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IP Issues in Business Transactions 2011


Speaker(s): Carolyn L. Craig, Claudine Meredith-Goujon, David H. Kennedy, David M. Simon, Gregory D. Caldwell, Heidi L. Keefe, Ira Blumberg, J. Pat Powers, Karen N. Ballack, Lothar Determann, Michael A. Tomasulo, Michael J. Sacksteder, Scott L. Darling, Selwyn B. Goldberg, Tarek N. Fahmi
Recorded on: May. 19, 2011
PLI Program #: 28466

Heidi Keefe is a partner in the Cooley Litigation department and member of the Intellectual Property Litigation practice group. She joined the Firm in 2009 and is resident in the Palo Alto office.

Ms. Keefe represents clients in high-stakes patent trials before juries and judges. A former astrophysicist and registered patent attorney, she easily understands a variety of technical disciplines, from software to medical devices.

Ms. Keefe has frequently been recognized as a leading lawyer, including being named one of the "Top 45 Women Attorneys in the U.S. under 45" by The American Lawyer, one of the "Top Women Litigators of 2010" by California legal newspaper The Daily Journal, and one of Northern California's Super Lawyers in 2010. In 2009, she was recognized as one of the "Top 20 Lawyers in California Under the Age of 40" by the San Francisco Daily Journal and the Los Angeles Daily Journal. She was also recognized as one of "The Bay Area's Best Lawyers" by Bay Area Lawyer magazine.

Ms. Keefe is a frequent lecturer on all aspects of Intellectual Property Protection. She has taught classes at Santa Clara University on IP Litigation and has conducted lectures at Boalt School of Law and Stanford Law School. Ms. Keefe speaks throughout the country for Law Seminars International, the ABA and the Practising Law Institute.

Ms. Keefe received a JD from Santa Clara University School of Law, graduating cum laude. She received her BA from Wellesley College, graduating cum laude.
Ms. Keefe is a member of the California State Bar, and is admitted to the U.S. Court of Appeals for the Federal Circuit and Ninth Circuit, U.S. Patent and Trademark Office, U.S. District Court for the Central and Northern Districts of California and the Eastern District of Texas. Ms. Keefe is a member of the American Bar Association, Silicon Valley Intellectual Property Law Association and the Chair of the ABA Section of Science and Technology Law's Special Committee on Space Law.

Education
JD, 1995, Santa Clara University School of Law
BA, Wellesley College

Bar Admissions
California
Registered to practice before the United States Patent & Trademark Office (USPTO)

Court Admissions
  U.S. Court of Appeals, Federal Circuit
  U.S. Court of Appeals, Ninth Circuit
  U.S. District Court, Central District of California
  U.S. District Court, Eastern District of Texas
  U.S. District Court, Northern District of California


Ira Blumberg is a Licensing Executive working at Intellectual Ventures. He joined IV in June of 2010. Before joining IV, Ira was Vice President of Licensing at Rambus for 5 years. Prior to Rambus, Ira was Director of Licensing at Intel. Ira has also worked at the law firms of Hughes, Hubbard and Reed and Wilson Sonsini Goodrich and Rosati. During his legal career, Ira has focused on licensing issues and transactions. Over the course of his career, Ira has negotiated licenses with aggregate contracted revenue for his clients in excess of $2B. Ira received his J.D. from University of Virginia where he graduated Order of the Coif. Ira also has a Masters of Computer Science degree and a Bachelors of Applied Science degree both from the University of Pennsylvania. Before going to law school, Ira worked as a computer engineer and engineering manager at several high tech companies including Bell Labs.


J. Pat Powers

Primary Areas of Practice: State and Local Tax; Global Tax Minimization; General Tax Planning; Controversy and Litigation

Law School:  University of California, Berkley Boalt Hall


Selwyn Goldberg is a partner in Wilson Sonsini Goodrich & Rosati's technology transactions practice and a member of the firm's Policy Committee. Although his primary focus is on technology mergers and acquisitions, his practice includes a wide range of intellectual-propertyrelated matters, including licensing, joint ventures, and technology transfers, mainly focused in the areas of computer hardware and software, multimedia, telecommunications, and electronics. Selwyn also regularly represents companies in complex transactions in the area of renewable energy, especially in the solar industry. Transactions in this area range from joint ventures to technology development and supply agreements. Selwyn advises clients on general intellectual property matters, including the development of patent programs; analysis of patent portfolios; development and protection of intellectual property; and valuation issues. Selwyn's clients range from small start-up ventures to Fortune 100 companies.

Selwyn joined Wilson Sonsini Goodrich & Rosati in 1995 from Weil, Gotshal & Manges' intellectual property group in New York. At Weil, Selwyn specialized in technology and IP-related transactions-primarily—but not exclusively—in the high-technology area. Selwyn also participated in a number of intellectual property litigations. Before joining Weil, he spent four years as an associate at Cravath, Swaine & Moore in New York, first in Cravath's litigation department and later in its corporate department.

Prior to attending law school, Selwyn was a member of the technical staff at RCA's David Sarnoff Research Center in Princeton, New Jersey.

EDUCATION:

  • J.D., New York Law School, 1986
Magna Cum Laude; Associate Editor, New York Law School Law Review
  • M.S., Electrical Engineering, Rutgers University
  • B.S., Electrical Engineering, University of Cape Town, South Africa
ASSOCIATIONS AND MEMBERSHIPS:
  • Member, American Bar Association, IP Law and Science & Technology Sections
  • Member, American Intellectual Property Law Association
  • Member, California Bar Association, IP Law and Science & Technology Sections
  • Member, San Francisco Bar Association
HONORS:
  • Named in the 2009 edition of Intellectual Asset Management 250 – The World's Leading IP Strategists
  • Named in 2006, 2007, 2008, and 2009 as a Northern California "Super Lawyer" by Law & Politics magazine
ADMISSIONS:
  • State Bar of California
  • State Bar of New York
  • U.S. Patent and Trademark Office


Tarek N. Fahmi

Named one of the leading IP Lawyers in California by the Daily Journal, Tarek Fahmi is a member of SNR Denton's Intellectual Property and Technology and Venture Technology practices and counsels business leaders in intellectual property-related matters across a broad range of technologies and industries. His practice includes:

Structuring and negotiating transactions involving IP assets, including mergers and acquisitions, public offerings, private placements, strategic investments, licenses, and strategic alliances.

Preparing and prosecuting complex patent applications involving communication and data networks, computer software and hardware, analog and digital circuits, semiconductor technologies, Internet technologies, and RF and GPS systems.

Leading due-diligence investigations in connection with transactions in the telecommunications, electronics and semiconductor industries. IP asset assessment and valuation, and risk and portfolio analyses.

Rendering of patent infringement / validity opinions.

Counseling concerning trade secret protections and strategies for IP portfolio management and development.
Litigating complex patent infringement suits relating to technologies as diverse as power management for two-way pagers, Internet caching technology and automated software update distribution systems.

Education

  • Western State University College of Law, 1993, J.D., summa cum laude
    •  Editor, Western State University Law Review
  • University of Saskatchewan College of Engineering, B.Eng.,
    •  Engineering Physics, with distinction


Carolyn L. Craig is a partner in the Cooley Technology Transactions practice group. She joined the Firm in 1997 and is resident in the Palo Alto office.

Her practice is concentrated in the areas of intellectual property law and technology based transactions including licensing, development and acquisitions. Additionally, Ms. Craig counsels high technology companies on protecting their rights when contracting with federal, state and local government agencies.

Ms. Craig's system engineering experience complements her work with technology based transactions. As a Captain in the United States Air Force she managed and directed the requirements definition, technical negotiation, development and integration of satellite telecommunications systems. Upon leaving the Air Force, Ms. Craig joined Lockheed Missiles and Space Company, Inc., as a systems engineer assigned to the development and integration of a state-of-the-art hardware and software system. After successful activation of the system, Ms. Craig was recruited by Scitor Corporation to assist in the restructuring of various government system engineering organizations. Ms. Craig remained at Scitor until she completed law school.

Just prior to joining Cooley, Ms. Craig practiced as a government contracts attorney associated with the San Francisco office of McKenna & Cuneo, L.L.P. where she coauthored The GSA Interim and Proposed Final Rules: Steps Back for the MAS Program (Cost Pricing and Accounting Report, September 1996) and Government COTS Purchases After FARA (Off-the-Shelf, August 1996).

Ms. Craig received a Juris Doctor from Santa Clara University, School of Law in 1995. While there, Ms. Craig also completed Santa Clara University's High Technology Law Certificate program. Ms. Craig received her Bachelor of Science in Aerospace/Astronautical Engineering from the University of Illinois and a Master of Science in Systems Management from the University of Southern California.

Ms. Craig is a member of the State Bar of California and a member of the American Intellectual Property Law Association (AIPLA).


David H. Kennedy, a partner in the Palo Alto office of Gibson, Dunn & Crutcher LLP, is member of the Corporations Department specializing in technology and other intellectual property transactions, including license, acquisition, development, strategic alliance and other transactions involving software, semiconductor chip, Internet, biomedical and other types of technologies or content.  In addition to his technology transactions experience, Mr. Kennedy regularly assists with intellectual property issues (including due diligence issues) arising out of merger and acquisition transactions and has substantial experience involving a wide range of financing, distribution, supply and other commercial transactions and in protecting and acquiring intellectual property rights in a bankruptcy context.

Mr. Kennedy has lectured at a number of programs and seminars regarding intellectual property and various other legal issues, including programs sponsored by the Practising Law Institute, the Continuing Education Section of the California State Bar, the University of Southern California Law Center, the American Conference Institute, the Rocky Mountain Intellectual Property and Technology Institute, Glasser LegalWorks Seminars, Law Seminars International, Stanford Law School and the Silicon Valley Association of General Counsel.  He is a member of the Science and Technology Section, the Business Law Section and the Intellectual Property Section of the American Bar Association and the Intellectual Property Law and Business Law Sections of the California State Bar Association. Mr. Kennedy has contributed chapters or articles regarding intellectual property issues to a number of treatises, including Intellectual Property in Business Transactions, S L. Weakley, ed. (2008); Partnerships, Joint Ventures & Strategic Alliances, S. Glover and C. Wasserman, eds. (2007) and Intellectual Property in Business Organizations: Cases and Materials, Richard S. Gruner, Shubha Ghosh, Jay P. Kesan (2006).

Mr. Kennedy graduated in 1982 from the University of Wisconsin Law School, where he served as Note and Comment Editor for the Wisconsin Law Review and was elected a member of the Order of the Coif.  He earned an M.B.A. degree, with a major in finance, in 1981 from the University of Wisconsin Graduate School of Business.


David Simon is currently the Associate General Counsel for IP Policy of Intel Corporation and has been involved over the last fourteen years in running the Intellectual Property matters for Intel Corporation.  Prior to joining Intel in 1997, David was in private practice in Los Angeles for fifteen years, specializing in intellectual property matters, licensing and high technology law.  He has been a featured speaker in a number of intellectual property seminars including seminars at Stanford, Berkeley and University of Texas law schools and in China, Germany, Japan and Korea.  Mr. Simon holds a BSEE from Massachusetts Institute of Technology and a JD from Georgetown University. Mr. Simon has testified before both the House and Senate IP subcommittees on the need for patent reform and has been an active participant in the industry and bar groups negotiations to arrive at a compromise bill. He currently is a member of the Board of Directors of the Intellectual Property Owners Association and the Coalition for Patent Fairness and is also a member of the IP Advisory Board for George Washington University Law School. 


Scott Darling is the Vice President, General Counsel and Corporate Secretary of Imperva, Inc., a leading data security company headquartered in Redwood Shores, California. Mr. Darling is responsible for managing and directing all of Imperva's legal matters. Prior to Imperva, Mr. Darling served as Vice President and General Counsel of Danger, Inc., a mobile software-as-a-service (SAAS) company, and later as a senior attorney with Microsoft's mobile communications business.  Mr. Darling was responsible for all legal affairs at Danger, including Danger's IPO filing and subsequent $500 million acquisition by Microsoft in 2008.  Mr. Darling started his career more than a decade ago as an associate at Gunderson Dettmer in Menlo Park, California representing technology companies in intellectual property transactions, venture capital financings and general corporate matters. Mr. Darling holds a law degree from the University of Michigan and an undergraduate degree from Yale University.


Claudine Meredith-Goujon is intellectual property counsel at Paul, Weiss, Rifkind, Wharton & Garrison LLP in the Intellectual Property Group of the firm's Corporate Department. Ms. Meredith-Goujon concentrates her practice on intellectual property transactions and counseling. Ms. Meredith-Goujon has advised on a variety of transactional intellectual property matters, including licensing of trademarks, brands, copyrights and software, as well as sponsorship agreements, trademark clearance, prosecution and registration and enforcement and maintenance of intellectual property assets. Her practice includes numerous Internet law issues, including licensing and distribution of content online, privacy law and terms of use for website operators. Ms. Meredith-Goujon's practice also includes addressing and structuring the intellectual property aspect of mergers and acquisitions, securitizations of franchise businesses and financings in a broad range of industries.

Representative Transactions include:

  • Liz Claiborne Inc. in connection with a licensing arrangement with  J.C. Penney Company, Inc. for the LIZ CLAIBORNE brand and in connection with a licensing arrangement with QVC for the LIZ CLAIBORNE NEW YORK brand.
  • Danone S.A. in connection with the formation of a joint venture with Chiquita Brands International, Inc. to distribute fruit-based drinks in Europe.
  • The Department of Energy in connection with several loans under the $25 billion Advanced Technology Vehicles program - including a $1.4 billion loan arrangement for Nissan North America and a $465 million loan arrangement for Tesla Motors.
  • MTV Networks, a division of Viacom International, in its  $175 million acquisition of Harmonix Music Systems, Inc., developer of the leading music-based video games "Guitar Hero" and "Rock Band."
  • Frédéric Fekkai in connection with an investment by Catterton Partners in the Fekkai hair care products and salon business, as well as the subsequent sale of Frédéric Fekkai LLC to Procter & Gamble.
  • Rooms To Go, furniture manufacturer, in connection with a sponsorship agreement with Cindy Crawford for The Cindy Crawford home furniture line.
  • Lehman Brothers Inc. in a $1.85 billion securitization of the revenue-generating assets of Domino's Pizza, Inc. and in connection with a $2.1 billion acquisition and securitization of Applebee's International Inc., by IHOP Corp.
  • Silver Point Finance, LLC, as administrative agent, in connection with a $210 million refinancing for Vonage Holdings Corp., provider of broadband telephone services

Education:
J.D. - New York University School of Law 1997 Member of Journal of International Law and Politics
B.A. - Indiana University 1992


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