Before that, he spent five years engaged in antitrust litigation.  And before turning to the law, he served as an engineer with the Ford Motor Company’s aerospace division, and as a mathematician with Hughes Aircraft.


Bar Admissions: New York; US Patent and Trademark Office

PublicationsBender on Privacy and Data Protection (Rel.12 2018 LexisNexis); Computer Law published in 1978 and presently in Release #73 (LexisNexis, 6 loose-leaf volumes); and over 100 articles in law reviews and conference proceedings.

Memberships:

  • International Association of Privacy Professionals

  • International Technology Law Association (President, 1999-2000)

  • Association of the Bar of the City of New York

Super Lawyers:

  • New York City Metro Super Lawyer in Information Technology (2006 -- 2011).
  • One of the 25 best lawyers in the Westchester Co., NY Area (2009 - 2011)

Speaking:

Over 300 presentations across the United States and in 19 other nations at conferences sponsored by numerous organizations.


Bob Taylor is the founder and owner of RPT Legal Strategies PC in San Francisco and Palo Alto, providing legal and business advice to companies and investors with respect to all aspects of intellectual property and related fields of endeavor.  He also serves as a Venture Advisor to New Enterprise Associates and as a patent law expert for the National Venture Capital Association.

For more than 30 years, Bob focused primarily on intellectual property litigation, serving as lead trial counsel and/or appellate counsel in dozens of patent, copyright, trade secret and antitrust cases involving a wide range of technologies and industries.  He is a Fellow of the American College of Trial Lawyers,  a former chair of the Antitrust Section of American Bar Association, and a Lifetime Member of the American Law Institute.

Bob has written and lectured extensively on the business and legal problems associated with both intellectual property protection and the laws related to competition.  He served for several years as the co-chair of the Antitrust Committee of Intellectual Property Owners Association and also as a Member of IPO’s Amicus Committee.  Bob also served as a member of the 1992 Commission on Patent Law Reform.

Bob holds a J.D degree from Georgetown University Law Center and was a member of the editorial board of the Georgetown Law Journal.  He holds a B.S.E.E degree from the University of Arizona and was elected to Tau Beta Pi. 


Brian Brokate is the head of Gibney, Anthony & Flaherty’s Intellectual Property Practice Group. He has extensive experience assisting brandowners in enforcement procedures to combat trademark and copyright infringement. Mr. Brokate focuses on anti-counterfeiting and anti-piracy and handles all stages of civil anti-counterfeiting and infringement litigation.

Mr. Brokate is an Advisory Board Member of the International Anti-Counterfeiting Coalition, Inc. (IACC). He is the Treasurer of the New York Task Force, a coalition of brand owners affected by counterfeiting. He also serves on the Tariff & Embargo Committee of the International Trademark Association (INTA). 

Recognized as an industry leader, Mr. Brokate is frequently quoted on trends in intellectual property law. He has also authored and co-authored numerous articles and publications and speaks before industry and trade associations on intellectual property law issues including infringement, anticounterfeiting, enforcement strategies and trade dress.


Dr. Leslie Fischer, Ph.D., J.D. is a Principal Patent Attorney at Novartis Pharmaceuticals Corp. in East Hanover, NJ.  She focuses on global patent prosecution, freedom to operate, regulatory exclusivity, licensing, contractual negotiations, and due diligences.  Her technology area of expertise is biopharmaceutical products, particularly for the treatment of autoimmune diseases.  Dr. Fischer is also Novartis Pharmaceutical’s designated liaison to the United States Patent Office (USPTO), a role created to enhance the relationship, facilitate dialogue, and share information between these entities.  She also teaches mechanical patent claim drafting as an adjunct professor of law at Seton Hall Law School, in Newark, NJ. 

Prior to joining Novartis in 2007, Dr. Fischer was an associate attorney at Fitzpatrick, Cella, Harper and Scinto in New York, during which time she provided detailed opinion work for a broad range of clients, consulted on biotechnology litigation, and performed pharmaceutical and biotechnology patent prosecution.

Dr. Fischer holds a J.D. from Rutgers University, and a Ph.D. in Biochemistry from Thomas Jefferson University in Philadelphia. Her Ph.D. thesis focused on the interaction of Bone Morphogenetic Proteins and Wnts during mouse limb development, with her work appearing in Osteoarthritis and Cartilage, the Journal of Cellular Biochemistry, and the Journal of Biological Chemistry.

Dr. Fischer has appeared as a speaker and panelist in numerous public forums.  Most recently, she presented on patent subject matter eligibility at the 14th Annual Advanced Patent Law Institute, which was sponsored by the University of Texas School of Law and the USPTO, March 21-22, 2019, Alexandria, VA.  For the past five years, she has also acted as a panelist and co-chair of American Conference Institute’s “Advanced Summit on Life Sciences Patents" meeting, which is held yearly in New York, NY.


Joseph Lavelle is an experienced patent lawyer, focusing primarily on the preparation and trial of patent infringement cases.

Joseph also has handled a number of successful appeals to the Court of Appeals for the Federal Circuit.

Joseph has more than 25 years of experience litigating patent cases, including many bench and jury trials. He has litigated in most areas of technology, including semiconductors, computers, computer software, telephony, Digital Signal Processing, telematics, waveform encoding, automotive technology, financial services, biotechnology and many others.

In addition to federal district court proceedings, Joseph has tried a number of Section 337 proceedings before the US International Trade Commission (ITC), as well as handled cases before the US Court of Federal Claims and appeals to the Court of Appeals for the Federal Circuit. He also is licensed to practice before the USPTO and has successfully handled interference proceedings

Joseph has vast experience handling litigation and counseling matters at the intersection of competition laws and antitrust laws. He has participated in many of the leading matters in the area of standard setting. Also, he has represented clients in patent-antitrust matters before the FTC and the Antitrust Division of the Department of Justice.


Lateef Mtima is a Professor of Law at the Howard University School of Law. After graduating with honors from Amherst College, Professor Mtima received his J.D. degree from Harvard Law School, where he was the co-founder and later editor-in-chief of the Harvard BlackLetter Journal. He is admitted to the New York and Pennsylvania bars and has practiced intellectual property, bankruptcy, and commercial law, including a decade in private practice with the international law firm of Coudert Brothers. Currently a member of the Advisory Council for the United States Court of Federal Claims and the BNA Patent, Trademark & Copyright Journal Advisory Board, Professor Mtima has held the post of Distinguished Libra Visiting Scholar in Residence at the University of Maine School of Law, is a past President of the Giles S. Rich Inn of Court for the United States Court of Appeals for the Federal Circuit, and was a member of the founding Editorial Board for the American Bar Association intellectual property periodical Landslide. Professor Mtima is the Founder and Director of the Institute for Intellectual Property and Social Justice, an accredited Non-governmental Organization Member of the World Intellectual Property Organization (WIPO).


Siegrun D. Kane is a partner in Kane Advisors, LLP. She received her J.D. from Harvard Law School and specializes in litigating trademarks in the federal courts and the USPTO.

Siegrun is the author of Kane on Trademark Law published by PLI now in its 6th Edition’ and updated bi-annually.

Siegrun also acts as a consulting and testifying expert. She has been repeatedly listed in The Best Lawyers in America, New York Super Lawyers and other “Who’s Who” publications.  The Wall Street Journal has reported her views on trademark issues.

Siegrun lectures frequently for PLI, and other CLE organizations. 


Steven C. Bennett is a partner at Scarola Zubatov Schaffzin PLLC in New York City, where he practices commercial litigation and arbitration.  Steve is former Co-Chair of the New York State Bar Association E-Discovery Committee.  He co-founded the Sedona Conference Working Group on International Discovery.  He has taught E-Discovery Law at: Hofstra Law School, New York Law School and Rutgers Law School.  Steve is on the Commercial Arbitration and Mediation panels of the American Arbitration Association.  B.A., Macalester College; J.D., New York University School of Law.


Victoria Cundiff is a partner at Paul Hastings resident in New York, where she is a leader of the Firm’s nationally ranked global trade secrets litigation practice.  She works with clients in industries including technology, software, media, financial services, insurance, pharmaceuticals, chemicals and sales and distribution organizations. She has tried trade secrets and related commercial and intellectual property disputes throughout the United States and before a variety of arbitration and mediation tribunals.  As important is her work to help organizations avoid litigation.  She has designed confidential verification protocols for resolving intellectual property use and ownership disputes in and outside court. 

Ms. Cundiff is a Visiting Lecturer in Law at Yale Law School, where she teaches intellectual property law and at the University of Pennsylvania Law School, where she teaches trade secrets law.  She is listed in The Best Lawyers in America; Chambers; Legal 500 (which has named her a “Leading Lawyer” nationally in Trade Secrets Litigation); and New York Super Lawyers, among other directories. She is the Vice Chair of the IPO’s Committee on Trade Secrets.


Lindsey has extensive experience advising clients on intellectual property and technology matters in the context of M&A transactions, IPOs and joint ventures. She also frequently advises clients, on both the customer and supply side, on a wide range of commercial agreements, both in relation to business separations and on a standalone basis. These include IP licenses, supply and distribution agreements, outsourcing contracts and agreements relating to transformational IT projects.

Many of the transactions on which Lindsey advises are cross-border in nature. She is qualified in both the UK and NY, having spent five years working in NYC with her previous firm.


With over a billion dollars in patent deals under his belt, Mark Holmes is the founder and CEO of PatentBridge LLC, a privately held technology development firm in Silicon Valley that specializes in bringing to market select patented technologies covering extraordinary software and Internet-related breakthroughs. 

Mr. Holmes is the CEO and Co-Founder of RavenWhite Cybersecurity, Inc. which was selected as one of the top 10 security startups worldwide at the RSA Conference. He is also the Executive of Business Development for the DeCaf Co. which is creating the world’s first consumer instant decaffeination product.

Mr. Holmes has advised such technology savvy entities as Visa, Sony, Applied Materials, University of California at Berkeley as well as many startups and has been named every year to the IAM Strategy 300 – The World’s Leading IP Strategists.  He served as co-chair of the Silicon Valley Chapter of the Licensing Executives Society (LES) from 2006 to 2011.

He was the co-founder of a successful telecommunications startup which was sold in the late 1990s to a portfolio company of the Alabama state retirement fund (Retirement Systems of Alabama).

He lectures nationally on the pressing issues facing tech startups. In the past few years, he has spoken nationally over 50 times for such bodies as Renaissance Weekend, International Society for Optical Engineering (SPIE), PLI and other organizations.

He holds an engineering degree from Brown, is a member of the Institute of Electrical and Electronics Engineers (IEEE), IEEE Software Society and wrote the book PATENT LICENSING AND SELLING: STRATEGY, NEGOTIATION & FORMS.


Robert Greene Sterne is a founding director of Sterne, Kessler, Goldstein & Fox P.L.L.C., a premier intellectual property law firm based in Washington, D.C.  Mr. Sterne has extensive expertise in AIA post issuance proceedings and concurrent patent litigation, USITC 337 investigations, Federal Circuit appeals, EU enforcement, reexamination, patent monetization and licensing, and corporate intellectual property best practices (CIPO and Board of Directors).  He is a registered U.S. patent attorney, has spoken and written extensively on these topics, was named in 2015 by the Financial Times as one of the "Top Ten Legal Innovators in North America," was named in 2015 by Law360 as one of  “The Top 25 Icons of IP,” and was named in 2014 by The National Law Journal as an “Intellectual Property Trailblazer and Pioneer.” He is editor in chief of Patent Office Litigation (2012), and Patent Office Litigation 2nd Edition (2017)(Thomson Reuters).  In his practice, Mr. Sterne holds a BSEE and a MS and specializes in electronics, computers, software, communications, semiconductors, wireless, medical devices, nanotechnology, and business methods technologies. He is counsel in more than 196 PTAB contested proceedings at the USPTO and has played a key role in precedent-setting U.S. case law, including: In re Beauregard, (Fed. Cir. 1995), KSR (SCT. 2007), i4i (SCT. 2011), In re Jung (Fed. Cir. 2011), ETG (Fed Cir. 2012), and Hear Wear (Fed. Cir. 2014). Mr. Sterne is highly rated in peer-review rankings, including a consistent "Band 1" patent prosecution designation by Chambers & Partners. Among many honors, he is the recipient of the Sedona Conference Award for Excellence in Advanced Legal Education (2004), the Sedona Lifetime Achievement Award (2012),  and the 2012 Attorney of the Year “Good Scout” Award for his leadership in community service. He has been at the forefront of software patent protection, having represented IBM in the precedent setting In re Beauregard case that produced the 1996 USPTO software patent guidelines  and having delivered in 1985 the seminal AI and Expert System Legal Protection presentation before the AIPLA. Sterne Kessler is ranked in 2018 as the 5th largest US IP boutique and 337th largest US law firm.


William A. Tanenbaum is recognized as one of the Who’s Who Legal “Thought Leaders Global Elite” and is ranked in top tiers by ChambersLegal500Best Lawyers and Who’s Who Legal in technology, outsourcing, IP and data law.  Bill is a shareholder in the 40-lawyer Technology Transactions & Data Privacy Practice at Polsinelli, an AmLaw 100 firm with 850 lawyers in 22 cities.  He is the Practice Co-Chair of the Health Care Technology & Innovation Group, which is the second largest of its kind in the country.  Polsinelli was named as the 2018 Health Care Firm of the Year by US News & World Report, and its Health Care Practice is the largest in the country.  

Bill’s practice includes the Industrial Internet of Things, Body Area Networks, AI, Machine Learning, Natural Language Processing and data analytics, including data generated by networks of sensors and created by machines, as well as technology and IP transactions, and he leads teams that serve as IP counsel and as health care counsel in technology and M&A transactions.  Health Care is an early adopter of IoT and data analytics, and clients call upon Bill to use leading practices from that industry in other industries.  

Bill is a past President of the International Technology Law Association and was previously named as the IT Lawyer of the Year in New York by US News & World Report.  Clients and legal researchers find that “he has expertise in technology transactions that puts him at the very top tier of the market [and] he is a font of knowledge on creating new IT structures,” (Who’s Who Legal) and “that he brings extremely high integrity, a deep intellect, fearlessness and a practical, real-world mindset to every problem,” “provides savvy, zealous representation,” and understands the market and uses his expertise to help [clients] successfully navigate negotiations” (Chambers).  Bill is a graduate of Brown University (Phi Beta Kappa), Cornell Law School and the Bob Bondurant School of High Performance Driving.

 


Carolyn Blankenship is SVP, Associate General Counsel, Intellectual Property for Thomson Reuters.  She joined Reuters in 2001 and before that held a variety of IP-related positions as both in-house and outside counsel, including stints at Skadden, Arps and Priceline.com.

Carolyn leads the Corporate Legal Innovation, Product and Privacy Practice Group, with a focus on protecting and leveraging innovations throughout the company.  In addition, Carolyn oversees all patent litigation and supports the IP aspects of the company’s M&A activity. 

As an undergraduate, Carolyn attended the Massachusetts Institute of Technology for two years and went on to earn a B.A. in Biology from Harvard College.  She has a J.D. from Arizona State University College of Law and clerked for the Hon. Noel Fidel of the  Arizona State Court of Appeals.


Charan Sandhu is a partner in Weil’s Technology & IP Transactions practice and is based in New York. Ms. Sandhu concentrates on the areas of complex technology transactions and intellectual property. She represents clients in matters relating to technology transfer, and the development, acquisition, use and commercial exploitation of technology and intellectual property. She has extensive experience in a wide variety of complex technology transactions, including technology development and licensing agreements, joint ventures, strategic alliances, professional services agreements, outsourcing arrangements, distribution agreements, and settlements of IP litigation.

Ms. Sandhu is consistently recognized by Chambers USA as a leading lawyer for Technology & Outsourcing, where clients have praised her for “consistently producing work of the highest order.” She is also recognized by Legal 500 US; IAM Licensing 250’s “World’s Leading Patent & Technology Licensing Lawyers;” and IAM Patent 1000. She was also named an “IP Star” for licensing in New York by Managing Intellectual Property’s IP Stars; recognized as a Financial & Transactional Life Science Star by LMG Life Sciences Guide; named among the 2015 “Top Women” for Intellectual Property in New York by Super Lawyers; and shortlisted in the “Best in Technology” category at the Americas Euromoney Women in Business Law Awards 2016.

Ms. Sandhu is a member of the Firm’s Diversity Committee. She is also actively involved with the Firm’s pro bono efforts and regularly represents Kids in Need of Defense. Ms. Sandhu was inducted into the YWCA’s Academy of Women Leaders for her outstanding professional achievement, civic commitment and leadership. She was also featured in Profiles in Diversity Journal’s 11th Annual WomenWorthWatching® issue.


Douglas (Chip) Rettew is a partner in the Washington, DC office of Finnegan Henderson. He has been recognized in World Trademark Review WTR 1000 as ”[o]ne of the best litigators in the country with an unbelievable success rate,” and “a go-to litigation lead for world-famous consumer brands.” He focuses his practice on trademark, false advertising, and unfair competition litigation and disputes.

Doug litigates cases involving a broad range of issues, including traditional trademarks, false advertising, product disparagement, rights of publicity, unfair competition, trade dress, design patents, and domain names. Doug is also involved in advertising issues and counseling, right-of-publicity matters, and trademark and copyright prosecution and licensing. Clients include Under Armour, Bridgestone, the NFL Players Association, Capital One, Subaru, the Association of Tennis Professionals (ATP), and PNC Bank. 

Doug has first-chair jury and bench trial and appellate experience and has argued appeals before the U.S. Courts of Appeals for the Federal, Fourth, and Eighth Circuits. He also litigates oppositions, cancellations, and ex parte appeals before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO). Doug has significant experience in obtaining (and defeating) temporary restraining orders (TROs) and preliminary injunctions, including those involving counterfeiting and ex parte seizures. He previously served as leader of the firm’s trademark and copyright practice and is currently serving on the firm’s compensation committee.

 


Edwin Wheeler is the founder and owner of Wheeler IP Law. Edwin provides representation and strategic advice to Silicon Valley clients concerning pending and prospective disputes in all areas of intellectual property, with a particular focus on patent and trade secret matters. Edwin evaluates patent demand letters and licensing proposals, and advises clients on appropriate responses and courses of action. He assists clients with management of complex IP litigation, including supervision of outside counsel strategy and performance, and negotiation of outside counsel terms of engagement. Edwin also consults with investment community members who are interested in understanding the potential financial implications of IP disputes for the involved companies.

Prior to opening Wheeler IP Law in 2015, Edwin’s practice encompassed all aspects of intellectual property and antitrust litigation and counseling for over three decades.  For four years he was Vice President, Patent Litigation at a Silicon Valley digital entertainment company, where he was responsible for offensive patent litigation in the U.S., Europe and Asia in support of a multimillion dollar patent licensing business. In this position, Edwin supervised patent litigation matters in the United States (various district courts and the ITC), the United Kingdom, Germany, Belgium, the Netherlands, France, and Italy.  Prior to his in-house position, Edwin was a partner at two major multinational law firms, in Washington DC and Silicon Valley, where he represented Anheuser-Busch, General Electric, Seagate Technology, the California Department of Health Services, and other clients in a variety of intellectual property and antitrust disputes.  Edwin is a graduate of Vanderbilt University and the University of Chicago Law School.


Gail Zarick serves as IP Counsel for the Security Division of IBM, providing advice and counsel on all IP issues pertaining to an array of IBM Security software and hardware product and service offerings. In other assignments at IBM, she has managed a team of IP attorneys responsible for multiple IBM brands as well as an IP law department responsible for supporting IBM’s Research laboratories and CHQ organizations. She has trained and managed teams of attorneys to conduct legal due diligence for patent sales and large divestitures. She has also negotiated patent assignments and licenses in IBM’s Corporate licensing group and has managed patent litigations in IBM’s Corporate Litigation department. Before joining IBM, Gail practiced intellectual property law at Pennie & Edmonds LLP in New York. 

Admitted to the bar in the State of New York
Registered to practice before the U.S. Patent & Trademark Office

JD, Pace University School of Law
MSE, University of Pennsylvania 
BSE, Princeton University

 


Jonathan E. Moskin is a partner and intellectual property lawyer with Foley & Lardner LLP. He has acted as lead trial counsel and otherwise litigated trademark, copyright and patent cases, as well as contract disputes, privacy matters, false advertising and right of publicity cases in numerous federal, trial and appellate courts. He is a member of the IP Litigation, Security & Information Management Practice groups.

Prior to joining Foley, Mr. Moskin was a partner at White & Case LLP and Pennie & Edmonds, LLP, where he was chair of the Trademark/Copyright Group. He has successfully represented major companies in intellectual property matters, including Acco Products; Aristocrat Technologies; Bacardi & Co.; Booking.com, Cablevision; Calvin Klein; Cannondale Bicycle Corp.; Citigroup; Caesars Entertainment; Diageo; Deutsche Bank Trust Co.; Emjoi, Inc.; Field & Stream Holdings, LLC; Games Workshop; Hasbro; Herman Miller, Inc.; Ingersoll-Rand; Jim Beam Brands; JP Morgan & Chase Co.; Kayak Software Corp.; Novartis; Phillips Van Heusen; Priceline; QVC; Rambus, Inc.; Stiefel Laboratories; Swiss Army Brands, and Valentino.


William Sloan Coats is a veteran intellectual property lawyer in Silicon Valley‎.  He has many accolades and triumphs and is AV rated by both lawyers and judges. He was the former Chair of the Science and Technology Section of the ABA and has represented the United States in various international IP treaty negotiations.    


Mr. Wolfson is a Director and Associate General Counsel in the Office of General Counsel for the Bank of America Merrill Lynch business in New York City.  He concentrates on bank/broker-dealer contracts, computer contracts, intellectual property, commercial, and corporate matters.  

He had been a partner in Blank Rome’s Washington, D.C. office, with a concentration in transactions, intellectual property, corporate law, and public policy for the: financial industry, information provider, biotechnology, software, and computer fields.  

Prior to that, Mr. Wolfson was Vice President and Associate General Counsel and head of The Nasdaq Stock Market’s e-Commerce and Intellectual Property Practice Group.  

His publications include (1) a multi-volume treatise on high-technology contract law; and law review articles on: (2) First Amendment protections against liability for incorrect information; (3) express warranties and published information; (4) the ability of licensing law and copyright law to peacefully co-exist; and (5) class action suits in bankruptcy court.