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IP Issues in Business Transactions 2018


Speaker(s): Andrew Baum, Angela J. Grayson, CIPP/US, CLP, Carolyn H. Blankenship, Debra A. Dandeneau, Eleanor M. Lackman, Eric A. Prager, Gail H. Zarick, Jeffrey D. Neuburger, Jeffrey D. Osterman, Jim Lennon, Joel Wolfson, Jonathan M. Seiden, Keith A. Zullow, Kenneth K. Cho, Kim Youngberg, Maria A. Scungio, Marta E. Delsignore, Ph.D., Melvin C. Garner, Norma Castaneda, Ricardo P. Fischer, Steven I. Weisburd, Zhun Lu
Recorded on: Jan. 8, 2018
PLI Program #: 218860

Debra A. Dandeneau is co-chair of Baker McKenzie's Global Restructuring and Insolvency Group and chair of its North America Restructuring and Insolvency Group. Her practice focuses on business reorganizations and debtor and creditors’ rights.

Ms. Dandeneau has been ranked by The Best Lawyers in America 2011-2018 in the practice areas of Bankruptcy and Creditor-Debtor Rights/Insolvency and Reorganization Law, and Litigation-Bankruptcy. She has also been recognized by Legal 500 US for Municipal Bankruptcy and Super Lawyers 2006-2017 for Bankruptcy. Super Lawyers has also named Debra among the 2017 Top Women for Bankruptcy Business in New York.

Ms. Dandeneau has dealt with a variety of entities experiencing financial distress, as well as a range of industries. Over the course of her career, her work has included representations in the real estate, manufacturing, power generation, healthcare, municipal, retail, and service sectors.

Ms. Dandeneau's professional honors include:

  • "Top Women" for Bankruptcy: Business in New York, Super Lawyers, 2017
  • "Super Lawyer" in Bankruptcy, Super Lawyers, 2006-2017
  • Pro Bono Publico Award, The Legal Aid Society, 2008
  • Recommended Lawyer in Municipal Bankruptcy in the US, Legal 500 US, 2015
  • "Best Lawyer" in Bankruptcy and Creditor-Debtor Rights/Insolvency and Reorganization Law and Litigation, Best Lawyers in America, 2011-2018


Eleanor M. Lackman is a Partner at Mitchell Silberberg & Knupp LLP, where she focuses on copyright and trademark litigation, licensing, and trademark prosecution and brand protection.  With a focus in the media, entertainment, sports, and technology industries, she splits her time between the firm’s New York and Los Angeles offices.

Eleanor graduated from Fordham University School of Law in 2003.  After graduation, she was affiliated with major international law firms and then spent eight years as partner at a recognized entertainment and IP boutique before joining MSK in 2019. 

Eleanor has been recognized by Chambers USA as a leading copyright and trademark attorney every year for the past six years.  She also has been named by Managing IP as one of the top 250 women IP lawyers worldwide and one of “Hollywood’s New Leaders” by Variety Magazine.  Super Lawyers has repeatedly named her as one of the top 100 lawyers in the New York metro area. 

 

 



Eric A. Prager, a partner in the firm’s intellectual property practice group, assists clients with all types of intellectual property issues. His practice involves contentious and non-contentious work, including strategic counseling, due diligence of IP assets, sophisticated licensing and agreement work, and litigation. He has litigated copyright, false advertising, patent, trademark and trade secret cases in courts around the country.

 With significant experience in the area of digital content distribution and protection, Eric represents one of the Big Three record companies and a major online subscription music service in their digital content matters. 

 Eric assisted in drafting several “digital agenda” copyright treaties for the World Intellectual Property Organization, including the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.  He has also served on the U.S. Patent and Trademark Office Public Advisory Committee for Trademark Affairs.

 Eric serves as an adjunct professor at Fordham Law School in New York co-chairs the New York version of this PLI program.


Jeffrey Osterman is a partner in Weil’s Technology & IP Transactions practice and concentrates on matters with deep commercial or technical complexity. He has had extensive experience with pure patent licensing, technology transfer, outsourcing, technology integration, content licensing and merchandising.

Mr. Osterman recently advised Sanofi in its worldwide exclusive licensing agreement with MannKind Corporation to develop and commercialize Afrezza (insulin human) Inhalation Powder; Verizon in connection with the acquisition of cloud TV technology from Intel; Lenovo in connection with the acquisition of Motorola Mobility from Google; and Mubadala and Sony/ATV in connection with the proposed $2.2 billion acquisition of EMI Music Publishing. Mr. Osterman also regularly represents Panasonic in connection with a wide variety of transactional matters involving consumer electronics and GE in connection with the IP aspects of numerous corporate transactions. He also counsels clients with respect to their rights under existing agreements and the development of new technologies.

Mr. Osterman lived in Japan from May 1997 to May 1998 where he worked in-house on loan to the headquarters of Panasonic Corporation.

Mr. Osterman is a member of the State Bar of New York and is admitted to practice before the United States Patent and Trademark Office. He has appeared on national television and lectured on intellectual property, electronic privacy and e-commerce throughout the United States and on U.S. intellectual property and contract law in Japan. He is also the Vice Chair of the IP Licensing Committee of the Intellectual Property Owners’ Association and is active in the open source legal community.

Mr. Osterman has received a number of awards for his expertise including being ranked by Chambers USA and Chambers Global as a national and global leader in the technology and outsourcing fields and by Legal 500 as a leading lawyer in the field of intellectual property. He is also recognized as an “IP Star” by Managing Intellectual Property’s IP Stars for Copyright, Counselling and Licensing, by Best Lawyers in America for Information Technology Law and in IAM Patent 2014.

Education

Harvard Law School (J.D., cum laude, 1995)

Cornell University (B.A., cum laude, 1992)


Keith Zullow, a partner in Goodwin's IP Litigation Group, is a U.S. registered patent attorney with significant trial experience in chemical and pharmaceutical patent litigation. He is also experienced in interference practice and trade secret litigation. Mr. Zullow has worked on cases in various federal district courts throughout the United States, on appeals before the U.S. Court of Appeals for the Federal Circuit and other circuit courts, and is lead counsel on proceedings before the Patent Trial and Appeal Board.

Education

  • J.D., New York University School of Law, 1994
  • B.S., Chemical Engineering, Cornell University, 1987 (with distinction)

Admissions

Mr. Zullow is admitted to practice in New York, as well as before the U.S. Supreme Court, the U.S. Court of Appeals for the Federal Circuit, and the U.S. District Courts for the Southern and Eastern Districts of New York. He is also admitted to practice before the U.S. Patent and Trademark Office.


Marta Delsignore, a senior partner in Goodwin's IP Litigation group, practices in the field of patent law. Recognized as a “Life Sciences Star” by Euromoney’s LMG Life Sciences, she focuses primarily on providing patent opinions and related client counseling, and performs due diligence reviews of patent portfolios.

In addition, Dr. Delsignore has represented clients in post patent issue proceedings before the United States Patent and Trademark Office Patent Trial and Appeal Board (PTAB). Her experience in these proceedings includes bringing patent challenges, as well as defeating patent challenges at the institution stage in inter partes review (IPR) and post grant review (PGR) proceedings.

She also has extensive experience in patent application preparation and prosecution, litigation and licensing in the fields of pharmaceuticals, chemistry, biochemistry and chemical engineering, including textile fibers and treatment agents, hard surface coatings, household cleaning products, cosmetics, metal processing, catalysts and polymers. With advanced chemistry degrees from Yale and Rutgers, her legal expertise is complemented by a strong science background. She is also co-inventor of four U.S. patents.


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


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.

 


 


While many intellectual property lawyers can claim a background in science, few can claim a previous career in geology. Jim Lennon sees this as a competitive advantage. As geologists must be thoroughly trained in a range of disciplines — especially chemistry, physics, and biology — this grounding gives Jim an unusually multi-dimensional, “big picture” perspective that he brings to both patent transactions and litigation. His clients in the pharmaceutical, chemical, and materials industries have long recognized his ability to absorb a wide variety of esoteric scientific concepts, and to interpret those concepts for non-technical audiences.

To Jim, a client’s IP strategy can only be effective in the context of the company’s overall business objectives. As patent law continues to be redefined, often by the Supreme Court, he advises clients on all their available options, sometimes even eschewing patents in favor of other forms of protection. He views litigation similarly, as a strategic decision whose ramifications — legal, financial, and reputational — must be thoroughly weighed for business efficacy, and either pursued or settled accordingly.

Jim often acts as Delaware co-counsel in major patent litigations, yet his role is anything but passive. Judges in the United States District Court for the District of Delaware place a premium on both brevity and clarity in written materials, and Jim is known as a savvy reviewer of his co-counsel’s written submissions. He regularly provides valuable insights into the workings of the court, strengthening the work product for maximum impact and optimal results.


Angela J. Grayson, CIPP/US, CLP is an accomplished nationally recognized lawyer, speaker, and author.  She is Principal Member and Founder of Precipice IP PLLC.  PRECIPICE is an award-winning consultancy and technology law boutique with expertise in patent, trademark, copyright, and data law. PRECIPICE helps entrepreneurs and technology-focused businesses protect their products, brands, designs and data. 

Prior to founding PRECIPICE, Ms. Grayson was Associate General Counsel, Intellectual Property and Patent Operations Lead at Walmart Stores, Inc.  Before joining Walmart, Ms. Grayson served as in-house patent counsel for several Fortune® 100 companies, and she has prior experience as a Patent Examiner for the United States Patent and Trademark Office.

She is committed to advancing Diversity and Inclusion (D&I) in the legal profession, and is equally committed to STEM (Science, Technology, Engineering, and Math) initiatives that focus on better preparing our youth to compete. She is the immediate past Board Chair of the Minority In-House Counsel Association (MIHCA), and previously served on the Board of Trustees for the American Intellectual Property Law Education Foundation (AIPLEF).

Ms. Grayson is a Director on the Board of the Patent Pro Bono Advisory Council, and is past Chair of the American Intellectual Property Law Association (AIPLA) Special Committee on Pro Bono. Ms. Grayson is the current Vice Chair of AIPLA Diversity in IP Law Committee, and she serves on the Executive Committee of the Intellectual Property Law Section of the Mississippi Bar.

Ms. Grayson serves on the Women’s Empowerment Center Executive Advisory Council.

She was most recently appointed to the Board of Directors for the Rogers-Lowell Area Chamber of Commerce. 

In her free time, Ms. Grayson enjoys serving her community and spending time with her husband Patrick and their two cocker spaniels, Ari and Archi (aka the Dynamic Duo).


Carolyn H. Blankenship is General Counsel, Innovation & Product for Thomson Reuters.  She joined Reuters in 2001 and before that held a variety of IP-related positions as both in-house and outside counsel, including stints at Skadden, Arps and Priceline.com.

Carolyn’s practice focuses on fostering innovation and protecting those innovations throughout the company.  In addition, Carolyn oversees all patent litigation and supports the IP aspects of the company’s M&A activity. 

As an undergraduate, Carolyn attended the Massachusetts Institute of Technology for two years and went on to earn a B.A. in Biology from Harvard College.  She has a J.D. from Arizona State University College of Law and clerked for the Hon. Noel Fidel of the Arizona State Court of Appeals.


Gail Zarick currently serves as IBM’s Counsel for Regulatory Compliance, Source Code and Data Security, advising on and negotiating transactions in which the security of data and code is at issue.  She also co-leads IBM’s Armonk, New York pro bono program for IBM lawyers.  Gail previously served as IP Counsel for IBM’s Security Division, and she has managed teams of IP attorneys who support various IBM business units, Research labs, and CHQ organizations. In other roles, she has negotiated patent assignments and licenses, managed patent litigations, and managed due diligence efforts for patent sales. 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

Member, NYIPLA

 

JD, Pace University School of Law

MSE, University of Pennsylvania

BSE, Princeton University


Jonathan Seiden is an attorney and business affairs executive with over 15 years of experience sourcing, negotiating, and drafting industry-specific agreements in the fields of entertainment and media.

As of March 2019, Mr. Seiden serves as Vice President Associate General Counsel, IMG Licensing and the Miss Universe Organization.  Mr Seiden is responsible for counseling IMG and its clients on legal matters, including live events, music, sponsorships, content and intellectual property licensing, digital distribution and merchandising.

From November 2014 until June 2016, Mr. Seiden served as Senior Vice President, Business and Legal Affairs at SFX Entertainment, Inc. (“SFX”) and Executive Vice President of Beatport LLC (“Beatport”). In his capacity as SVP for SFX, Mr. Seiden was responsible for counseling SFX and its live entertainment and media companies with respect to entertainment law matters, including, without limitation, live events, brand integration and sponsorship deals, new media and content deals, music publishing and master recording agreements, and licensing.

Prior to joining SFX in 2014, Mr. Seiden was Vice President, Intellectual Property and Legal Affairs for CORE Media Group Inc. (“CORE Media”) from 2006 – 2014. In his capacity as Vice President for CORE, Jonathan counseled CORE and its subsidiaries, namely 19 Entertainment and Sharp Entertainment (and previously Elvis Presley Enterprises and Muhammad Ali Enterprises), with respect to intellectual property and entertainment law matters, including, without limitation, the acquisition of intellectual property content, character and merchandise licensing, music publishing, master recording agreements, intellectual property maintenance, enforcement, and litigation.

Prior to joining CORE in 2006, Jonathan was a member of the Intellectual Property and Technology Group at Skadden, Arps, Slate, Meagher & Flom LLP in New York primarily focusing on intellectual property acquisitions and licensing.

 

Education

University of Pennsylvania Law School, J.D., 2001

Cornell University, Bachelor of Arts, 1998


Kenneth Cho is a partner in Wiggin and Dana’s Litigation Department and Intellectual Property Practice Group in New York specializing in cross border dispute resolution, intellectual property litigation and licensing, IP asset management and valuation, and counseling matters.

Ken has represented international clients in the fields of cryptocurrency, semiconductor and OLED manufacturing, telecommunications and mobile telephony, biomedical devices, optical disc storage technologies and the like.  Ken’s experience is international in scope and has also spanned Europe and the Far East.  Ken has worked overseas as a U.S. attorney at South Korea’s most prestigious law firm; spent about a decade working “in-house” in the Intellectual Property and Standards group of Philips Electronics and as a patent assertion attorney for AT&T Corp. specializing in offensive patent assertion and licensing matters.

Ken has served on the Board of Directors of a number for professional associations including the American Intellectual Property Law Association (AIPLA) from 2013-2016, the International Association of Korean Lawyers (also past President), and the Korean American Lawyers’ Association of Greater New York.  Ken is a trained mediator through the New York State Office of Court Administration.

Ken earned his J.D. from Rutgers School of Law and his B.S.E.E. from Rutgers College of Engineering. Ken has been recognized by IAM Patent 1000 – The World’s Leading Patent Professionals; Who’s Who Legal: Patents; Managing Intellectual Property: Named an “IP Star”; and IAM Licensing 250 as one of the world’s leading patent and technology licensing practitioners.


Maria Scungio is based in the firm’s New York office and has more than 20 years of experience advising on trademark, copyright and design rights—including protection, enforcement and transactional matters—for well-known brands.

Maria’s practice includes counseling clients in the fields of skincare, apparel, footwear, jewelry, food and beverage, pharmaceuticals, nutritional products, tobacco and e-cigarette products, and music and entertainment publishing.  She advises on strategic issues affecting the exploitation, enforcement, acquisition, divestiture and realignment of intellectual property rights.  She also provides counsel on trademark availability, bringing counterfeit and infringement actions, and initiating opposition and cancellation actions.

Maria has partnered with clients to serve as interim in-house intellectual property counsel during corporate transitions.  She has litigated cases before federal courts and the Trademark Trial and Appeal Board, acting for plaintiffs and defendants, involving trademarks for diverse consumer products and services.

Prior to joining Robinson & Cole, Maria served as co-chair of the Trademark, Copyright and Advertising Group at Locke Lord.  She began her legal career as a law clerk to the Honorable Jane A. Restani in the US Court of International Trade in New York.


Zhun Lu is a partner in the Wilmington, DE office of Drinker Biddle & Reath LLP and the firm’s Senior Director for Greater China Practice, advising clients on a broad range of IP and business matters in patent counseling, opinions, litigation, and prosecution, primarily in the areas of biotech, biomedical, pharmaceuticals, chemicals, telecommunications, computers, automobile diagnostic tools, and semiconductors.

Zhun is also experienced in corporate matters relating to Delaware business entities, governance, compliance, restructuring, IP management, technology transfer and licensing, international brand protection, IPO and M&A due diligence, commercial dealings, employment, and US antitrust class action litigation.

Zhun has been working with Greater China-based companies entering the US and helping them to expand and sustain their business interests, often acting as their outside general counsel.  He also helps US and other international companies operating and doing business in the Greater China marketplace.  He is an honorary member of the Chinese Intellectual Property Society and has been a frequent lecturer at law firms, universities, companies, and conferences in China, Japan, Korea, Singapore, and Taiwan.  Zhun presently serves as a Co-Chair of AIPLA’s IP Practice in the Far East Committee, after serving as a representative for AIPLA to the SIPO/U.S. Bar Liaison Council 2016 – 2018 and as a Co-Chair of AIPLA’s IP Practice in China Committee 2014 - 2015.

Zhun graduated cum laude from University of Quinnipiac Law School in 2002.  In his last year in law school, Zhun served as an intern for the Honorable Peter Dorsey, the former Chief Judge of the United States District Court of Connecticut.  Before attending law school, he was a post-doc fellow and then Associate Research Scientist at Yale University Medical School.  He obtained a Ph.D. in molecular biology from Auburn University.

 


Ricardo Fischer is the Trademark Practice Leader in the Washington, D.C. office of Arent Fox LLP specializing in international distribution and market entry counseling to companies operating in Europe, Latin America and the Caribbean, and to US companies entering those markets.

As the leader of the firm’s internationally recognized Trademark practice, and a dual civil and common law attorney who has practiced law in Latin America and the United States, Ricardo offers a unique perspective to help clients expand their businesses. 

Ricardo advises international brands on corporate, regulatory, and intellectual property matters including but not limited to negotiations of commercial and distribution agreements; analysis and settlement of distribution termination claims, license agreements, analysis, and risk assessment; product claims, labeling and advertisement restrictions; cases before national advertisement review boards; due diligence in the acquisition of tangible and intangible assets; an array of intellectual property issues including protection, enforcement, unfair competition, and regulatory licenses for research and development; and risk assessment on product claims, labeling, and advertisement restrictions.

Ricardo's diverse client base includes companies in the retail, fashion, food and beverage industries, such as Inditex, Zara, Massimo Dutti, Guru Denim, Mars and Juan Valdez Café.

Ricardo is admitted in New York and Venezuela. He is also admitted as a Special Legal Consultant by the District of Columbia Bar and is supervised by principals of the firm.

Ricardo is a member of the Executive Committee of the Interamerican Association of Intellectual Property (ASIPI) and previously chaired its Internet Committee. He has also served in various committees at the International Trademark Association (INTA).



Jeffrey Neuburger is a partner, co-head of the Technology, Media & Telecommunications Group, a member of the Privacy & Cybersecurity Group and editor of the firm’s New Media and Technology Law blog.

Jeff’s practice focuses on technology, media and advertising-related business transactions and counseling, including the utilization of emerging technology and distribution methods in business. For example, Jeff represents clients in blockchain implementations, cryptocurrency-related issues and online strategies associated with advertising, products, services and content. He also represents many organizations in large infrastructure-related projects, such as outsourcing, technology acquisitions, cloud computing initiatives and related services agreements.

In addition, Jeff represents clients in a wide range of privacy and data security matters, including the implementation of policies, the management of information, and responding to situations of potential unauthorized access to personally identifiable information.

Jeff is an Adjunct Professor at Fordham University School of Law teaching E-Commerce Law, and lectures extensively on a range of issues, including computer and e-commerce law, emerging technology developments, intellectual property, outsourcing, privacy and data security. He also is co-author of two books, Doing Business on the Internet and Emerging Technologies and the Law. Founder of the monthly newsletter, New Media, Technology and the Law, Jeff is Editor of Proskauer’s Technology, Media and Telecommunications blog. He also has served on advisory panels to Congress, and is regularly quoted by mainstream general and trade publications.

Prior to practicing law, Jeff began his career working in the information technology field. He completed General Electric Company’s two-year Information Systems Management Program and spent an additional four years in Information Systems Management at GE Capital. His undergraduate degree is in computer science and applied mathematics. Jeff has been recognized as a leading technology lawyer in various publications and directories. Jeff is currently a Trustee on the Board of the Educational Alliance.


Kim Youngberg is a transactional attorney in entertainment and advertising. As General Counsel at Screenvision Media, the second largest cinema advertising company in the US, she is in charge of all legal matters including negotiating deals with movie theaters and advertisers, structuring business development, marketing, research and promotions agreements, and securing and drafting independent film distribution agreements. Ms. Youngberg helps expand the company’s business into new social media platforms, beacon technologies, geo-targeted advertising, programmatic advertising, gaming, virtual reality, and influencers.

Prior to joining Screenvision Media, Ms. Youngberg served as the SVP of Business and Legal Affairs for Wind-Up Records, one of the largest independent record labels in the US, where she oversaw all legal matters for the company’s record label, several publishing companies, and a full-service merchandising company. Before joining Wind-Up, Ms. Youngberg was in private practice at Davis Shapiro & Lewit, a boutique music law firm, where she represented many superstar recording artists, producers and writers, as well as major and independent record labels and publishers. Right after law school she was an associate at Bermans, a firm of English barristers and solicitors, where she practiced in international litigation.  

Ms. Youngberg graduated from Fordham University School of Law, and has a BBA from the University of Michigan.


Steven Weisburd is a partner in Arent Fox’s Intellectual Property group, where he concentrates his practice in the areas of patent, trademark, copyright and computer law.

Steven represents a diverse roster of clients in technology, in areas including computers, image processing, communications, piezoelectrics, finance, surveillance, and musical instruments.

He has advised some of the largest international companies in negotiating licensing agreements involving hundreds of millions of dollars; litigating patent, trademark and copyright cases before the federal courts; and structuring and carrying out major licensing programs that resulted in the licensing of an entire industry. He also has extensive experience in patent and trademark prosecution matters.

Steven is an active lecturer on IP issues. He is currently the national chair for PLI’s nationally presented program
“Handling Intellectual Property Issues in Business Transactions” and was previously an instructor at the PLI Patent Bar Review course. He has presented lectures on topics such as litigation, intellectual property management and prosecution matters to national and international audiences.


A retired partner and intellectual property lawyer with Foley & Lardner LLP, Andrew Baum focused his practice on trademark, unfair competition, false advertising and copyright litigation, counseling, licensing and enforcement work on Internet domain names. Mr. Baum represented a broad cross-section of clients from the publishing, luxury goods, interactive entertainment, personnel staffing and home furnishings industries. He was a member of the firm’s Trademark, Copyright & Advertising and IP Litigation Practices and the Technology Industry Team.

Prior to joining Foley, Mr. Baum was a partner and managing principal with Darby & Darby P.C., where he represented major clients in trademark and copyright litigation, oversaw the management of international trademark portfolios, and supervised the intellectual property aspects of significant corporate transactions.

Representative Experience


Major cases include one in which he helped lead a team which defeated a $150 million damage claim for false advertising in a three-week jury trial, and successfully defended the verdict on appeal to the Eleventh Circuit. In 2013, Mr. Baum secured summary judgment dismissing a trademark infringement case brought against Foley’s client the New York Jets. In 2014, he argued and won the appeal before the Fifth Circuit.