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Intellectual Property Law Institute 2016


Speaker(s): Charan J. Sandhu, David Bender, Douglas (Chip) A. Rettew, Howard J Shire, Joel Wolfson, John Macaluso, John W. Hamlin, Lateef Mtima, Lindsey J. Canning, Lisa T. Simpson, Pauline Wen, Robert Greene Sterne, Robert P. Taylor, Siegrun D. Kane, Steven C. Bennett, Steven M. Gruskin, Stuart E. Pollack, Susan Progoff, Teri Wilford Wood, Victoria A. Cundiff, William A. Tanenbaum, William Sloan Coats
Recorded on: Sep. 26, 2016
PLI Program #: 150504

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


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


Bar Admissions: New York; US Patent and Trademark Office

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

Memberships:

  • International Association of Privacy Professionals

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

  • Association of the Bar of the City of New York

Super Lawyers:

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

Speaking:

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


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

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

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

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


John Hamlin is Chief Counsel, Employment, Benefits and Governance for Marsh & McLennan Companies, Inc., one of the world’s leading professional services firms with over 60,000 employees in approximately 90 countries.  The firm’s operating companies include Marsh, Mercer, Guy Carpenter, and Oliver Wyman.  Prior to joining Marsh & McLennan, he was Of Counsel with the law firm of Paul, Hastings Janofsky & Walker LLP.  While in private practice, he represented employers in all aspects of labor and employment law, before various state and federal courts and administrative agencies, and provided advice on an array of personnel-related issues.  Mr. Hamlin served as a Law Clerk to the Honorable B. Avant Edenfield, Judge of the United States District Court for the Southern District of Georgia in Savannah.

Mr. Hamlin is a fellow of the College of Labor and Employment Lawyers.  He has published various articles on employment law and has presented at numerous seminars on assorted employment-related topics.  In 2014 he was recognized as one of The Legal 500’s GC Powerlist “Corporate Counsel 100: Rising Stars,” which recognizes leading in-house lawyers for innovation, quality and excellence.  He was selected by the International Law Office and the Association of Corporate Counsel as the recipient of the 2015 ILO Global Counsel Award for Employment Counsel of the Year.  He is the recipient of a 2016 First Chair Award for Top Employment Counsel.   

Mr. Hamlin earned a J.D. with honors from the University of Connecticut School of Law, where he was Editor-in-Chief of the Connecticut Journal of International Law


John Macaluso is a member of Gibney's Intellectual Property Practice Group.  He focuses primarily in trademark and copyright protection and enforcement, as well as in computers & new media, corporate and sports law.

Mr. Macaluso has successfully litigated scores of trademark counterfeiting and copyright infringement cases, as well as civil and administrative proceedings under the UDRP, DMCA and ACPA. Mr. Macaluso also counsels clients in the luxury goods, fashion, sports and entertainment industries in developing nationwide programs to protect and enforce intellectual property rights. In furthering that goal, he advises federal, state and local law enforcement agencies on procedures to combat the counterfeiting of trademarked goods, and trains members of these agencies as an expert in the identification of counterfeit merchandise.

Mr. Macaluso is the co-founder of Gibney’s Online Brand Protection Group and supervises a staff devoted exclusively to protecting and enforcing clients’ rights online.  He has extensive experience drafting and negotiating website development and hosting agreements and advises clients on matters relating to new technology, computers and the Internet. He is also experienced in business planning and financing, and has negotiated licensing and distribution agreements with teams in several professional sports.

 

Memberships and Affiliations

American Bar Association

International Anticounterfeiting Coalition (IACC)

International Trademark Association (INTA)

New York Bar Association, Entertainment, Arts & Sports Law Society

 

Articles, Publications and Lectures

Mr. Macaluso is a frequent author and speaker on international anticountefeiting and internet liability issues, and has addressed audiences at IACC, INTA, the U.S. Patent & Trademark Office, and the U.S. Customs & Border Protection agency. 

 

Professional and Community Involvement

Eastchester Blue Devils Football Association, Head Coach

Eastchester Little League, Head Coach

 

Education

J.D., St. John's University School of Law, May 1990

B.S., Fordham University, College of Business Administration, May 1986

 

Bar Admissions

New York

Washington, D.C.

 

Court Admissions

United States District Court, Eastern District of New York – July 30, 1991

United States District Court, Southern District of New York – July 30, 1991

United States Court of Appeals for the Federal Circuit – June 1, 2004

United States Court of Federal Claims – June 1, 2004

United States Court of Appeals for the Armed Forces – June 1, 2004

United States Supreme Court – June 1, 2004

 

Pro Hac Vice Admissions

United States District Court for the:

Central District of California

Northern District of California

Southern District of Florida

Eastern District of Illinois

District of Massachusetts

District of Nebraska

District of New Jersey

Northern District of New York

Eastern District of Pennsylvania

District of Puerto Rico


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


Pauline Wen is Senior Vice President and Chief Privacy Officer for 21st Century Fox, Inc.  She oversees data privacy for 21st Century Fox, Inc. and its business units, such as the Fox Networks Group.  She is CIPP/US certified.

Prior to joining 21st Century Fox, she was Senior Vice President, Chief Privacy Counsel for Viacom Media Networks, a division of Viacom International Inc., responsible for data privacy for VMN and its brands, such as MTV and Comedy Central, and prior to that role at VMN, she specialized in digital media law at VMN, negotiating deals and providing related advice in a variety of areas in the digital space, such as advertising technology, operations and sales. 

Prior to joining VMN, she was Special Counsel at Fried Frank Harris Shriver and Jacobson LLP, where she specialized in intellectual property and technology law, handling a wide variety of matters for individuals and corporations.  Prior to joining Fried Frank, she specialized in technology-related commercial litigation and intellectual property litigation at Friedman Siegelbaum LLP. Prior to becoming an attorney, she worked as a systems consultant and computer programmer at Deloitte & Touche LLP and its affiliate and AT&T Bell Laboratories.

She earned her J.D. from Rutgers Law School, Newark, and received a Bachelor of Science degree in Information Systems from Carnegie Mellon University.  She is admitted to the Bars of New York and New Jersey. 

In addition to membership in the International Association of Privacy Professionals, she is also a member of the Steering Committee of the Association of Corporate Counsel Greater New York’s Diversity Group. 


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

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

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

Siegrun lectures frequently for PLI, and other CLE organizations. 


Steve is a partner in the Washington, DC office, and is a member of the electrical-mechanical practice group. He has more than 20 years of experience in all aspects of intellectual property law, including federal district court jury trials, appeals to the CAFC, bench trials at the ITC, patent prosecution, reissue, re-examination, opinions relating to validity/ infringement/enforceability, general client counseling and the strategic management and enforcement of large domestic and international patent portfolios.

He handles patent matters in the electrical and mechanical sciences, including vehicle lighting, on and off road tire construction, vehicle body and vehicle information systems, and a broad range of other automotive technologies. Steve also has significant experience in sports related technologies, especially in golf ball/club construction.

Steve continually works with clients to maximize and leverage the value of their intellectual property portfolios and to assist them in taking full advantage of US laws. He provides frequent lectures and seminars on topics relating to U.S. Patent law and USPTO practice and procedure.

Primary Areas of Practice: Intellectual Property pertaining to Electrical/Mechanical patents, including IP Litigation, Inter-Partes and Post Grant Review (IPR/PGR) proceedings under the AIA, ITC Section 337, Patent Counseling and Patent Prosecution

Law School/ George Washington University School of Law

Under Graduate School: University of Miami

Work History:  Steve has more than 20 years of experience in all aspects of intellectual property law, including district court jury trials, appeals to the CAFC, bench trials at the ITC, IPR/PGR proceedings under the AIA, patent prosecution, reissue, re-examination, opinions relating to validity/infringement/enforceability, client counseling and strategic management and enforcement of large domestic and international patent portfolios.

Professional Memberships:
American Intellectual Property Law Association (AIPLA)
International Association for the Protection of Intellectual Property (AIPPI)

American Bar Association (ABA)

Tau Beta Pi

Pi Tau Sigma

International Intellectual Property Law Association

American Society of Mechanical Engineers

District of Columbia Bar Association - Patent, Trademark and Copyright Law Section


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


Teri Wilford Wood is Of Counsel in the New York, New York office of Jackson Lewis P.C. Her practice focuses on representing employers in global workplace law matters, including preventive advice and counseling.

At Jackson Lewis, Ms. Wood focuses primarily on international employment issues, corporate governance and investigations, workplace training and restrictive covenants worldwide. She is a member of the Corporate Governance and Internal Investigations Practice Group and the Non-Competes and Protection Against Unfair Competition Practice Group.

Previously, Ms. Wood was chief global labor and employment counsel advising Fortune 100 technology and financial services corporations worldwide. In this role, Ms. Wood served as Associate General Counsel of International Business Machines Corporation (IBM) for most of her two-plus decade IBM career. In this position and previously as Managing Counsel of American Express Company, she had responsibility for employment, labor, immigration, pension, benefits and executive compensation law.

Ms. Wood has also served as a member of IBM’s retirement plans Investment Committee, served as legal counsel to the plans fiduciary committee and was Co-Chair of the Law Department Education Committee. While at American Express Company, Ms. Wood served on the Supervisory Committee of the Federal Credit Union and acted as its General Counsel.

Prior to her time as in-house counsel, Ms. Wood was an Administrative Judge for the federal Equal Employment Opportunity Commission and, earlier was an associate at a national law firm, both based in New York City.

Ms. Wood has served on the Board of Directors of the Association of Corporate Counsel, Greater New York Chapter, and is a past President of the Association’s New York Chapter and Chair of its Employment Law Committee. She has also served as a member of the Board of Governors of Washburn University School of Law and is currently a member of the law school’s Transactional Law Center. In addition to membership in the Association of Corporate Counsel, Ms. Wood co-founded the Westchester-Fairfield Counsel Roundtable and has served as Co-Chair of the ACC Westchester-Fairfield Employment Law Committee. She is also a member of the New York State Bar Association.

Ms. Wood volunteers with the Lupus Research Alliance on its Executive Leadership Council. She also serves as a pro bono attorney through the firm’s Pro Bono Partnership. She holds an “AV Preeminent” rating with Martindale-Hubbell, and is a previous recipient of the Association of Corporate Counsel’s Distinguished Service Award.

Ms. Wood is a frequent speaker for both domestic and international programs including Practicing Law Institute, Chief Litigation Officers Summit, Center for International Studies (Salzburg, Austria), NYU, Fordham Law School, ALI-ABA Wage and Hour Seminars, HR Conference Board, Association of Corporate Counsel.

Ms. Wood earned her B.A. in 1972 from the University of Missouri, and her J.D. in 1978 from Washburn University School of Law. In 2019, Washburn University named Ms. Wood an honorary Doctor of Law for her contributions to Washburn University School of Law and the legal profession.


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

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


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

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


Orrick Partner Lisa T. Simpson represents retail, entertainment, technology and pharmaceutical companies in intellectual property matters, focusing on copyright, trademark, false advertising, right of publicity and licensing disputes.

Representative Engagements

Oracle America, Inc.  Lisa represented Oracle in its recent copyright fair use jury trial against Google over the use of Oracle's Java source code in Google's Android operating system.

Coorstek Medical LLC.  Lisa served as trial counsel, securing judgment in favor of Coorstek, in this trial concerning trade dress rights in the color pink for ceramic hip ball replacements.

Kirtsaeng v. John Wiley & Sons, Inc. Lisa obtained a victory in the U.S. Supreme Court on behalf of Petitioner Kirtsaeng concerning the application of the Copyright Act's first sale doctrine to foreign-manufactured goods.

DISH Network, LLC.  Lisa represented DISH in its highly publicized copyright and breach of contract disputes with FOX, NBC, ABC and CBS in NY and California concerning DISH's Hopper DVR. She defeated Fox’s and ABC’s three separate motions for a preliminary injunction on DISH's PrimeTime Anytime, AutoHop and Sling features. Lisa and the DISH team also defeated Fox’s two separate appeals in the Ninth Circuit and obtained a favorable summary judgment decision which considered Aereo as it relates to DISH’s Sling feature.

MGA Entertainment, Inc. Lisa represented MGA in its Ninth Circuit appeal regarding its copyright and trade secret dispute with Mattel over the Bratz dolls, obtaining a complete reversal of the District Court's order in MGA's favor. On retrial to a California District jury, Lisa and the team obtained a complete victory for MGA. The jury held that MGA owned the Bratz dolls and Mattel was liable to MGA for $309m on its counterclaims.

Honors

  • IP Department of the Year 2016, American Lawyer
  • IP Group of the Year, Law360, 2014, 2016
  • "Top 250 Women in IP," Managing Intellectual Property, 2014
  • "Future Star," Benchmark Litigation,2015-2016
  • List of Top Women Attorneys in the NY Metro Area, New York Times Magazine, 2012-2016
  • "IP Star," Managing Intellectual Property, 2014
  • U.S. Copyright Firm of the Year 2014, Managing Intellectual Property
  • Named as New York Super Lawyer - Metro, 2012-2016
  • Editor, Duke Journal of Law & Contemporary Problems
  • Member, Moot Court Board, Duke Law School

Education


Sue is a nationally recognized expert on all facets of trademark, copyright and related unfair competition law.  She has handled all aspects of these areas of the law, including major litigation and major transactions.

Sue is an experienced litigator who has handled many trademark, trade dress, copyright, false advertising, domain name, keyword and other Internet disputes and unfair competition matters, some of which have made new law.  She has acted as lead counsel in suits for such clients as Carter's, Lever Brothers Company, Snapple Beverage Corp., Toy Manufacturers of America, Inc., The Coca-Cola Company, Ford Motor Company, Burberry Limited, Bell's Brewery, Inc., Purdue Pharma L.P., Huntsman Gay Capital Partners and Half the Sky Foundation. She has also designed and implemented anti-counterfeiting programs for clients in such diverse fields as fashion and accessories, semiconductor chips and automotive parts, and represented clients in a multitude of industries in oppositions and cancellation proceedings in the United States Patent and Trademark Office and in ADR proceedings.

In addition to her extensive experience in contested proceedings, Sue brings a pragmatic approach to trademark clearance, prosecution and enforcement in the United States and internationally.  She applies a litigator’s perspective to helping clients minimize the risk of receiving a third party’s objection to the adoption of new marks, while also creating strategies for building brands that strengthen the client’s ability to enforce its rights against infringers.  She has also handled the trademark and copyright aspects of many complex corporate transactions that have depended on the parties’ intellectual property rights, and advised clients on designing and implementing trademark and copyright licensing programs.


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


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

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

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

 


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

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

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


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

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

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

 


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


Dr. Stuart Pollack concentrates his practice on patent litigation as well as patent prosecution and patent counseling and opinion work.

With extensive trial experience in federal court, Dr. Pollack has helped obtain favorable judgments in several suits on behalf of pioneer drug companies, including suits brought under the Hatch-Waxman Act against potential generic entrants. His work has focused on pharmaceutical products and drug substances, polymers, optics and chemical reactors, and he has also worked on cases involving mechanical inventions.

Dr. Pollack has successfully represented companies in suits at the International Trade Commission. He has also helped obtain patents for his clients in pharmaceutical and chemical technology at the Patent and Trademark Office.

COURTS AND FORUMS

  • United States Court of Appeals for the Federal Circuit
  • United States District Court for the Eastern District of New York
  • United States District Court for the Southern District of New York
  • United States District Court for the Northern District of Illinois
RECOGNITIONS

Dr. Pollack was named a 2013 Super Lawyer by New York Metro Super Lawyers Magazine. Euromoney / Institutional Investor's 2009 Benchmark: America's Leading Litigation Firms and Attorneys lists Dr. Pollack as a national "Star" in the area of Intellectual Property.

CREDENTIALS

Education
  • Columbia University School of Law (1998) J.D.Kent Scholar
  • Northwestern University (1991) Ph.D., Physical Chemistry (specializing in metallic systems, including metal clusters)
  • Northwestern University (1987) M.S., Chemistry
  • University of Rochester (1986) B.A., Chemistry
Admissions
  • New York
  • United States Patent and Trademark Office


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

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

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

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

 


With more than 30 years’ experience, Howard is a skillful litigator who  protects and defends his clients’ products and IP rights against infringement. Examples include his successful representation of Toyota as defendant in a well known trademark dilution and infringement case involving the LEXUS mark; his spearheading a trademark and copyright counterfeiting case for MuscleTech, a leading nutritional supplement company, which resulted in a multi-million dollar judgment and criminal indictments and convictions brought by the US Attorney; his successful representation of BASF Corporation in a trade dress litigation, which at the time established the Ninth Circuit’s rule that a single color is not generally protectable under the US Trademark Act; his role on behalf of Heidelberg Harris in a case that resulted in a jury verdict of infringement of two printing press patents and a multi-million dollar damages award for Harris; and his representing Ozzy Osbourne in a litigation concerning ownership of the well known Black Sabbath trademark. The 2015 edition of World Trademark Review 1000, which ranks trademark attorneys worldwide, says that he is an “enforcement master who has ‘operated at the top level for years.’” He has extensive experience in litigating actions to obtain domain names under ICANN’s dispute resolution procedure.

He is also an experienced mediator and member of the International Trademark Association’s Trademark Mediators Network, and has served as an arbitrator under the auspices of the American Arbitration Association.

Howard also has an active counseling and prosecution practice. For example, he has developed and implemented worldwide trademark registration programs. Howard also coordinates major corporate acquisitions involving the worldwide transfer of patents, trademarks and copyrights and negotiates a wide variety of intellectual property agreements, such as licenses, trademark coexistence agreements and joint ventures. In addition, Howard counsels clients on intellectual property matters relating, for example, to Internet issues and the selection of new trademarks and domain names. He represents clients from a wide range of industries, including computer hardware and software, consumer electronics, solar energy, financial services, apparel, nutritional supplements, publishing, personal care products, alcoholic beverages and pharmaceuticals.

Howard’s sophisticated ability to help clients achieve their objectives with respect to their intellectual property opportunities and disputes is consistently recognized by legal referral guides that rank attorneys according to recommendations received from others in the legal community. He is ranked as a leading intellectual property lawyer by legal referral guides, such as U.S. News and World Report – Best Lawyers (2015), New York Super Lawyers – Metro Edition (2013) and The International Who’s Who of Business Lawyers (2013).