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State of Exhaustion After Supreme Court's Impression Products v. Lexmark - What Impact on Structuring Sales and Licensing Transactions?


Speaker(s): Ira Jay Levy, Joseph Yang
Recorded on: Jun. 26, 2017
PLI Program #: 220072

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.

 


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

Joe specializes in structuring & negotiating tech/IP-centric deals (technology transactions, strategic alliances, patent licensing/sales, standards body issues, IP aspects of M&A) and in using IP as strategic business assets. He has led hundreds of deals involving billions of dollars in and across the information technology, electronics, entertainment, consumer goods, healthcare, energy, chemical & manufacturing industries. Reflecting these diverse experiences, Joe is often retained to “bridge the gap” in cross-industry deals (e.g., joint ventures, IoT, SaaS & “big data” deals) between companies whose industries historically didn’t interact with each other.

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

Joe teaches the "Technology and Patent Licensing" course at Stanford Law School, and has taught the “Patent Law and Policy” course at U.C. Berkeley School of Law. Joe is a long-time chair of the “Advanced Licensing,” “Advanced Patent Licensing” and “Understanding the IP License” courses at the Practising Law Institute in NYC, SF and Chicago. He has written for journals & books, and been cited by courts & treatises, on licensing & patent law.

Joe previously served as VP & General Counsel of Cryptography Research, Inc. (CRI), negotiating deals under which 10+ billion devices/year are made by its licensees in the smart card/phone, semiconductor, pay TV, printer & other fields. He also developed, enforced & defended CRI’s patent portfolio, and played a key role in CRI’s successful sale in a series of M&A deals (with Macrovision & Rambus) valued at $400+ million.

Before that, Joe co-founded and later led the “IP Strategy & Transactions” practice based in the Silicon Valley office of the world’s largest law firm (Skadden, Arps). He has also practiced at other large multinational law firms, and served as an arbitrator.

Joe has been named one of the “World’s Leading IP Strategists,” “World’s Leading Patent Professionals” and “World’s Leading IP & Technology Licensing Lawyers” by Intellectual Asset Management (IAM) publications. IAM named Joe as 1 of only 10 "highly recommended" IP transactional attorneys in California -- the only one from a boutique (non-AmLaw 100) firm:

“Joseph Yang is a major-league deal maker and licensing authority” as well as “a transactional mastermind” with arbitration and litigation skills that make him a formidable negotiator.” “He … is a creative problem solver who can clearly articulate legal risks and provide effective advice to guide business decision making.”

Joe is “one of the best expert witnesses you could hope to deal with. He considers all the issues before committing to an opinion, and his positions are always rock solid”.

He is also profiled in “Marquis Who’s Who in American Law”, “Marquis Who’s Who in America” and “Marquis Who’s Who in the World”, and named to the California SuperLawyers list.

Joe also serves on the advisory board of the Licensing Executives Society - Silicon Valley chapter, and is a board member of the Asian Pacific American Bar Association of Silicon Valley.

Joe was originally a research engineer in the aerospace & energy fields. He holds a J.D. from Stanford Law School and a Ph.D. (engineering) from the California Institute of Technology, where he has been a board member of the Caltech Associates & Caltech Alumni Association.