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Understanding the Intellectual Property License 2016


Speaker(s): A. Clifford Allen, Alison P. Buchanan, Bryan Thompson, Danika Vittitoe, David S. Bloch, Diana V. Sandoval, Ira Jay Levy, Jason Buttura, Joseph Yang, Karen Y. Spencer, Lillian Stenfeldt, Paul E. Thomas, Robert Blamires, Roger P. Kennedy, Sally M. Abel, Willard K. Tom
Recorded on: Dec. 7, 2016
PLI Program #: 150554

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.


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.


Jason Buttura is Senior Product Counsel at Cisco Systems where he supports the Chief Technology & Architecture Office, Cisco DevNet, and other innovation-focused teams and products. Mr. Buttura works closely with Cisco’s CTO to drive the development and promotion of new technologies and future products for Cisco, its customers, and partners. Whether turning critical technology into an industry-leading open source consortium, establishing innovation partnerships with top companies, universities, and government agencies, or negotiating television and movie deals to showcase the latest cutting-edge project, Mr. Buttura is never bored and always reaching for the next cup of coffee.

Prior to his current role, Mr. Buttura spent 8 years as Cisco’s lead attorney for all things open source, working on open source strategy, contributions, agreements with suppliers and customers, M&A, product development, go-to-market, compliance, company-wide policy, process, trainings, and more. Mr. Buttura has also spent time providing general product counseling to other Cisco business units, including software and cable routing, and on rotation with the IP litigation team.

Outside of Cisco, Mr. Buttura has spoken at PLI, ACC, and SVAGC conferences, and sits on the governing board of the Linux Foundation’s OpenChain project. Prior to Cisco, Mr. Buttura was the Senior Intellectual Property Analyst at Wind River Systems, an Intel subsidiary. He is a graduate cum laude of Syracuse University and Northeastern University School of Law, where he interned for the Honorable Claudia Wilken of the U.S. District Court for the Northern District of California and the U.S. Attorney’s Office for the District of Massachusetts, and is a member in good-standing of the State Bar of California.

 


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.


Paul Thomas is a special counsel in Pillsbury's Intellectual Property practice and is located in the Silicon Valley office.

Paul focuses on two practice areas: technology transactions and intellectual property asset protection. Paul has extensive experience in drafting complicated technology license agreements for clients in the high tech sector, and equally extensive experience in brand development and copyright and trademark asset protection for clients in a broad range of industries, including software and technology, e-discovery and data management, feature film and television production, book and media publishing, wine and spirits, beauty and cosmetics, advertising, and the transportation industry. Paul helps clients build and manage global trademark portfolios, and he assists them in monetizing their IP assets through strategic licensing. Paul also assists clients in the enforcement of their trademark and copyright assets, both through strategic negotiation and through litigation before the Trademark Trial and Appeal Board and in federal courts.


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


Roger Kennedy is the Associate General Counsel for Patents at The Walt Disney Company.  As such Roger oversees patent issues for all of the Disney operating units including the Disney+, Parks, ESPN, ABC, Marvel, Pixar and Lucas.  Before Disney, Roger was the Chief Intellectual Property Counsel for Trimble Navigation where he was responsible for all the companies’ intellectual property matters.  Trimble provides positioning solutions enabling professionals in engineering and construction, surveying, agriculture, fleet management and field service to be more productive by revolutionizing their work processes.  Prior to joining Trimble Roger was the Chief Patent Counsel for Oracle Corporation the world’s largest enterprise software company, where he was active in the current patent litigation reform effort.  Before Oracle Roger served in a similar role at Lockheed Martin Missile & Space Corporation and practiced patent litigation at Townsend, Townsend and Crew.  Roger graduated from the University of Florida College of Law and holds in undergraduate degree in Optics from the University of Rochester.


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.


Willard K. Tom is a partner in Morgan Lewis's Antitrust Practice. He has worked in the antitrust field for more than 35 years, both in private practice and in government.

Will has served in a number of policy positions in government, including:

  • General Counsel of the FTC, where he was the agency's chief legal officer and advisor
  • Deputy Director of the Bureau of Competition of the FTC, where he oversaw nonmerger enforcement, patent-antitrust cases, healthcare, policy development, and the competition enforcement of the FTC's regional offices
  • Head of the Bureau's policy office
  • Counselor to the head of the Antitrust Division of the DOJ, where he had responsibility for intellectual property, vertical restraints, and telecommunications matters
  • One of the two principal drafters of the DOJ and FTC's 1995 “Antitrust Guidelines for the Licensing of Intellectual Property”

Will has been a member of the District of Columbia Federal Judicial Nominations Commission, member of the Council of the American Bar Association's Section of Antitrust Law and Section of Business Law, and member of the American Law Institute and of the Administrative Conference of the United States.  He has spoken at the the Asian Competition Forum; the Organization for Economic Co-operation and Development (OECD); the American Intellectual Property Law Association (AIPLA); the Intellectual Property Owners; FTC/DOJ joint workshops; the International Association for the Protection of Intellectual Property (AIPPI); and various events in London, Brussels, Beijing, Shenzhen, Guangzhou, Hong Kong, Seoul, Taipei, and Tokyo.

Will received his J.D., cum laude, from Harvard Law School in 1979 and his A.B., cum laude, from Harvard College in 1975.


Karen has over 25 years of experience counseling clients on patent strategy, patent portfolio management, trade secrets and litigation issues. Karen currently consults and is on the board start-up companies. Previously, Karen formed and led Nike, Inc’s Intellectual Property Transactions & Licensing function.  Additionally, Karen was Nike Golf’s counsel for 9 years, advising on a gamut of global general counseling and intellectual property matters. Karen also served as Nike’s Global Patents Counsel, leading Nike’s utility and design patent prosecution teams. She led patent, trade dress, and trade secrets litigation for Nike and the strategic planning efforts for Nike Golf, Nike Legal and the Nike Patents team. Prior to joining Nike in 2000, Karen was a partner in the Silicon Valley office of Brobeck, Phleger & Harrison and an associate at Heller, Ehrman, White & McAuliffe in San Francisco, focusing on IP litigation and counseling.

Karen is a 2011 recipient of the Portland Business Journal’s Orchid Award, their highest honor of achievement for Women of Influence.  Karen received her Master of Science in Management from Stanford University’s Graduate School of Business and her J.D. from Harvard Law School. Karen is a registered patent attorney, receiving her B.S. from Massachusetts Institute of Technology in Chemical Engineering. She is a member of the California and Oregon state bars and the Patent bar.


Ms. Sandoval is General Counsel and Chief Business Officer for 3rd Power Amplification, a Nashville Tennessee based technology driven guitar amplification and speaker cabinet manufacturing company producing hand-wired amps for professional touring musicians as well as enthusiasts.

Prior to focusing her efforts with 3rd Power, she started and headed the Hospital Corporation of America (HCA) Technology Law and Contracts Group.  During her tenure at HCA, she built a top-tier technology legal team comprised of twenty-four attorneys, contract managers and staff to support the Fortune 100 healthcare company’s information technology, IP, licensing, compliance, data and analytics, and various other technology needs.   Additionally, she sat on HCA’s Patent, Data Governance, Value Management and Data Science Steering Committees and, through those roles, helped to chart the course and development of HCA’s intellectual property road map and policies.

Ms. Sandoval served as Vice President, Legal to the Franklin, Tennessee-based medical transcription services and technology firm, Spheris Inc., prior to and through its acquisition in 2010 by what is now M*Modal.  She also previously practiced at Pillsbury Winthrop and Tisdale and Nicholson working on a variety of corporate, M&A and technology matters.  Diana is a graduate of the University of Pennsylvania Law School and earned her B.A. at the University of California, San Diego.


Robert is a Counsel in the Intellectual Property Group, with a focus on Data Privacy and Technology Transactions.

For over a decade he has advised clients on: regulatory compliance matters such as data privacy, consumer protection, and online / mobile payments and commerce; transactional and other commercial matters, including drafting and negotiating complex IT/IP contracts; and international expansion and associated cross-border and multi-jurisdictional issues.

Robert works for clients in a wide range of sectors, particularly technology, including fintech, adtech, medtech, social media and other data-driven industries, as well as telecommunications, media, and retail.. He is particularly sought after by U.S. technology companies for business-critical advice on U.S., European and cross-border data privacy compliance in the context of their domestic and international operations (including the extent to which their specific data processing activities are subject to particular jurisdictions' legal regimes).

Robert also has deep insight pertaining to European regulatory enforcement, having spent two years on a secondment at the UK's consumer protection regulatory agency.

Bars and Courts

  • Solicitor of England and Wales
  • California State Bar

Education

  • Diploma in Legal Practice, Nottingham Law School
  • LLB, Law with American Law, University of Nottingham, with a year at the University of Texas Law School

Languages

  • English
  • French


Alison Buchanan is a shareholder with Hoge, Fenton, Jones & Appel, Inc., in San Jose, California, where she serves as the firm’s General Counsel and chairs the firm’s Business Litigation Practice Group. Alison focuses her practice on business litigation, professional liability, and legal ethics. She has tried business litigation, legal malpractice defense, and employment discrimination cases to verdict.

Alison is a Certified Specialist in Legal Malpractice Law, as certified by the State Bar’s Board of Legal Specialization. She is a founding member of the Ethics Committee for the California Lawyers Association, serving as the Vice Chair of Publications. From 2011 to 2014, Alison served a three-year appointment to the California State Bar’s Committee on Professional Responsibility and Conduct (COPRAC). She previously served a four-year appointment to the State Bar's Legal Malpractice Law Advisory Commission.

Alison is a member of APRL (Association of Professional Responsibility Lawyers). She is also a member of the Santa Clara County Bar Association and previously chaired its Professionalism Committee. For ten years, Alison taught Professional Responsibility at Lincoln Law School in San Jose. Alison regularly speaks throughout the state on issues of attorney ethics and professional liability. She has been named a Northern California Super Lawyer from 2013 through 2020.  Alison earned her law degree from Chicago-Kent College of Law (Illinois Institute of Technology), with honors, in 2001.

In addition to her law-related endeavors, Alison proudly serves on the Board of Directors for the Humane Society Silicon Valley.


Danika Vittitoe is the legal lead for Global Eagle Entertainment Inc.’s media and content business segment. Global Eagle (NASDAQ: ENT) provides satellite-based connectivity and entertainment content and services for mobility markets across the globe, including aircraft in flight, ships at sea, and off the grid land operations. Danika’s previous legal experience includes in-house positions with Snap, Inc. (parent company of Snapchat), Yahoo Inc. (now Oath Inc.), and OWN: Oprah Winfrey Network. Danika began her legal career as a litigation associate with Arnold & Porter LLP. She obtained her law degree from the University of California, Hastings College of the Law, and her undergraduate degree from Dartmouth College.