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Intellectual Property Law Institute 2018


Speaker(s): Brian W. Brokate, Charan J. Sandhu, David Bender, Douglas A. (Chip) Rettew, Gail H. Zarick, Helen Hill Minsker, Jennifer Sklenar, Joel Wolfson, Jonathan E. Moskin, Joseph P. Lavelle, Lateef Mtima, Lindsey J. Canning, Mark S. Holmes, Orrie Dinstein, Richard M. Marsh, Jr., Robert Greene Sterne, Robert P. Taylor, Siegrun D. Kane, Steven C. Bennett, Victoria A. Cundiff, William A. Tanenbaum, William Sloan Coats
Recorded on: Oct. 1, 2018
PLI Program #: 219010

 Jennifer Sklenar is a partner in the Los Angeles office of Arnold & Porter. She focuses her practice on patent litigation, particularly in the medical device, biotech, computer hardware, software, and networking-related fields.  She has significant trial experience both in the district courts and in contested Patent Office proceedings.  Ms. Sklenar also counsels clients on patent prosecution matters and intellectual property issues associated with corporate transactions.

She has an undergraduate degree in biomedical engineering and is a registered patent attorney.  

She has been recognized as a Southern California Super Lawyer and one of the Top 250 Women in IP.
 



 


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. 


Brian Brokate is the head of Gibney, Anthony & Flaherty’s Intellectual Property Practice Group. He has extensive experience assisting brandowners in enforcement procedures to combat trademark and copyright infringement. Mr. Brokate focuses on anti-counterfeiting and anti-piracy and handles all stages of civil anti-counterfeiting and infringement litigation.

Mr. Brokate is an Advisory Board Member of the International Anti-Counterfeiting Coalition, Inc. (IACC). He is the Treasurer of the New York Task Force, a coalition of brand owners affected by counterfeiting. He also serves on the Tariff & Embargo Committee of the International Trademark Association (INTA). 

Recognized as an industry leader, Mr. Brokate is frequently quoted on trends in intellectual property law. He has also authored and co-authored numerous articles and publications and speaks before industry and trade associations on intellectual property law issues including infringement, anticounterfeiting, enforcement strategies and trade dress.


Joseph Lavelle is an experienced patent lawyer, focusing primarily on the preparation and trial of patent infringement cases.

Joseph also has handled a number of successful appeals to the Court of Appeals for the Federal Circuit.

Joseph has more than 25 years of experience litigating patent cases, including many bench and jury trials. He has litigated in most areas of technology, including semiconductors, computers, computer software, telephony, Digital Signal Processing, telematics, waveform encoding, automotive technology, financial services, biotechnology and many others.

In addition to federal district court proceedings, Joseph has tried a number of Section 337 proceedings before the US International Trade Commission (ITC), as well as handled cases before the US Court of Federal Claims and appeals to the Court of Appeals for the Federal Circuit. He also is licensed to practice before the USPTO and has successfully handled interference proceedings

Joseph has vast experience handling litigation and counseling matters at the intersection of competition laws and antitrust laws. He has participated in many of the leading matters in the area of standard setting. Also, he has represented clients in patent-antitrust matters before the FTC and the Antitrust Division of the Department of Justice.


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).


Orrie Dinstein is the Global Chief Privacy Officer at March & McLennan Companies. He has global responsibility for data protection, and he works closely with the Legal & Compliance, IT and Information Security teams, as well as other functions, to establish policies, procedures, processes and tools related to privacy and data protection matters.  Prior to joining Marsh & McLennan, Orrie was the Chief Privacy Officer at GE Capital. 

Orrie received an LL.M. degree in intellectual property from NYU School of Law and is a graduate of the Hebrew University of Jerusalem School of Law.  He is a member of the New York State Bar and the Israel Bar. He is a Certified Information Privacy Professional (CIPP) and a frequent speaker on privacy, security, technology and social media matters.


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. 


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.


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.  Lindsey also has a particular focus on privacy and cyber-security, helping clients to navigate the increasingly complex regulatory landscape in this area.   

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 in NYC working for her previous firm.


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.

 


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

 


Helen Hill Minsker provides assistance to clients concerning a broad range of issues arising under trademark and unfair competition laws, as well as copyright law. Her experience in these fields of law includes counseling, prosecution and registration of applications before the U.S. Patent and Trademark Office and the U.S. Copyright Office, internet, licensing, enforcement, oppositions and cancellations, and litigation in the courts. Helen also counsels clients in protecting their trademark portfolios internationally.

Helen is active in a number of professional organizations. She has held leadership roles with national and international IP associations, including serving on both the INTA Board of Directors and the AIPLA Board of Directors (as a Board member and as Treasurer). From 2006 – 2009, Helen served on the Editorial Board of the INTA publication The Trademark Reporter. Over the years, Helen has chaired various committees for these associations and others, such as the ABA IP Law Section’s 
Committee on Franchising, and she served as co-Chair of INTA’s Annual Meeting in Amsterdam in 2003. Helen also was chair of the Bar Association of DC’s Patent, Trademark & Copyright Law Section.

Helen received her undergraduate degree (A.B.) in political science from Vassar College, and her J.D. from George Washington University. She also spent a year studying at the London School of Economics and Political Science. She is admitted to the Bar of the District of Columbia Court of Appeals and the Bar of the Supreme Court of Illinois, as well as several courts, including the United States Supreme Court and the Court of Appeals for the Federal Circuit.

From 2001-2011, Helen served as an adjunct professor of law at Georgetown University, where she co- authored and taught a course on intellectual property pretrial litigation skills. She also is a frequent lecturer in continuing legal education programs, and is a former Contributing Editor/Trademarks for the Federal Circuit Bar Journal. Helen has been recognized in Managing Intellectual Property’s “IP Stars” list of “Top 250 Women in IP” since 2013, and recognized in World Trademark Review 1000’s list of “World’s Leading Trademark Professionals” since 2012.

Helen practices in the Chicago office of Banner & Witcoff, Ltd.

 


Jonathan E. Moskin is a partner and intellectual property lawyer with Foley & Lardner LLP. He has acted as lead trial counsel and otherwise litigated trademark, copyright and patent cases, as well as contract disputes, privacy matters, false advertising and right of publicity cases in numerous federal, trial and appellate courts. He is a member of the IP Litigation, Security & Information Management Practice groups.

Prior to joining Foley, Mr. Moskin was a partner at White & Case LLP and Pennie & Edmonds, LLP, where he was chair of the Trademark/Copyright Group. He has successfully represented major companies in intellectual property matters, including Acco Products; Aristocrat Technologies; Bacardi & Co.; Booking.com, Cablevision; Calvin Klein; Cannondale Bicycle Corp.; Citigroup; Caesars Entertainment; Diageo; Deutsche Bank Trust Co.; Emjoi, Inc.; Field & Stream Holdings, LLC; Games Workshop; Hasbro; Herman Miller, Inc.; Ingersoll-Rand; Jim Beam Brands; JP Morgan & Chase Co.; Kayak Software Corp.; Novartis; Phillips Van Heusen; Priceline; QVC; Rambus, Inc.; Stiefel Laboratories; Swiss Army Brands, and Valentino.


Rick Marsh helps clients grow and protect their intellectual assets. His practice focuses on various specialties in patent law, with particular expertise in patent eligibility, post-grant proceedings, patent prosecution, patent validity and infringement evaluations, and patent litigation:

Rick led the ABA’s Post-Alice Task Force for over two years, and routinely publishes articles and speaks at national conferences on Section 101 issues. Rick also was a prominent presenter at the USPTO’s 2017 national roundtable on patent subject matter eligibility. Rick assists clients with patent eligibility issues for both prosecution and litigation.

Rick graduated magna cum laude from the University of Michigan Law School in 2009. After graduation he served as a law clerk to the Honorable William C. Bryson at the Court of Appeals for the Federal Circuit.  Rick is a partner at Faegre Baker Daniels.

 

 


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.    


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 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 startups. 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.