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Understanding the Intellectual Property License 2012


Speaker(s): A. Clifford Allen, Adam G. Cohn, Bryan Thompson, Cydney A. Tune, David S. Bloch, Ira Jay Levy, James G. McEwen, John H. Elovson, John Steele, Jose A. Esteves, Joseph Yang, Kristina Dinerman Cooper, Lillian Stenfeldt, Matthew K. Miller, Robert Stankey, Sally M. Abel, Valerie Alabanza-Cary
Recorded on: Dec. 10, 2012
PLI Program #: 35709

John H. Elovson 

Primary Areas of Practice

Patent Licensing, Technology Licensing, IP Acquisition and Technology Transactions.


Law School/Graduate School

  • University of California, Hastings College of the Law, J.D., 1997
  • University of California, Los Angeles, B.A., cum laude, 1991


Work History:

  • Rambus Inc., Sunnyvale, CA      
  • Senior Director, Corporate Licensing:  2010-Present
  • (Senior Licensing Attorney: 2006-2008; Director of Licensing: 2008-2010)
  • Wilson, Sonsini, Goodrich & Rosati, Palo Alto, CA 
  • Associate, Technology Transactions Group: 2000-2006
  • White & Case, Paris, France 
    Associate, Corporate Group:  1998-2000


Bars:

  • California State Bar:  No. 194166
  • U.S. District Court for the Northern District of California
     


Robert F. Stankey

Primary Areas of Practice: Technology Licensing; Data Protection & Electronic Communications Regulatory Law

Graduate School

  • University of Virginia School of Law
  • Darden School of Business


Work History

  • Deputy General Counsel, AOL Europe
  • Reed Smith Richards Butler LLP (London)
  • Covington & Burling LLP (London)


Professional Memberships
: Law Society of England & Wales
 


Valerie S. Alabanza-Cary
IP & Patent Counsel Director

Primary Areas of Practice:

  • Technology Transactions, IP Licensing, Open Source


Graduate School

  • Bachelor of Arts, Political Science, 1995, cum laude, Boston College (Minor, Russian & Eastern European Studies)
  • JD/MBA , 2000, Santa Clara University School of Law, Santa Clara University Leavey School of Business (Concentration in Marketing Management)

Work History:

  • 2010-present, IP Patent & Counsel Director, Juniper Networks, Inc.
  • 2009-2010, IP Transactions Counsel, SAP
  • 2007-2009, Assistant General Counsel, Sun Microsystems, Inc.
  • 2004-2007, Senior Counsel, Sun Microsystems, Inc.
  • 2003-2004, Counsel, Sun Microsystems, Inc.
  • 2002-2003, Sr. Contracts Manager, Synopsys
  • 1997-2001, Contractor, Intern, Sun Microsystems, Inc.


Professional Memberships
:

  • State Bar of California
  • U.S. District for the Northern District of California
  • Asian Pacific American Bar Association of Silicon Valley (APABA-SV), Board Member & In-House Committee Co-chair, 2010-2012


Bryan Thompson is a partner-corporate and entertainment in Barnes & Thornburg’s Los Angeles office. With a particular focus on television and digital matters, Mr. Thompson advises clients on transactional matters.

Prior to joining Barnes & Thornburg, Bryan was senior vice president of business and legal affairs for Fox Networks Group, where he served as the head of business affairs for The Jackal Group, a Fox studio. Bryan also has previous in-house experience with Yahoo! Inc., where he was counsel for the sports, entertainment, video game, and marketing departments.

Bryan is a graduate of the University of Texas and the University of North Carolina School of Law.  He lives in Los Angeles but desperately holds on to his Louisiana roots.

 

 


Cliff Allen is a Senior Attorney at Microsoft. 

He is a lead attorney in developing Microsoft's open source policy and compliance processes. He provided the legal workflow for Microsoft’s Open Source Tool which registers over 150,000 uses of Open Source per month and automatically processes 99.7% of those registrations.

Cliff has provided guidance on open source issues for over 20 years.

He is the recipient of numerous awards, including Microsoft’s Growth Mindset –Digital Transformation award, as well as the Excellence in Innovation and Excellence in Collaboration awards.


Cydney Tune is Senior Counsel at Pillsbury's San Francisco office, and leads the firm's Copyrights practice and Media & Entertainment industry team.  Her practice includes a wide variety of intellectual property and entertainment issues, including copyrights and trademarks, as well as a broad array of licensing, E-Commerce and rights enforcement matters.  She represents a variety of clients—large and small, domestic and foreign, and in many different industries.

The Daily Journal named Ms. Tune one of 2008's Top 10 Copyright Lawyers in California and listed her among California's top "25 licensing specialists" in 2010.  She is regularly voted by her peers as among the Best Lawyers in America in the Entertainment Law—in both the Music and Media Law categories.  She has also been named a “Super Lawyer” in intellectual property.  She is a frequent speaker and author on topics pertaining to intellectual property, entertainment licensing and the convergence of entertainment and technology.

Affiliations

  • Past Vice Chair, ABA Forum on the Entertainment and Sports Industries, and Immediate Past Chair of the Licensing, Branding and Merchandise Division for that organization
  • Past Chair, Copyright Interest Group, State Bar of California IP Section, former Executive Committee member
  • Editorial Board, International Entertainment Law Journal
  • Advisory Board, Copyright World
  • Advisory Board, Internet Law & Strategy
  •  Executive Committee and Northern California Chapter Chair, Emeritus, Copyright Society of the U.S.A.


David S. Bloch is an intellectual property litigator focused on helping clients understand the complex technical and legal issues that their businesses face. David litigates patent infringement, trademark, and trade secrets cases for clients in the financial services, technology (networking), health care, and pharmaceutical industries. A prolific writer, David is the author of IP and Technology in Government Contracts (now in its fourth edition) and many articles on IP-related issues.


James McEwen is Assistant General Counsel, Intellectual Property, for Lockheed Martin Corporation. In this capacity, he focuses on complex IP procurement issues, and especially in the area of patent prosecution and transactional intellectual property licensing.  In his transactional role, he works on international and Department of Defense IP licensing issues in prime OEM contracts for aircraft, aircraft components and subsystems, as well as negotiating the related IP provisions in agreements with the extensive multi-tier supply chain needed for Sikorsky to build and maintain the hardware and software on the aircraft.

Mr. McEwen recently finished serving as a Special Government Employee for the Government Industry Advisory Panel established under Section 813 of the 2016 NDAA, where he represented industry concerns with the current Intellectual Property rules related to technical data and computer software.

During his career, he was a Partner in a Washington DC patent boutique, and was a patent attorney in the Office of Counsel for Naval Surface Warfare Center, Carderock Division; and the Office of Counsel for Naval Air Systems Command.   

Mr. McEwen is the former chair of the Intellectual Property Committee for the Aerospace Industries Association and is vice chair of the Intellectual Property Committee for the Public Contract Law Section of the American Bar Association, and he continues to work with these Committees to represent and inform members about IP issues affecting the aerospace industry with special emphasis on DoD procurement policies as it affects prime and suppliers directly or as part of the supply chain. 

Mr. McEwen is also an author and lecturer of numerous articles on various intellectual property and licensing topics.  Most recently, he is a recurring annual co-lecturer at the DC Bar course Preserving Intellectual Property Rights in Government Contracts Series: A Beginner’s Guide, and a coauthor of IP AND TECHNOLOGY IN GOVERNMENT CONTRACTS: PROCUREMENT AND PARTNERING AT THE STATE AND FEDERAL LEVEL (2021 EDITION), as well as its prior 5 editions.


John Steele is a solo practitioner, representing clients on matters of legal ethics, professional liability, risk management, and the law of lawyering.  He is a certified specialist in the law of legal malpractice. For over fifteen years, he served as the top internal ethics lawyer at an AmLaw 100 firm, where he was Special Counsel for Ethics, and at an AmLaw 200 firm, where he was a trial lawyer and litigation partner.  He has taught professional responsibility for over thirty semesters at UC-Berkeley School of Law, Stanford Law School, Santa Clara University, Golden Gate University, and Indiana University – Maurer School of Law.  He has served on a variety of professional committees, including the State Bar of California’s standing Committee on Professional Responsibility and Conduct (COPRAC), and serves an arbitrator in fee disputes.


Joseph Yang is an IP transactions partner at PatentEsque Law Group, LLP.

Joe specializes in structuring & negotiating tech/IP-centric deals (technology transactions, strategic alliances, patent licensing/sales, standards body issues, IP aspects of M&A) and in using IP as strategic business assets. He has led hundreds of deals involving billions of dollars in and across the information technology, electronics, entertainment, consumer goods, healthcare, energy, chemical & manufacturing industries. Reflecting these diverse experiences, Joe is often retained to “bridge the gap” in cross-industry deals (e.g., joint ventures, IoT, SaaS & “big data” deals) between companies whose industries historically didn’t interact with each other.

Joe is also an expert witness for high stakes tech & patent licensing disputes.

Joe teaches the "Technology and Patent Licensing" course at Stanford Law School, and has taught the “Patent Law and Policy” course at U.C. Berkeley School of Law. Joe is a long-time chair of the “Advanced Licensing,” “Advanced Patent Licensing” and “Understanding the IP License” courses at the Practising Law Institute in NYC, SF and Chicago. He has written for journals & books, and been cited by courts & treatises, on licensing & patent law.

Joe previously served as VP & General Counsel of Cryptography Research, Inc. (CRI), negotiating deals under which 10+ billion devices/year are made by its licensees in the smart card/phone, semiconductor, pay TV, printer & other fields. He also developed, enforced & defended CRI’s patent portfolio, and played a key role in CRI’s successful sale in a series of M&A deals (with Macrovision & Rambus) valued at $400+ million.

Before that, Joe co-founded and later led the “IP Strategy & Transactions” practice based in the Silicon Valley office of the world’s largest law firm (Skadden, Arps). He has also practiced at other large multinational law firms, and served as an arbitrator.

Joe has been named one of the “World’s Leading IP Strategists,” “World’s Leading Patent Professionals” and “World’s Leading IP & Technology Licensing Lawyers” by Intellectual Asset Management (IAM) publications. IAM named Joe as 1 of only 10 "highly recommended" IP transactional attorneys in California -- the only one from a boutique (non-AmLaw 100) firm:

“Joseph Yang is a major-league deal maker and licensing authority” as well as “a transactional mastermind” with arbitration and litigation skills that make him a formidable negotiator.” “He … is a creative problem solver who can clearly articulate legal risks and provide effective advice to guide business decision making.”

Joe is “one of the best expert witnesses you could hope to deal with. He considers all the issues before committing to an opinion, and his positions are always rock solid”.

He is also profiled in “Marquis Who’s Who in American Law”, “Marquis Who’s Who in America” and “Marquis Who’s Who in the World”, and named to the California SuperLawyers list.

Joe also serves on the advisory board of the Licensing Executives Society - Silicon Valley chapter, and is a board member of the Asian Pacific American Bar Association of Silicon Valley.

Joe was originally a research engineer in the aerospace & energy fields. He holds a J.D. from Stanford Law School and a Ph.D. (engineering) from the California Institute of Technology, where he has been a board member of the Caltech Associates & Caltech Alumni Association.


Kristina Dinerman Cooper is a Founder, Vice-President and General Counsel of Taap Development Inc., a technology company which is soon to launch the TaapMe app which allows users to location lock and time lock compelling content experiences, dynamic offers and more.  She is a former Vice-President of Business Development and Associate General Counsel at Yahoo, where she oversaw the international business development team and the media and technology legal team responsible for consumer media products.  She has extensive experience in licensing, entertainment, and technology.   Kristina holds a patent in the video content area, “Method and System of Unauthorized Content Detection and Reporting.”  Kristina has been a member of the Practicing Law Institute Faculty since 2012 and teaches “Rights of Publicity and Entertainment Licensing.”  Prior to Yahoo, she was part of the business development team at Alta Vista Company, a Director of Business and Legal Affairs at Fox Entertainment Company, and an Associate at Paul, Hastings, Janofsky and Walker in Los Angeles.  She is also currently a consultant in business development, strategy and legal for clients with digital and consumer offerings, including Discovery and Mattel.


Primary Areas of Practice:  patent licensing, strategic intellectual property acquisitions, technology transactions

Education:

Boston University School of Law, 2000
Univ. of Pennsylvania, 1995, B.S. Chem. Eng.

Work History:                   

Samsung Electronics, 2014-present
Morgan, Lewis & Bockius LLP, 2012-2014
Rambus Inc., 2010-2012
Morgan, Lewis & Bockius LLP, 2003-2010
Brobeck, Phleger & Harrison LLP, 2000-2003


Primary Areas of Practice: Ms. Stenfeldt is a Partner in the Bankruptcy Department at Rimon. She works on complex intellectual property issues in bankruptcy cases and represents international technology and other clients on the various aspects of licensing and bankruptcy law.  She assists clients in purchasing intellectual property assets from financially challenged companies, both in and out of bankruptcy cases. She also assists companies in efficiently structuring business transactions and licenses to prevent losses and protect assets due to potential future insolvencies of others.

She was named “Best Bankruptcy Lawyer,” “Best Bankruptcy Litigator” and a “Super Lawyer” again this year. She was recognized as one of 40 “Women Leaders in the Law” in California by The Recorder. She frequently lectures on a wide variety of bankruptcy related topics, including selected topics at the Stanford University Graduate School of Business. Lillian also represents clients throughout the country in all aspects of insolvency and bankruptcy proceedings and strategy. Her clients include secured creditors, hedge funds, creditor’s committees, trustees and receivers. Her clients range from International Fortune 100 companies to start ups.

Lillian earned her BA in Economics, as well as her Master’s Degree in Organizational Behavior, from Stanford University. She received her J.D. from the University of Detroit Mercy Law School, magna cum laude.

Work History:

• Rimon, January 1, 2018-Present

• Sedgwick LLP, 2003-2017

• Gray Cary, formerly known as Ware & Freidenrich, now known as DLA Piper, 1994-2003

• Bronson, Bronson & McKinnon, 1982-1994

• General Motors Legal Staff, 1980-1982

Professional Memberships:

• Director, Bay Area Bankruptcy Form

• Past Board of Director, International Turnaround Management Association;

• American Bankruptcy Institute

• International Association of Insolvency Professionals

• International Women’s Insolvency Association


Sally Abel focuses her practice on international trademark and trade name counseling, including the development and management of international trademark portfolios and trademark rights online. Her representative clients include some of the largest technology companies including Cisco Systems, Facebook, Fitbit, NVIDIA, Salesforce.com, Symantec and Uber.

Sally is ranked among the top 5 trademark lawyers in the United States in Who’s Who Legal: Trademarks as a Thought Leader for her “super reputation…as one of the ‘top’ names in trademark law.” She has repeatedly won other international, national, state and Silicon Valley accolades including:

  • Managing Intellectual Property: IP STAR and The Top 250 Women in IP (2014-2019)
  • The National Law Journal: Intellectual Property Trailblazers & Pioneers (2014)
  • World Trademark Review 1000: One of the top 9 trademark practitioners in the U.S. (Gold ranking 2012-2019)
  • Chambers USA and Chambers Global: Band 1 (2009-2019)
  • Euromoney’s Best of the Best Expert Guide 2019
  • The Legal 500: Intellectual Property – Trademark Litigation (2018 – 2019)

Sally was a pioneer in the international debate over trademark rights on the internet, including serving as the International Trademark Association’s representative on the 11-member International Ad Hoc Committee, the international body organized by the Internet Society, to restructure the domain name system. At the invitation of the World Intellectual Property Organization, Sally also participated in WIPO’s First Meeting of Consultants on Trademarks and Internet Domain Names held in Geneva in February 1997. Through WIPO and the National Arbitration Forum, she has served as a neutral panelist in over 60 domain name disputes brought under ICANN’s UDRP system.

 

Sally was a member of the INTA Board of Directors from 1998 to 2000. She chaired INTA’s Internet Subcommittee for two years and developed and chaired INTA’s Enforcement Committee. She teaches trademark law annually at an IP conference for federal court judges and teaches international trademark law at Berkeley Law.


Adam Cohn is Senior Counsel at Evernote Corporation.  Adam has lived and worked in the Bay Area since 2000, starting out at Sun Microsystems, and later serving as Legal Director at Cisco, where he owned legal support for the company’s open source licensing policies and practices.  Before moving to the San Francisco Bay Area, Adam spent several years at the Federal Trade Commission in Washington, DC, filing some of the Commission's first internet cases and leading the Commission's telecommunications fraud team.  Adam is a graduate of Harvard Law School and has a BA from Cornell University.


Jose A. Esteves focuses on assisting clients in maximizing the value of their intellectual property and technology assets, including through strategic stand-alone transactions such as collaborations, joint ventures, cloud/outsourcing arrangements and other complex technology transactions; stand-alone and mergers-and-acquisitions-related development, licensing, supply, marketing and support arrangements; and IP monetization and financing transactions. Mr. Esteves also counsels clients on IP, technology and data legal and commercial issues, including with respect to privacy, cybersecurity and emerging issues in big data, artificial intelligence/analytics, internet of things and other key technologies, including in fintech, health care and autonomous vehicles. Mr. Esteves advises a diverse group of clients from the U.S. and abroad, including Europe, Asia and South America. Mr. Esteves also handles intellectual property and technology aspects of traditional mergers and acquisitions, financings, public offerings and commercial transactions. Intellectual Asset Management magazine, the leading trade publication focused on IP monetization, includes Mr. Esteves on its list of the “IAM Strategy 300 — The World’s Leading IP Strategists.”