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IP Issues in Business Transactions 2012


Speaker(s): Carolyn L. Craig, Christian H. Nadan, Colin Chapman, David H. Kennedy, David M. Simon, E. Lynn Perry, Felix S. Sterling, Heidi L. Keefe, J. Pat Powers, Karen N. Ballack, Lothar Determann, Marjorie M. Goux, Mark A. Valetti, Mary A. Fuller, Michael A. Tomasulo, Suzanne Y. Bell, Tarek N. Fahmi, Ute Krudewagen
Recorded on: Feb. 21, 2012
PLI Program #: 34144

COLIN CHAPMAN is a partner in our Silicon Valley office, specializing in the areas of corporate partnering and strategic alliances, technology protection, and licensing and commercialization of intellectual property and technology assets. Colin represents emerging growth companies principally in the technology and life science industries, both in the United States and abroad. Additionally, he has had considerable experience representing multinational companies requiring such expertise.

Colin has represented his clients in negotiating strategic alliances and/or licensing and commercial arrangements with Agere, Abbott, ACS, Amersham, Amgen, AOL, AT&T, Baxter, Chiron, Compaq, Eli, Genzyme, Google, Hewlett Packard, Hitachi, IBM, Ingram Mirco, Intel, Lucent Technologies, Microsoft, Nortel, Oracle, Pasteur Merieux Connaught (Aventis), Perkin-Elmer, GSK, RSA, St. Jude, Sun Microsystems, Texas Instruments, Visa and Yahoo!. He has also negotiated commercial and clinical arrangements with many major research institutions.

Colin has spoken in a number of forums and authored and co-authored books and articles on intellectual property matters and related business strategies that affect strategic alliances. He is author of the treatise "Corporate Partnering, Structuring and Negotiating Domestic and International Strategic Alliance" (Aspen Publishers), and a chapter author of "The Acquisition and Sale of the Emerging Growth Company: The M&A Exit" (Aspen Publishers) and "Venture Capital and Public Offering Negotiation" (Aspen Publishers). He has participated as a presenter at the Practicing Law Institute, the Biotechnology Law Institute, the California State Bar Intellectual Property Section Technology Transfer Conference, and the U.S.C. Computer Law Institute.

Colin has been a partner at Gunderson Dettmer since its inception, and previously worked in the Palo Alto office of Brobeck, Phleger & Harrison and the Los Angeles office of Morgan, Lewis & Bockius. He holds a J.D. from The University of Michigan Law School and a B.A. from the University of California at Berkeley. Colin's previous employment includes service as a Peace Corps Volunteer and a Congressional Legislative Assistant. Colin is admitted to practice California.


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


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


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


Mark A. Valetti

Position/Title:                       
Senior Patent Counsel

Firm or Place of Business:   
Texas Instruments Incorporated

Address:                                
13588 N. Central Expressway
MS 3999
Dallas, TX 75243

Phone:                                   
(214) 479-1265

E-Mail:                                  

m-valetti@ti.com

Primary Areas of Practice:  Mergers and Acquisitions

Law School:                          
Southern Methodist University

Work History:          
As a member of TI’s legal department I have prosecuted patents, participated in our cross-licensing program, written/negotiated commercial contracts, provided litigation support, and support our M&A activities.

Professional Memberships:  IEEE, AIPLA and Texas Bar


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. 


Felix Sterling
 

As senior vice president and general counsel of Trend Micro's global legal department, Felix leads a team with legal oversight responsibility for corporate governance, compliance, product development, channels, sales, human resources, business operations, and all other legal matters for Trend Micro and its global subsidiaries. In addition, he serves as Chairman of Trend's Global Policy Committee, and as Site Executive for Trend's North America headquarters. Felix also enjoys working on strategic and operational challenges, and leads various cross-functional initiatives to optimize business processes and support the SaaS business model.   

Prior to joining Trend Micro, Felix was a vice president and AGC at VeriSign.  He had previously been a member of the Yahoo! legal team, after starting his legal career in the litigation and technology transaction groups of Wilson, Sonsini, Goodrich & Rosati, a premier technology law firm.  Before law school, he studied cognitive science and human factors engineering in graduate school and worked in the Flight Human Factors Division at the NASA-Ames Research Center.
 
Felix holds a juris doctor degree from the University of California at Davis, where he was Editor-in-Chief of the King Hall Advocate and the Western U.S. A.B.A. moot court champion. He also holds a bachelor's degree (with honors) from the University of California at Santa Cruz.


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.


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.


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).


Lynn Perry is the founder and principal of Perry IP Group ALC, which specializes in trademark and copyright law.  She was formerly a partner with Thelen Reid & Priest and Townsend and Townsend and Crew (now Kilpatrick Townsend & Stockton). Lynn has practiced trademark and copyright law since 1981 and is an adjunct professor of trademark law at University of San Francisco School of Law, and a former adjunct professor at UC Hastings College of the Law. She was on the Editorial Board of the Trademark Reporter for over 25 years, and judged an annual professional legal writing competition for many years (both for the International Trademark Association). Lynn has been a member of the Executive Committee of the Intellectual Property Section of the California State Bar, and a member of the Governing Committee of the ABA Forum on Franchising, among many other similar activities. Lynn is a frequent speaker on subjects in the intellectual property law area. Her practice consists of searching and clearing proposed trademarks, prosecuting U.S. and foreign trademark registrations, trademark and copyright infringement analysis, intellectual property licensing, and litigation, including proceedings before the Trademark Trial and Appeal Board.


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.