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Advanced Licensing Agreements 2016


Speaker(s): David Rabinowitz, Eleanor M. Yost, Gail H. Zarick, Grace L. Pan, Ira Jay Levy, Jennifer S. Yoon, Jeremy Schrire, Jessica L. Rothstein, Jonathan Sirota, Joseph Yang, Kenneth M. Kaufman, Marcelo Halpern, Mark G. Tratos, Mark S. Holmes, Melvin C. Garner, Oliver Herzfeld, Paul H. Arne, Peter J. Kinsella, Raymond R. Ferrell, Scott J. Catlin, Sean P. Haney, PharmD
Recorded on: Mar. 7, 2016
PLI Program #: 153096

Eleanor M. Yost represents clients in a broad range of intellectual property matters, including patent and trademark prosecution, appeals, opinions, licensing and transactions. She also litigates high-stakes intellectual property disputes in state and federal courts, the U.S. International Trade Commission (ITC) and the United States Patent & Trademark Office (USPTO).

Ms. Yost is an in-demand thought leader on the subject of USPTO Patent Trial and Appeal Board (PTAB) post-grant proceedings, and has been featured on the topic in IPLaw360, AmLaw Daily, Corporate Counsel, Inside Counsel, The Recorder, Intellectual Property Magazine, Bloomberg BNA, Reuters’ IP Westlaw Journal, The Pink Sheet, Managing IP, Lawdragon and elsewhere. She is the lead author of PTAB Post Grant Proceedings: A Tactical Guide for Practitioners, serves on the Board of Directors of the PTAB Bar Association, and represents patent owners and petitioners in reexamination, inter partes review (IPR), post grant review (PGR) and covered business method review (CBMR) proceedings, and related appeals to the Federal Circuit.

In addition to her intellectual property practice, Ms. Yost assists clients navigating government contracts and procurement issues, particularly those involving the Federal Acquisition Regulations (FARs), Defense Federal Acquisition Regulations Supplement (DFARS) and the Bayh-Dole Act, among others. She counsels clients with respect to prime awards, grants (e.g., DARPA), subcontract arrangements, contract interpretation, performance, bid protests and potential claims.


Ira Levy is a senior partner in Goodwin’s Litigation Department and a member of its Intellectual Property practice. He is recognized globally for his cross-disciplinary expertise, successfully first-chairing patent, trademark, copyright, false advertising, IP licensing and related matters for a wide array of industries and in a variety of technical disciplines. Mr. Levy is fluent across a variety of product categories and technical disciplines, and has extensive experience with disputes involving biotechnology, electrochemistry, and pharmaceuticals; electronics, computers and telecommunications; mechanical devices; industrial and consumer products; and the Internet, new media and e-commerce. 

Mr. Levy has handled as first chair numerous bench and jury trials in federal and state courts nationwide. He also has significant experience practicing before the U.S. Court of Appeals for the Federal Circuit, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board, Patent Trial and Appeal Board, and the United States Supreme Court. In addition to his litigation work, Mr. Levy works closely with the firm’s Business Law Practice counseling clients on general corporate matters involving intellectual property and the Internet, as well as transactional due diligence, and other licensing issues.

Mr. Levy presently serves as the lead director for Stomp Out Bullying, the leading national anti-bullying and anti-cyber-bullying organization, and on the advisory board of BUILD, a non-profit focused on bringing entrepreneurialism skills to at-risk high school students. He is past director of Love Our Children, USA, a not-for-profit focused on breaking the cycle of violence against children.  Mr. Levy has been an active member of the New York Intellectual Property Law Association, International Trademark Association, American Intellectual Property Law Association, Pharmaceutical Trademarks Group and the Legal Aid Society. He has also acted as pro bono counsel to the United Way of New York City and cyberangels.org., and is a past member of the Board of Directors of the New York Intellectual Property Law Association.

Mr. Levy is listed in New York Super Lawyers (2006 – 2018), The International Who’s Who of Trademark Lawyers, World Trademark Review 1000, Who’s Who Legal Patents, Who’s Who Legal Life Sciences: Patent Litigation, Euromoney’s Guide to the World’s Leading Experts in Patent Law and The Legal 500 and IAM Patent 1000 – The World’s Leading Patent Professionals (2014 – 2018).

Mr. Levy is a frequent speaker and has written numerous articles on the topics of intellectual property, patent, trademark and copyright laws that have appeared in The New York Law Journal and Metropolitan Corporate Counsel. He serves as the co-chair of the Practicing Law Institutes multi-day Advanced Licensing Program, as well as presenting on license litigation for other PLI programs.  He also authored chapters in Commercial Damages (published by Matthew Bender & Co.) and the Wiley Intellectual Property Law Update (published by Aspen Law & Business). Mr. Levy is also a regular presenter at AIPLA, INTA, NYSBA and NYIPLA events. In addition, he maintains an active roster of speaking engagements on intellectual property audit, portfolio development, strategy and management, and Internet and new media matters.  He also lectures on Trademark Licensing at Cornell Law School.

 


Law School/ Graduate School: 
Boston University School of Law (LL.M.) and
Rutgers Law School (J.D.)

Work History: 
Jennifer S. Yoon is an associate at Weil, Gotshal & Manges LLP, in the Technology and Intellectual Property Transactions group, where she advises clients on a broad range of intellectual property, technology and commercial matters, including the acquisition, licensing and commercialization of intellectual property rights. Prior to joining Weil, Jennifer was an associate with Sullivan & Cromwell LLP in the Intellectual Property & Technology Transactions group.

Professional Memberships:
Admitted to practice in NY, NJ, MA and PA


Marcelo Halpern is the firmwide Co-Chair of Perkins Coie’s Technology Transactions & Privacy practice and focuses his practice on complex commercial transactions involving the development, deployment and distribution of technology in a wide variety of industries. Marcelo regularly works with clients in the blockchain industry, advising on technology and platform issues, structuring token offerings, digital currency issues, tokenization of assets, and the development and operation of blockchain based collaborative platforms. In addition, he has advised on the formation and operation of several blockchain consortiums. 

Marcelo provides practical counsel in connection with emerging technologies, including those related to big data analytics, artificial intelligence, fintech and blockchain, internet of things, smart cities, mobile, cloud computing and “as a service” platforms, hardware and e-commerce, as well as the overall interplay of interoperability, industry standards and IP licensing approaches. He has a strong focus on complex strategic alliances and licensing transactions, outsourcing and ERP implementation, digital strategies—including open source licensing, data security, data use and privacy issues—and other marketing and distribution strategies.

Marcelo counsels multinational FORTUNE 100 companies, startups, emerging growth companies, governments and nonprofits on structuring and negotiating collaboration, development, distribution, license and service agreements. He also frequently advises clients on intellectual property and technology issues arising in the context of mergers and acquisitions, industry alliances and consortia, joint venture arrangements, financings, data management and tech transfer transactions. 

Marcelo was honored by U.S. News - Best Lawyers as the Chicago “Lawyer of the Year” in the technology law category and has been listed since 2004 as one of “America’s Best Lawyers” for technology law by Chambers USA in its annual guide of leading business lawyers.

 


Mark Tratos is the founding shareholder of Greenberg Traurig’s Las Vegas office.  Prior to founding Greenberg Traurig in 2005, Mark was a principal shareholder in the entertainment and intellectual property firm, Quirk & Tratos.

Mark is the four-time recipient of Lawyer of the Year recognition in Intellectual Property Litigation and Trademarks by Best Lawyers in America.  Mark has been recognized by Best Lawyers each year since 2002.

Mark has taught Rights of Publicity and Privacy, Cyber Law, and Entertainment Law at UNLV’s Boyd School of Law for over a decade.  He was recognized as the Industry Leader of the Year by UNLV in 2001.

Mark’s clientele includes performers like David Copperfield and Teller of Penn & Teller; visual artists like Australian photographer Peter Lik and acclaimed painter Tim Bavington; and athletes like world champion boxer Floyd Mayweather.

Mark has taught for the Practising Law Institute in programs on the internet and entertainment and has been a regular participant in this program of Advanced Licensing Agreements.


Melvin Garner is a Partner in the firm of Leason Ellis. His practice includes all phases of patent, trademark and copyright litigation. It also includes patent procurement involving various technologies, as well as infringement and validity opinions. He has appeared as an expert witness at several trials and has served as a mediator.

Mel is the author of numerous articles and of Chapter 13, “Intellectual Property Protection of E-Commerce” and Chapter 58, “Trade Secret Causes of Action and Defenses, Including Sample Pleadings,” Intellectual Property Counseling and Litigation, Matthew Bender (2010). In addition, he is a frequent lecturer at PLI events.

Mel is a Past President of the New York Intellectual Property Law Association and a Past President of the American Intellectual Property Law Association. He is on the Executive Committee and is a founding member of the Hon. William C. Conner Inn of Court. He is also a member of the Magistrate Judge Merit Selection Panel for the U.S. District Court for the Southern District of New York. He is listed in Euromoney’s Guide to the World’s Leading Patent Law Experts, Who’s Who Legal - Patents, and New York Super Lawyers.

EDUCATION:
J.D. Brooklyn Law School
M.S. Electrical Engineering, New York University
B.S. Electrical Engineering, Drexel University

BAR ADMISSIONS:
New York
U.S. Patent & Trademark Office

COURT ADMISSIONS
United States Supreme Court
U.S. Court of Appeals for the Second Circuit
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Southern District of New York
U.S. District Court for the Eastern District of New York


Peter Kinsella is a partner in the firm's Technology Transactions & Privacy and Intellectual Property practices. His practice is focused on advising start-up, emerging and large companies on technology, licensing and intellectual property transaction matters. He is a frequent lecturer on licensing and technology issues. Prior to joining the firm in 2010, Pete was a partner with Faegre & Benson. Prior to that, he worked in various legal capacities with Qwest Communications International, Inc. (formerly U S WEST, Inc.) in Denver and Honeywell, Inc. in Minneapolis. 

Pete offers extensive experience structuring and negotiating domestic and international agreements in a wide variety of areas, including: cloud services, outsourcing, product development, technology transfer, telecommunications, data sharing, complex procurement, product distribution and sales, contract manufacturing, and a wide variety of patent, trademark and copyright licenses. He offers significant international experience, including, intellectual property holding companies, export control and international intellectual property issues. Pete also regularly handles intellectual property issues in connection with public and private company mergers and acquisitions, including due diligence and licensing issues. The value of several of these transactions has exceeded one billion dollars.

Pete has been materially involved in a number of high profile intellectual property disputes in a variety of industries, including the semiconductor, telecommunications, computer networking, automotive, clean- tech and health sciences industries. In 2005, he wrote significant portions of the appeal brief filed on behalf of AWH Corporation in the United States Court of Appeals for the Federal Circuit en banc proceedings, Phillips v. AWH Corporation, concerning the procedures that should be used to determine patent claim construction. Most recently, Pete successfully represented a third party semiconductor tooling manufacturer in connection with a government ITC investigation seeking to ban the importation of hard drives into the United States.

As a registered patent attorney, Pete counsels clients on patent matters, including, infringement, validity, and pre-litigation issues. While at U S WEST, Inc. he was responsible for managing over 1500 trademark applications and registrations in 62 countries and all trademark opposition and litigation proceedings.


Primary Areas of Practice: Corporate Law

Law School/Graduate School: Yale University and Columbia Law School

Bio: Ray Ferrell is the Executive Vice President General Counsel and Corporate Secretary of DexYP. Mr. Ferrell provides legal services and advice regarding digital/I.P. transactional matters, sales/marketing, securities, general corporate, board-related matters, M&A, employment, compliance, litigation, and public policy. He maintains particular focus on digital issues, and works with his business partners to enhance and create high-performance digital products and services for advertisers and consumers.  Prior to DexYP, he was Senior Counsel – Vice President in the American Express General Counsel’s office for more than eight years. Prior to joining Amex, he worked in private practice in New York City and New Jersey, specializing in corporate securities, technology law, and financial services work. Ray is a graduate of Yale University and Columbia Law School.

Professional Memberships:

  • American Bar Association Business Law Section – Cyberspace Law Committee
  • National Bar Association
  • Vice-Chair Board of Directors of Medical City Las Colinas
  • Board of Directors of Dallas Zoo
  • Yale Alumni Association of Dallas
  • Dallas Assembly


Primary Areas of Practice:               

Intellectual Property Litigation

Law School:                                       

Northwestern University School of Law, J.D., 1992; Phi Delta Phi and lota Sigma Pi  

Work History:

Holland & Knight LLP; Orrick, Herrington & Sutcliffe LLP; Kaye Scholer LLP; Frommer Lawrence & Haug LLP                                      

Professional Memberships:             


American Bar Association 

New York State Bar Association

District of Columbia Bar  

New Jersey State Bar Association

Committee on Patent, Trademark and Copyright Law and Intellectual Property Section

Japan Federation of Bar Associations

Daini Bengoshi Kai

Taipei Bar Association  

Los Angeles Intellectual Property Law Association

New York Intellectual Property Law Association

American Intellectual Property Law Association

Southern California Chinese Lawyers Association

American Chemical Society

National Asian Pacific American Bar Association


Primary Areas of Practice:
Paul H. Arne is the Senior Partner and Chair of the Technology Transactions Practice at Morris, Manning & Martin. Mr. Arne founded and chairs the firm’s Open Source and Social Media practice groups. He represents technology companies, from technology startups to large end users, with a particular emphasis on strategic relationships, outsourcing matters, international transactions, open source software, software as a service, internet, privacy, university technology transfer, and revenue recognition issues.

Law School/Graduate School:
Duke University, J.D., 1981
University of North Carolina, B.S., 1978

Professional Memberships:
American Bar Association (Member, Sections on Intellectual Property Law; Science and Technology; Business Law)
State Bar of Georgia, admitted 1981
Immediate past Chair of Privacy & Technology Section;
Member, Corporate and Banking, Corporate Counsel, and Intellectual Property
Georgia CIO Leadership Association (Member, Board of Underwriters)
Lawyers Club of Atlanta

 


Sean is an attorney and pharmacist with over fifteen years of legal experience.  As Vice President and Head of Legal Strategy & Operations for Teva Pharmaceuticals, Sean is a member of the legal leadership team, responsible for leading strategic initiatives and global legal operations. 

Previously, Sean served in various roles focusing in patent litigation and IP operations. Before transitioning into law, he practiced as a pharmacist in hospital and academic settings, including as Clinical Assistant Professor and Director of Pharmacy at Rutgers University.  Sean received his B.S. and Pharm.D., from Rutgers University – Ernest Mario School of Pharmacy, and his J.D. from the William and Mary School of Law.


David Rabinowitz is co-head of the Litigation Department and a member of the Intellectual Property Department and Legal Ethics and Law Firm Practice Department at Moses & Singer, where he has been a partner since 1985.  He handles civil commercial cases of all kinds and in particular both litigates and advises clients on financial industry and intellectual property matters.  He is a frequent speaker on ethical issues concerning negotiations.  Mr. Rabinowitz has appeared in state and federal courts and in arbitrations throughout the United States.

Mr. Rabinowitz has lectured and participated on panels before the Bar Association of the City of New York, the American Bar Association, the Practicing Law Institute, the Institute of International Banking Law, the Copyright Society of the United States, the New Jersey Intellectual Property Law Association, the National Association of Recording Manufacturers, the Licensing International annual convention, the Professional Education Broadcast Network and the Massachusetts Software Council.  He has taught Copyright Law at Seton Hall Law School.  He is a member and former trustee of the Copyright Society of the United States.  Mr. Rabinowitz has published numerous articles which have appeared in Advertising Age, Entertainment Law Reporter, The Entertainment Publishing and the Arts Handbook, The Bulletin of the Copyright Society of the United States American Lawyer's Corporate Counsel Magazine and The Practical Lawyer.

Education

  • Columbia University School of Law, J.D., 1976, Harlan Fiske Stone Scholar, 1973-1976
  • Massachusetts Institute of Technology, S.B., 1972

Articles

  • "New York Resolves In-House Counsel Bar Admission Problem"
  • "Up Close and Professional with New York’s Engagement Letter Rules"
  • "Communications Decency Act"
  • "Non-Traditional Fee Arrangements and Doing Business with Clients"
  • "Everything You Ever Wanted To Know About the Copyright Act Before 1909"
  • "Web Site Story 6-Breakaway Employees Beware"
  • "Web Site Story 5-Emerging Limits to Out-of-State Jurisdiction over Web Sites"
  • "Web Site Story 4-Nationwide Internet Jurisdiction is not Ended by Blue Note"
  • "Web Site Story 3-The Emerging Tort of Domain Name Infringement"
  • "Web Site Story 2-Finding Yourself Subject to Jurisdiction Far, Far Away"
  • "Web Site Story-A Legal Primer for Web Site Owners and Designers"
  • "Copyright Preemption: New York State's Erroneous Interpretation"
  • "Copyright and Trademark Infringement: Current Techniques for Plaintiffs and Defendants"

Presentations – (last 10 years - most recent year for series)

  • 2017 Practicing Law Institute program, "Ethics for the Negotiating Lawyer"
  • 2017 Practicing Law Institute program, "Advanced Licensing Agreements"
  • 2016 Institute of International Banking Law Standby and Guaranty Forum and Law Summit, “Recent Letter of Credit Cases”
  • 2016 Practicing Law Institute program, "Understanding The Intellectual Property License"
  • 2016 New Jersey Intellectual Property Law Association, “Cases in Negotiation Ethics”
  • 2015 Practicing Law Institute program, “Outsourcing 2015: Sourcing Critical Services”
  • 2014, 2012, 2007 Copyright Society of the U.S.A., “Show Me the Money: The Essentials of Valuation of Copyrights in Transactions and Litigation,” "Basic Ethics for the Negotiating Lawyer," "Non-Traditional Fee Arrangements and Doing Business with Clients"
  • 2013 National Association of Recording Manufacturers, “Negotiation Ethics”
  • 2010 Professional Education Broadcast Network, “Ethics in Negotiations”
  • 2008 Licensing International - "Winning Ethics in Licensing"
  • 2007 Practicing Law Institute program, "Internet Law Institute"
  • 2007 CMJ Music Marathon and Film Festival, “Games Without Frontiers”
  • 2001-2004 Adjunct Professor, Copyright Law, Seton Hall Law School


Gail Zarick serves as IP Counsel for the Security Division of IBM, providing advice and counsel on all IP issues pertaining to an array of IBM Security software and hardware product and service offerings. In other assignments at IBM, she has managed a team of IP attorneys responsible for multiple IBM brands as well as an IP law department responsible for supporting IBM’s Research laboratories and CHQ organizations. She has trained and managed teams of attorneys to conduct legal due diligence for patent sales and large divestitures. She has also negotiated patent assignments and licenses in IBM’s Corporate licensing group and has managed patent litigations in IBM’s Corporate Litigation department. Before joining IBM, Gail practiced intellectual property law at Pennie & Edmonds LLP in New York. 

Admitted to the bar in the State of New York
Registered to practice before the U.S. Patent & Trademark Office

JD, Pace University School of Law
MSE, University of Pennsylvania 
BSE, Princeton University

 


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

Joe specializes in structuring & negotiating tech/IP-centric deals (technology transactions, JVs, patent licensing/sales, standards body issues, IP aspects of M&A) and in the use of IP as strategic business assets. He has led hundreds of deals involving billions of dollars in the computer, electronics, entertainment, consumer goods, healthcare, energy & manufacturing industries. Reflecting these diverse experiences, Joe often helps clients in cross-industry deals (e.g., IoT, SaaS & “big data” deals) with companies outside their own industry.

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

Joe teaches the "Patent and Technology 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 patent & licensing 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 is recognized as 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 all of California -- and the only one from a boutique (non-AmLaw 100) law firm. IAM states: “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 was also profiled in “Marquis Who’s Who in American Law”, “Marquis Who’s Who in America” and “Marquis Who’s Who in the World”.

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.

Contact Information: Joseph Yang, PatentEsque Law Group, LLP, 2440 Sand Hill Road, Suite 400, Menlo Park, CA 94025, joe@patentesque.com, 650-233-0822

 


Kenneth M. Kaufman is Senior Counsel in the Washington, D.C. office of Manatt, Phelps & Phillips, LLP.  His practice focuses on copyright, entertainment and media law, content and music licensing, digital media, and sports law.  He represents a wide range of clients including international media and publishing companies, television networks and distributors, music publishers, digital media and technology companies, telecommunications companies, photographers, visual artists, copyright licensing companies, software publishers, Broadway theatre producers, private equity firms, foundations, composers, recording artists and authors.

Ken is a recognized authority in the fields of copyright and entertainment law.  He was named the Washington, D.C. Copyright Law “Lawyer of the Year” in 2014 by The Best Lawyers in America (where he is currently listed in the practice areas of copyright law, intellectual property litigation, entertainment law-music, and entertainment law-motion pictures and television).  He has also been recognized by Chambers USA: America’s Leading Lawyers for Business, Washington, D.C. Super Lawyers, Washingtonian Magazine’s Best Lawyers, and Legal Times.  For several years he was a Visiting Lecturer at Yale Law School, teaching a course on copyright, entertainment and Internet law, and has taught a course on copyright law at George Washington University Law School.  In 2016 and 2017 he was an Advanced Leadership Initiative Fellow at Harvard University, where he has spoken on coalition building in education for gender equality.

Ken has extensive experience as both in-house and outside counsel in the entertainment and communications industries.  Immediately prior to joining Manatt, he was a partner at Skadden, Arps, Slate, Meagher & Flom LLP.  Previously, he served as Senior Vice President, General Counsel of Showtime Networks Inc. in New York; as Senior Vice President, Corporate Affairs and General Counsel of PolyGram Records, Inc. in New York; and as General Counsel of The John F. Kennedy Center for the Performing Arts in Washington, D.C.  In two of those positions, he was the first in-house attorney and organized the in-house legal department.  Previously, he served as Assistant Counsel of a U.S. Senate Judiciary Subcommittee.

Ken co-chairs the annual PLI conference on Counseling Clients in the Entertainment Industry and serves on the Governing Committee of the ABA’s Forum on the Entertainment and Sports Industries and on the Planning Committee for the annual Stanford Digital Economy Best Practices Conference.  He teaches an annual course on “Copyright Law and Litigation” for the D.C. Bar, is a member of the Board of Directors of Washington Area Lawyers for the Arts, and has served as a Trustee and Chair of the Washington, D.C. Chapter of the Copyright Society of the U.S.A.  He is a graduate of Harvard College (magna cum laude) and Yale Law School (where he was an Editor of the Yale Law Journal), and is admitted to practice in New York, California and the District of Columbia.

 


Oliver Herzfeld oversees all aspects of the Legal department of Beanstalk, a leading brand licensing consultancy. Prior to joining Beanstalk, Oliver was chief legal officer of w-Technologies, a leading wireless software firm, and general counsel of The Capital Markets Company, a technology solutions firm focused on financial services. His responsibilities included commercial, intellectual property and employment law, as well as dispute resolution. Previously, Oliver served as functional general counsel of intellectual property, technology, and licensing at J.P. Morgan & Co. Incorporated. Oliver began his legal career as an associate at Sullivan & Cromwell where he worked on a broad range of corporate and securities matters.

Oliver earned a bachelor of arts, cum laude, Phi Beta Kappa, from New York University. He earned a JD with honors from Columbia University School of Law.

Oliver is deeply involved in several social service organizations in his community, mediator for the MediateArt program of Volunteer Lawyers for the Arts, and performs pro bono legal work for not-for-profit organizations.



Practice Areas:
Intellectual Property Transactions and Strategies, Trademark and Copyright

Work History: 
Jessica L. Rothstein is a senior counsel in the firm’s Business Law Department and a member of its Intellectual Property Group. She concentrates her practice in the counseling, protection and licensing of intellectual property rights, with an emphasis on the worldwide protection of trademarks. Ms. Rothstein also advises clients as to a broad range of transactions relating to intellectual property rights, including research and development agreements, noncompete, confidentiality and non-disclosure agreements.

Prior to joining Goodwin Procter, Ms. Rothstein worked for the intellectual property firms Darby & Darby and Merchant & Gould.

Education: 
J.D. Benjamin N. Cardozo, 1998
M.A. University of Kent at Canterbury, 1993 

Professional Memberships:
Ms. Rothstein is a member of the New York Bar Association, Colorado Bar Association, and International Trademark Association.


Primary Areas of Practice: Patent Licensing, Counseling and Prosecution; Copyright; Trademark

Law School: Notre Dame Law School

Work History: Prior to joining URVentures, the technology commercialization arm of the University of Rochester, Mr. Catlin provided legal and executive management guidance at Abbott Medical Optics (AMO), a subsidiary of Abbott Laboratories, for intellectual property, litigation and compliance matters.  During and prior to his time at AMO, he has worked in and with start-up companies in Northern and Southern California.  Before that, he was a patent attorney and litigator with Lyon & Lyon and Pennie & Edmonds.  He is also a former management consultant with Bain & Company.  He served in the U.S. Air Force and Air National Guard as an officer and Judge Advocate (JAG).

Professional Memberships: NY and CA Bars; Registered Patent Attorney (USPTO)



Jeremy is a highly experienced commercial lawyer recognised by the legal directories as one of the leading lawyers in England specialising in commercial agreements and related competition and IP matters. He was for many years head of the European commerce and technology practice at King & Wood Mallesons (previously SJ Berwin) before moving to Keystone Law earlier last year.

Keystone Law is an award winning new business model law firm with over 200 partner level lawyers.  It does not operate on a partnership structure but instead is structured along the lines of barrister’s chambers.  Despite being a little over ten years old it was ranked as one of the UK’s top 5 legal providers in last year’s Legal Week survey.

Jeremy is involved in a range of industries including consumer goods, food and beverages, manufacturing, technology, e-commerce, healthcare, retail, and hotels and leisure. He acts for a number of international household name clients.  He sits on the editorial board of LexisNexis (Reed Elsevier).

He has been described by the Legal 500 as someone of whom “clients cannot speak highly enough” and someone who “always wins the points that need winning”. The 2016 edition of Legal 500 describes him as having a “huge brain” and as someone who has a “superb legal analysis of issues” while offering “practical and robust solutions”.

He is recommended by Chambers, listed as a leading lawyer by European Counsel and Global Counsel, named as an expert in intellectual property and commercial law by Legal Business and listed as an expert in both intellectual property and life sciences by PLC Which Lawyer.

 



Jonathan is a New York entertainment, business, and technology attorney. During his career he has advised famous brands, government officials, and global corporations.

Jonathan’s experience includes being a senior executive of the Hearst Corporation where he provided legal counsel to its entertainment, technology, and media divisions, including Hearst Entertainment and King Features Syndicate.

During his time at Hearst, Jonathan served as Director of Legal Affairs and Secretary of the Board at SmartMoney, which was a Hearst and Dow Jones joint venture focused on software, data licensing, media content, and publishing products for the financial sector.

Prior to joining Hearst, Jonathan worked as a special advisor for the Japanese government at the Ministry of Education, Culture, Sports, Science, and Technology.

Jonathan's film industry experience includes executive producing and providing production counsel services for feature films and independent filmmakers. Jonathan regularly represents clients in all areas of entertainment and fine arts industry, including, producers, actors, models, musicians, authors, sculptors, and artists.

In addition to his growing his law firm, Jonathan is a co-founder of business ventures in the entertainment, fashion, and medical investment fund industries.


With over a billion dollars in patent deals under his belt, Mark Holmes is the founder and CEO of PatentBridge LLC, a privately held technology development firm in Silicon Valley that specializes in bringing to market select patented technologies covering extraordinary software and Internet-related breakthroughs. 

Mr. Holmes is the CEO and Co-Founder of RavenWhite Cybersecurity, Inc. which was selected as one of the top 10 security startups worldwide at the RSA Conference. He is also the Executive of Business Development for the DeCaf Co. which is creating the world’s first consumer instant decaffeination product.

Mr. Holmes has advised such technology savvy entities as Visa, Sony, Applied Materials, University of California at Berkeley as well as many startups startups and has been named every year to the IAM Strategy 300 – The World’s Leading IP Strategists.  He served as co-chair of the Silicon Valley Chapter of the Licensing Executives Society (LES) from 2006 to 2011.

He was the co-founder of a successful telecommunications startup which was sold in the late 1990s to a portfolio company of the Alabama state retirement fund (Retirement Systems of Alabama).

He lectures nationally on the pressing issues facing tech startup. In the past few years, he has spoken nationally over 50 times for such bodies as Renaissance Weekend, International Society for Optical Engineering (SPIE), PLI and other organizations.

He holds an engineering degree from Brown, is a member of the Institute of Electrical and Electronics Engineers (IEEE), IEEE Software Society and wrote the book PATENT LICENSING AND SELLING: STRATEGY, NEGOTIATION & FORMS.