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IP Issues in Business Transactions 2020 SF


Speaker(s): Christian H. Nadan, Cyndi Wheeler, Debra A. Dandeneau, Eric A. Prager, Fangfang Fan, Greg Warder, Jason D. Kipnis, Jeffrey D. Osterman, Jeffrey L. Van Hoosear, John Tsai, Karen N. Ballack, Lothar Determann, Marjorie M. Goux, Martin J. Collins, Mary A. Fuller, Nivedita Soni, Ray Strimaitis, Regina Penti, Suzanne Y. Bell, Tessa J. Schwartz, Theodore D. Herzog, Thomas F. Villeneuve
Recorded on: Feb. 6, 2020
PLI Program #: 276722

Chris Nadan is SVP & General Counsel of Actian Corporation, a leader in Data Management, Integration and Big Data Analytics software offered both in the cloud and on-premise. He heads the legal department and is responsible for all legal affairs for Actian (formerly Ingres Corp.). He recently steered the company through a $330M acquisition by a joint venture comprised of a PE firm and a large strategic buyer.

Mr. Nadan was formerly Senior Director and Deputy General Counsel for Sun Microsystems, Inc., heading the legal group responsible for supporting Sun software.

In addition, Mr. Nadan was an adjunct professor of law at the U.C. Berkeley Boalt Hall School of Law for 17 years teaching a course on intellectual property transactions.

Mr. Nadan is also a co-author of the Common Development & Distribution License (CDDL), an open source license certified by the Open Source Initiative.

Before joining Sun, Mr. Nadan was an attorney at Farella, Braun & Martel in San Francisco. Mr. Nadan received his undergraduate degree from Stanford University and his J.D. from U.C. Berkeley Boalt Hall School of Law.


Cyndi Wheeler is the Director of IP for Slack Technologies, Inc., where she is responsible for all aspects of intellectual property, including patents, trademarks, open source, and IP litigation.  She is also on the Board of Directors of ChIPs, a nonprofit organization that advances and connects women in technology, law and policy.

Cyndi began her career as an electrical engineer at Intel after graduating from the Colorado School of Mines. While at Intel, she attended Santa Clara University School of Law and graduated cum laude in 2005.  Cyndi continued her career as a patent attorney at Intel and then at Apple, where over the span of more than a decade she held various roles managing patent prosecution, NPE and competitor patent litigation, and Apple’s PTAB practice. 


Debra A. Dandeneau is co-chair of Baker McKenzie's Global Restructuring and Insolvency Group and chair of its North America Restructuring and Insolvency Group. Her practice focuses on business reorganizations and debtor and creditors’ rights.

Ms. Dandeneau has been ranked by The Best Lawyers in America 2011-2018 in the practice areas of Bankruptcy and Creditor-Debtor Rights/Insolvency and Reorganization Law, and Litigation-Bankruptcy. She has also been recognized by Legal 500 US for Municipal Bankruptcy and Super Lawyers 2006-2017 for Bankruptcy. Super Lawyers has also named Debra among the 2017 Top Women for Bankruptcy Business in New York.

Ms. Dandeneau has dealt with a variety of entities experiencing financial distress, as well as a range of industries. Over the course of her career, her work has included representations in the real estate, manufacturing, power generation, healthcare, municipal, retail, and service sectors.

Ms. Dandeneau's professional honors include:

  • "Top Women" for Bankruptcy: Business in New York, Super Lawyers, 2017
  • "Super Lawyer" in Bankruptcy, Super Lawyers, 2006-2017
  • Pro Bono Publico Award, The Legal Aid Society, 2008
  • Recommended Lawyer in Municipal Bankruptcy in the US, Legal 500 US, 2015
  • "Best Lawyer" in Bankruptcy and Creditor-Debtor Rights/Insolvency and Reorganization Law and Litigation, Best Lawyers in America, 2011-2018


Eric A. Prager, a partner in the firm’s intellectual property practice group, assists clients with all types of intellectual property issues. His practice involves contentious and non-contentious work, including strategic counseling, due diligence of IP assets, sophisticated licensing and agreement work, and litigation. He has litigated copyright, false advertising, patent, trademark and trade secret cases in courts around the country.

 With significant experience in the area of digital content distribution and protection, Eric represents one of the Big Three record companies and a major online subscription music service in their digital content matters. 

 Eric assisted in drafting several “digital agenda” copyright treaties for the World Intellectual Property Organization, including the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.  He has also served on the U.S. Patent and Trademark Office Public Advisory Committee for Trademark Affairs.

 Eric serves as an adjunct professor at Fordham Law School in New York co-chairs the New York version of this PLI program.


Fangfang Fan is a candidate of Master of Laws (LL.M.) at University of California, Berkeley, School of Law, specializing in Tech Law, graduating in May 2020.

Fangfang worked as Senior Attorney of International Legal and Regulatory Affairs with FedEx Logistics APAC overseeing its international transportation, supply chain and customs brokerage business in Asia Pacific region from October 2017 to July 2019, as Legal Counsel with Johnson & Johnson Medical China providing strategic legal counsel for J&J’s Orthopaedics & Neuro division in China from March 2013 to October 2017. Before joining J&J, Fangfang practiced as Associate in law firms in Shanghai from July 2008 to March 2013 in areas of intellectual property protection, foreign direct investment in China, M&A, litigation, etc. 

Fangfang was admitted to Chinese Bar in February 2008. She graduated from Fudan University Law School with Juris Master Degree in 2008, and Shenyang Ligong Univeristy with Bachelor’s Degree in English in 2004.


Greg Warder is chief IP counsel at Maxim Integrated Products, an S&P 500 semiconductor company headquartered in Silicon Valley.  He joined Maxim in 2014, where he currently oversees the IP legal and corporate security groups. 

Greg has an extensive background as an in-house attorney working for public companies, as well as at law firms representing major corporate clients.  He is responsible for a broad range of legal issues including management of Maxim’s patent and trademark portfolios, litigation of IP-related claims and technology and software licensing.  He also leads global security efforts to protect Maxim critical business information.

Originally from South Dakota, Greg graduated with a degree in Mechanical Engineering from S.D. School of Mines and Technology and a J.D. of Law from the University of Wyoming. Greg previously served as a patent examiner with the U.S. Patent and Trademark Office, and he has worked as an engineer in the telecommunications and electronics industries.

Greg is a frequent speaker on the topics of intellectual property and cybersecurity. He also volunteers with Child Advocates of Silicon Valley, a non-profit organization supporting foster youth, where he has acted as a court appointed child advocate and a member of the board of directors.   


Jeffrey Osterman is a partner in Weil’s Technology & IP Transactions practice and concentrates on matters with deep commercial or technical complexity. He has had extensive experience with pure patent licensing, technology transfer, outsourcing, technology integration, content licensing and merchandising.

Mr. Osterman recently advised Sanofi in its worldwide exclusive licensing agreement with MannKind Corporation to develop and commercialize Afrezza (insulin human) Inhalation Powder; Verizon in connection with the acquisition of cloud TV technology from Intel; Lenovo in connection with the acquisition of Motorola Mobility from Google; and Mubadala and Sony/ATV in connection with the proposed $2.2 billion acquisition of EMI Music Publishing. Mr. Osterman also regularly represents Panasonic in connection with a wide variety of transactional matters involving consumer electronics and GE in connection with the IP aspects of numerous corporate transactions. He also counsels clients with respect to their rights under existing agreements and the development of new technologies.

Mr. Osterman lived in Japan from May 1997 to May 1998 where he worked in-house on loan to the headquarters of Panasonic Corporation.

Mr. Osterman is a member of the State Bar of New York and is admitted to practice before the United States Patent and Trademark Office. He has appeared on national television and lectured on intellectual property, electronic privacy and e-commerce throughout the United States and on U.S. intellectual property and contract law in Japan. He is also the Vice Chair of the IP Licensing Committee of the Intellectual Property Owners’ Association and is active in the open source legal community.

Mr. Osterman has received a number of awards for his expertise including being ranked by Chambers USA and Chambers Global as a national and global leader in the technology and outsourcing fields and by Legal 500 as a leading lawyer in the field of intellectual property. He is also recognized as an “IP Star” by Managing Intellectual Property’s IP Stars for Copyright, Counselling and Licensing, by Best Lawyers in America for Information Technology Law and in IAM Patent 2014.

Education

Harvard Law School (J.D., cum laude, 1995)

Cornell University (B.A., cum laude, 1992)


John Tsai is IP Counsel at Stripe, where he works on all aspects of IP.

He started his in-house career at PayPal, working on patent strategy and open source, before transitioning to Facebook, where he supported all Facebook companies (including Instagram, WhatsApp, and Oculus) in IP licensing.

John graduated from UC Berkeley School of Law in 2009.  After graduation he joined the SF office of Kirkland & Ellis LLP as a patent litigator and later worked in IP licensing at Bridges and Mavrakakis LLP. 

John leverages his technical background to better understand how to best protect a company’s IP.  He has extensive experience in IP licensing, open source, patent strategy, and M&A due diligence.  He is also a member of the Ambassador’s Council of the California Minority Counsel Program, a non-profit dedicated to promoting diversity in the legal profession by providing attorneys of color with access and opportunity for business and professional development.


Karen Ballack is an intellectual property transactional attorney with emphasis on representing technology companies, particularly in the computer (hardware and software), Internet, semiconductor, biotechnology, pharmaceutical and medical device industries.

Ms. Ballack has extensive experience in a wide variety of complex technology and intellectual property alliances and transactions. Representative matters include: licensing arrangements; research and development collaborations; joint ventures; strategic alliances and corporate partnering transactions; intellectual property acquisitions and divestitures; manufacture and supply arrangements; distribution and reseller arrangements; co-marketing alliances; consulting and professional services agreements; and other arrangements involving the commercial exploitation of technology and intellectual property. Ms. Ballack’s practice also includes providing intellectual property assistance in connection with private equity, M&A and other corporate transactions. Ms. Ballack is frequently engaged as a guest speaker on topics relating to technology and intellectual property transactions.

Ms. Ballack is actively involved with the Firm’s diversity and pro bono efforts. She is also a member of the Board of Directors of The Progeria Research Foundation.

Ms. Ballack is widely recognized in the industry. Among her recent accolades, she was named among “The World’s Leading IP Strategists 2017-2019” by IAM Strategy 300 and among the “Top 250 Women in IP 2017” by Managing Intellectual PropertyThe Recorder named Ms. Ballack a “Trusted Advisor” for technology transactions in 2016 and 2017. She was named by The Silicon Valley Business Journal as one of Silicon Valley’s 2015 Women of Influence. Ms. Ballack was named to the Daily Journal’s 2017 list of “Top 100 Lawyers in California”. She was also named to the Daily Journal’s 2014 - 2016 lists of Top Women Lawyers in California, with the publication noting “When Weil represents major technology giants in high-value corporate transactions, the firm calls on Ballack to handle the complex intellectual property aspects of the deals.” She has also been included in The Recorder’s 2013, 2015 – 2017 lists of Women Leaders in Technology Law, which recognizes women lawyers who have demonstrated leadership and expertise in solving the most pressing legal concerns in the technology sector. She has been ranked by Chambers USA 2010-2019 as a leader in California in the field of IT & IT Outsourcing. Sources in Chambers USA 2015 describe Ms. Ballack as having the ability to “cut through and find areas of compromise” in major M&A deals and as being “a superb drafter and negotiator”. She has been recognized by The Legal 500 US 2010-2019 in the field of Intellectual Property, Patent Licensing, and has also been named an “IP Star” by Managing Intellectual Property IP Stars 2013-2019. Ms. Ballack has also been named to the 2017 and 2018 Lawdragon 500 Leading Lawyers lists. In addition, Ms. Ballack is included in IAM Licensing 250’s “World’s Leading Patent & Technology Licensing Lawyers” and IAM Patent 1000’s “World’s Leading Patent Practitioners.”


Lothar Determann practices and teaches international data privacy, technology, commercial and intellectual property law.

At Baker & McKenzie LLP in San Francisco and Palo Alto, he has been counseling companies since 1998 on data privacy law compliance and taking products, business models, intellectual property and contracts international. Admitted to practice in California and Germany, he has been recognized as one of the top 10 Copyright Attorneys and Top 25 Intellectual Property Attorneys in California by the San Francisco & Los Angeles Daily Journal and as a leading lawyer by Chambers, Legal 500, IAM and others. For more information see www.bakermckenzie.com. Contact: ldetermann@bakermckenzie.com.

Prof. Dr. Determann has been a member of the Association of German Public Law Professors since 1999 and teaches Data Privacy Law, Computer Law and Internet Law at Freie Universität Berlin (since 1994), University of California, Berkeley School of Law (fka Boalt Hall, annually since 2004), Hastings College of the Law (since 2010), Stanford Law School (2011) and University of San Francisco School of Law (2000-2005). He has authored more than 120 articles and treatise contributions as well as 5 books, including Determann’s Field Guide to Data Privacy Law (3d Edition, 2017, also available in Chinese, German, Japanese, Portuguese and Russian) and California Privacy Law - Practical Guide and Commentary (3d Ed. 2018).

Latest paper: No one owns data https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3123957


Mary A. Fuller is founder and principal at Fuller Tech Law in Silicon Valley. With decades of experience as an engineer, patent attorney, general counsel and corporate advisor, Mary provides intellectual property and fractional general counsel services for growth-minded technology companies.

Mary graduated from Northern Arizona University with a BSE in electrical engineering. After working at Hewlett-Packard as an engineer, she graduated cum laude from the University of Notre Dame Law School.

She began her career in Silicon Valley as a patent attorney at several law firms, including Pennie & Edmonds; Carr & Ferrell, and Bingham McCutchen. She joined Santa Clara-based Marvell Semiconductor, Inc. as a senior patent litigation attorney, rising to become Director and Managing Counsel for Litigation. She the served as Managing Director and Associate General Counsel, Intellectual Property at Maxim Integrated Products, Inc. as the company’s top IP attorney. She later became General Counsel and Corporate Secretary at Adaptive Spectrum and Signal Alignment, Inc. (“ASSIA”), and later as vice president, chief policy officer and head of legal at Kudelski Intellectual Property and Innovation.

In addition to work for start-ups and corporate clients, Mary serves as fractional General Counsel for Benetech, a nonprofit that partners with communities to develop software for social good, to solve problems related to education, human rights, poverty and the environment.

Mary served as president of the San Francisco Bay Area IP Inn of Court 2010-2012. She has been active in Upward (previously Hipower), The Club Silicon Valley, and was awarded Watermark’s Emerging Leader Award in 2015.

In addition to leading Fuller Tech Law, Mary is an adjunct professor and supervising attorney at Santa Clara University School of Law’s Entrepreneurs’ Clinic, where students provide pro-bono legal services to high-tech startups. She also speaks regularly on topics such as intellectual property, patent licensing strategies, artificial intelligence, litigation management and contract law. She is a frequent presenter at the Practicing Law Institute.


Nivedita Soni is an LL.M (Masters of Law) candidate at Berkeley Law and has previously worked as an in-house counsel with Goldman Sachs and Samsung in India. She has 5 years of technology transactional experience, with a focus on data privacy and IP issues in emerging technologies such as digital payments, online banking and Internet of Things (IoT) enabled devices.

At Berkeley Law, Nivedita is a member of the Berkeley Privacy Law Society and serves a Research Associate to David W. Tollen for the 3rd edition of his bestselling book ‘The Tech Contracts Handbook’.


Regina Sam Penti is a partner in the Data and IP Transactions practices of Ropes & Gray LLP. Regina counsels clients on their most complex intellectual property, data, and technology matters. She 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.

An MIT-trained engineer and computer scientist with a dual-qualification as a U.S. lawyer and Solicitor of England & Wales, Regina has deep experience in global intellectual property and technology law issues 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 data 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.


Ted Herzog is Sector General Counsel – International at Ecolab Inc., a global leader in water, hygiene and energy technologies and services.  In his current role, Ted is responsible for Ecolab’s international legal matters, as well as for legal support for digital commercial solutions, global supply chain and IT security.  Ted also serves as Ecolab’s global data protection officer and spent four years advising Ecolab’s management and board of directors in the areas of corporate governance and securities law.

Prior to joining Ecolab in February 2014, Ted served as global legal counsel responsible for legal support of all supply chain-related operations for Honeywell’s largest division.  Earlier in his career, Ted spent five years at Pentair, Inc., progressing through a series of legal roles including as general counsel of Pentair’s largest division, M&A counsel and global lead compliance leader. Ted spent seven years in private practice at the law firm of Dorsey & Whitney, serving clients in numerous areas of law, including international business transactions, M&A, corporate governance, securities law, corporate finance, compliance and international employee benefits.

Ted earned a juris doctor from the Stanford University School of Law, a Master of Arts degree in Economics from the University of Minnesota, a diploma from Jagiellonian University in Kraków, Poland, and a Bachelor of Arts degree in Economics and German from the University of Wisconsin – Eau Claire.  In addition, Ted was a Fulbright Scholar in the Faculty of Economics at the Free University of Berlin, Germany. 


Jason Kipnis focuses his practice on complex intellectual property matters and advises clients on IP portfolio management, litigation, enforcement and dispute counseling, and audits and due diligence. His experience includes trade secret protection and management, standards counseling, open source matters, international rights management and identification and acquisition of intellectual property of third parties.  In addition, he has advised clients at various stages of development in a wide range of technologies, including computer architecture and system design, software, semiconductor design and fabrication, optics, networking and telecommunications, biotechnology and medical devices.

Mr. Kipnis is a frequent speaker on intellectual property matters at professional and academic conferences, was for many years an adjunct lecturer at Stanford Law School, where he taught IP Strategy for High Technology Companies. He is a current board member of the Portola Valley Theatre Conservatory and a past President of the Board of the Bay Area Video Coalition.

Prior to beginning his legal career, Mr. Kipnis worked as a consultant for Oracle Corporation, where he designed and implemented database applications.


Marjorie Goux is a mission driven legal and business leader. She is Vice President and Chief Legal Counsel at the five-bottom-line company, CLIF BAR, whose energy bars fuel our adventures and an Advisor/Investor for TANOSHI Kids’ Computing – an award-winning Silicon Valley startup closing the homework gap with affordable tablets designed and loaded for kids between the ages of 6 and 12. Previously, she helped fuel growth at The Clorox Company in a dual role as Division Counsel for a succession of Clorox’s market leading businesses such as CLOROX and GLAD and as Chief Counsel for Clorox’s global strategic partnering and innovation teams. Earlier in her career, Marjorie thrived in roles focusing on IP law and anti-counterfeiting at HP and the powerhouse firm, BAKER MCKENZIE (both in London and in Palo Alto).

A passionate advocate for breaking the poverty cycle through education, Marjorie supports education-focused organizations through board and other advocacy work and is currently Vice Chair of The Oakland Public Education Fund Board. Her alma maters are: The University of Washington (Chemistry) and University College, London (Law).


Jeffrey L. Van Hoosear is a partner in the Orange County office. He focuses on international trademark and unfair competition matters. His practice also includes domestic and foreign trademark selection and clearance, trademark and copyright prosecution, proceedings before the Trademark Trial and Appeal Board, intellectual property licensing, domain name and website content issues and state rights of publicity.

Mr. Van Hoosear represents a number of clients in the apparel and sporting goods industries, and also represents clients in the food and beverage, automotive, academic, entertainment, fashion, financial, insurance, real estate and software industries. He has represented clients in a wide variety of industries, including Kate Spade, Pacific Life, First American Financial, Green Street Advisors, Motion Picture Licensing Corporation, Lee & Associates, Orexigen Therapeutics, House Foods, 99 Cents Only Stores, and Public Storage.

Education

Boston University School of Law (J.D. 1986)
Beloit College (B.A. Government 1983), cum laude, Dean's List, Martha Peterson Award, Phi Beta Kappa Honor Society


Martin Collins has served as General Counsel since April 2014 and as head of Compliance and Corporate Development since October 2014.

Prior to joining QuinStreet, Mr. Collins served as vice president of corporate development at Bloom Energy, a distributed energy provider, where he was in charge of all corporate development and legal matters. Prior to that, Mr. Collins was the general counsel and head of internal audit at Novellus Systems. He was also previously in charge of M&A and corporate and securities matters for Oracle Corporation’s legal department.

Mr. Collins received his law degree from Georgetown and holds a B.A from Williams College.


Ray Strimaitis currently serves as Vice President at AST where he is oversees Corporate Development & Global Strategy.  Previously, Ray served as Vice President of Intellectual Property and Deputy General Counsel for Yahoo, and as Vice President of Excalibur IP, LLC.  He led a global team of IP professionals and was responsible for all IP matters at Yahoo and Excalibur.  As part of his role, he was responsible for setting patent strategy, monetizing the Yahoo and Excalibur patent portfolios, managing patent risk, guiding patent advocacy and overseeing all trademark/copyright matters. During his tenure at Yahoo, Ray successfully established and led a program to monetize Yahoo patents that generated $600 million in patent sales and license transactions.  In 2016 he led the effort to form Excalibur IP, LLC – a wholly owned Yahoo subsidiary that was created to further optimize patent value to Yahoo shareholders. Before joining Yahoo, Ray served in various legal, management and patent monetization roles at IBM.


Suzanne Bell has more than 20 years of experience representing some of the world’s most prominent technology companies in their most significant technology and intellectual property transactions. Recognized as a leading practitioner in Chambers USA for her "wealth of experience," clients describe her as "service-oriented, delivering high-quality work product in a practical and friendly manner."

Ms. Bell focuses on technology and IP transactions—with an emphasis on complex strategic alliances—for a wide range of software, electronics, AI, IoT, autonomous vehicle, telecommunications, cloud computing, digital media, Internet, fintech, digital health, and clean technology companies. Her practice also includes strategic intellectual property asset purchases and sales; technology mergers, acquisitions, and spin-offs; and intellectual property litigation settlement agreements. In addition to her transactional work, she provides product counseling and advice on structuring business models for emerging technology companies and traditional companies that are embracing technology. Ms. Bell works with both growth and mature companies, and she has advised many of Silicon Valley's most prominent companies from start-up to maturity.


Tessa Schwartz has an active practice counseling companies on intellectual property issues, and negotiating complex intellectual property and commercial agreements. She advises on a range of strategic transactions, including key patent licenses and acquisitions, technology procurement agreements, and complex development, collaboration, joint-venture and distribution deals. Ms. Schwartz also regularly advises companies on the IP aspects of their M&A transactions.

In addition to maintaining an active practice and working with clients on a daily basis, Ms. Schwartz currently serves as a firmwide managing partner.

Ms. Schwartz advises clients primarily in technology and data intensive sectors, representing software, SaaS, cloud computing, hardware, consumer electronics and products, social media, Internet, mobility and wireless, e-commerce, advertising, healthcare, fintech, transportation, semiconductor, and other companies. Ms. Schwartz’s M&A experience includes advising companies on the IP aspects of strategic transactions. She also focuses on matters related to energy-efficiency, renewable-energy, and sustainability. 

Ms. Schwartz provides clients with prelitigation and litigation advice. She frequently advises executives and senior management on strategic business, legal and commercial issues, including the structuring of transactions, risk management and contract compliance. She also counsels clients with respect to a wide variety of IP issues, including patent exhaustion and implied licenses, standing and standards, the protection of data and other trade secrets and the development and distribution of open-source software.

In addition to her transactional expertise, Ms. Schwartz’s litigation background includes representing clients in arbitration, as well as in state and federal courts in such areas as antitrust, false advertising, unfair competition, breach of contract, securities, trademark, copyright and trade secret law. Her litigation experience includes complex, multidistrict and class action litigation, as well as appellate advocacy.

Ms. Schwartz’s pro bono efforts have included work for The Biomimicry Institute, Goodwill, Common Sense Media, Business for Social Responsibility, The World Wildlife Fund, Build Change and the Sustainability Accounting Standards Board (SASB). She also provides IP advice to a variety of cultural, media and arts organizations; and other assistance for nonprofits. She recently received the Wiley W. Manuel Award for Pro Bono Legal Services from the State Bar of California.

Ms. Schwartz received her B.A. magna cum laude from Harvard College in 1991. In 1996, she earned her J.D. from the University of California at Los Angeles, where she was elected to the Order of the Coif.


Tom F. Villeneuve, a founding partner of the firm, is a nationally recognized authority in the areas of U.S. and international corporate partnering, strategic alliances, joint ventures, and licensing, as well as in intellectual property strategy and commercialization. He has extensive expertise representing start-up/emerging companies and multinational corporations in these areas, and has successfully represented emerging company clients in major corporate partnering/strategic alliance and/or licensing arrangements with a great many of the largest U.S. and international information technology, communications, pharmaceutical and medical device companies, as well as with the major research universities and institutes.
 
Tom was the only licensing/partnering lawyer named among the "Top 25 IP Lawyers" by California's leading legal trade publication. He is also one of only a handful of licensing/partnering attorneys named to Global Counsel's "Most Recommended Lawyers" lists and is recognized as one of California's top corporate transactional lawyers in both "Best Lawyers in America" and the Chambers USA guide to "America's Leading Lawyers for Business," as well as one of the Northern California "Super Lawyers." 

Tom has been a Federal court-appointed expert arbitrator, and has been appointed as an expert negotiator and expert counselor/witness regarding intellectual property issues and licensing/partnering practices in various industries. This includes such notable matters as: amicus counsel to the Software Industry Coalition and the Computer Software Industry Association with respect to the U.S. Supreme Court review of the seminal Lotus v. Borland copyright case; appointment by the California Attorney General as the lead strategist and negotiator in resolving the State's highly-publicized Oracle licensing scandal; and serving as the expert consultant and witness on corporate partnering/strategic alliances in the Beckman Center/City of Hope dispute with Genentech.