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Understanding the Intellectual Property License 2018


Speaker(s): A. Clifford Allen, Bryan Thompson, Cassidy Chivers, Cydney A. Tune, David S. Bloch, Geoffrey T. Holtz, Ira Jay Levy, Joseph Yang, Lillian Stenfeldt, Lindsey J. Canning, Naomi Obinata, Sally M. Abel, Tina Soriano
Recorded on: Dec. 5, 2018
PLI Program #: 221788

Bryan Thompson is special counsel-corporate and entertainment in Barnes & Thornburg’s Los Angeles office. With a particular focus on television and digital matters, Mr. Thompson advises clients on transactional matters.

Prior to joining Barnes & Thornburg, Bryan was senior vice president of business and legal affairs for Fox Networks Group, where he served as the head of business affairs for The Jackal Group, a Fox studio. Bryan also has previous in-house experience with Yahoo! Inc., where he was counsel for the sports, entertainment, video game, and marketing departments.

Bryan is a graduate of the University of Texas and the University of North Carolina School of Law.  He lives in Los Angeles but desperately holds on to his Louisiana roots.


Cydney Tune is Senior Counsel at Pillsbury's San Francisco office, and leads the firm's Copyrights practice and Media & Entertainment industry team.  Her practice includes a wide variety of intellectual property issues, including copyrights and trademarks, as well as a broad array of entertainment, licensing, E-Commerce and rights enforcement matters.  She represents a variety of clients—large and small, domestic and foreign, and in many different industries.

The Daily Journal named Ms. Tune one of 2008's Top 10 Copyright Lawyers in California and listed her among California's top "25 licensing specialists" in 2010.  She is regularly voted by her peers as among the Best Lawyers in America in the Entertainment Law and Media Law categories.  She has also been named a “Super Lawyer” in intellectual property.  She is a frequent speaker and author on topics pertaining to intellectual property, licensing and the convergence of entertainment and technology.

Affiliations
- Past Vice Chair, ABA Forum on the Entertainment and Sports Industries, and Immediate Past Chair of the Licensing, Branding and Merchandise Division for that organization
- Past Chair, Copyright Interest Group, State Bar of California IP Section, former Executive Committee member
- Editorial Board, International Entertainment Law Journal
- Advisory Board, Copyright World 
- Advisory Board, Internet Law & Strategy
- Executive Committee and Northern California Chapter Chair, Emeritus, Copyright Society of the U.S.A.


David S. Bloch, a partner with Winston & Strawn LLP in San Francisco and Menlo Park, focuses his practice on complex intellectual property litigation.  The author of IP and Technology in Government Contracts and more than 3 dozen published articles, Mr. Bloch has a particular area of interest in the use of intellectual property in Government contracts. 

A biography and publication list are available online at www.winston.com/dbloch


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.


Primary Areas of Practice: Ms. Stenfeldt is a Partner in the Bankruptcy Department at Rimon. She works on complex intellectual property issues in bankruptcy cases and represents international technology and other clients on the various aspects of licensing and bankruptcy law.  She assists clients in purchasing intellectual property assets from financially challenged companies, both in and out of bankruptcy cases. She also assists companies in efficiently structuring business transactions and licenses to prevent losses and protect assets due to potential future insolvencies of others.

She was named “Best Bankruptcy Lawyer,” “Best Bankruptcy Litigator” and a “Super Lawyer” again this year. She was recognized as one of 40 “Women Leaders in the Law” in California by The Recorder. She frequently lectures on a wide variety of bankruptcy related topics, including selected topics at the Stanford University Graduate School of Business. Lillian also represents clients throughout the country in all aspects of insolvency and bankruptcy proceedings and strategy. Her clients include secured creditors, hedge funds, creditor’s committees, trustees and receivers. Her clients range from International Fortune 100 companies to start ups.

Lillian earned her BA in Economics, as well as her Master’s Degree in Organizational Behavior, from Stanford University. She received her J.D. from the University of Detroit Mercy Law School, magna cum laude.

Work History:

• Rimon, January 1, 2018-Present

• Sedgwick LLP, 2003-2017

• Gray Cary, formerly known as Ware & Freidenrich, now known as DLA Piper, 1994-2003

• Bronson, Bronson & McKinnon, 1982-1994

• General Motors Legal Staff, 1980-1982

Professional Memberships:

• Director, Bay Area Bankruptcy Form

• Past Board of Director, International Turnaround Management Association;

• American Bankruptcy Institute

• International Association of Insolvency Professionals

• International Women’s Insolvency Association


Sally Abel is Chair of Fenwick & West’s Trademark Group, focusing her practice on international trademark and trade name counseling, including the development and management of international trademark portfolios and trademark rights online.

Sally is ranked the top trademark lawyer in the United States in Who’s Who Legal Trademarks 2015. She has repeatedly won other international, national, state and Silicon Valley accolades including:  

  • Managing Intellectual Property IP STAR and The Top 250 Women in IP (2014-2017)
  • The National Law Journal: Intellectual Property Trailblazers & Pioneers (2014)
  • World Trademark Review 1000: One of the top 7 trademark practitioners in the US (Gold ranking 2012-2017)
  • Chambers USA and Chambers Global: Band 1 (2007, 2009-2017)
  • Euromoney’s Best of the Best Expert Guide 2017: One of the Top 30 Trademarks Practitioners Worldwide and top 3 in the U.S.
  • The International Who’s Who of Trademark Lawyers: Among the world’s leading trademark lawyers.(2002-2017)Currently ranked among North America’s top 10 trademark thought leaders
  • Chambers USA Women in Law Awards: One of the top 12 women IP lawyers in the US (2012)
  • Legal Media Group’s Guide to the World’s Leading Women in Business Law (2010-2012. 2015-2016)
  • The Recorder: Women Leaders in Tech Law (2013-2015)
  • San Francisco Business Times: Most Influential Women in Business (2013)

Sally was a pioneer in the international debate over trademark rights on the Internet, including serving as INTA’s representative on the 11-member International Ad Hoc Committee (IAHC), the international body organized by the Internet Society, to restructure the domain name system. At the invitation of the World Intellectual Property Organization (WIPO), Sally also participated in WIPO’s First Meeting of Consultants on Trademarks and Internet Domain Names held in Geneva in February, 1997. Through WIPO and the National Arbitration Forum, she has served as a neutral panelist in over 60 domain name disputes brought under ICANN’s UDRP system.

Sally was a member of the INTA Board of Directors from 1998 to 2000. She chaired INTA’s Internet Subcommittee for two years, developed and chaired INTA’s Enforcement Committee, and currently serves on INTA’s Amicus Committee. She teaches trademark law annually at an IP conference for federal court judges and teaches international trademark law at Boalt Hall School of Law (Berkeley Law).


Senior Attorney - Microsoft Corporation (Aug. 2009 – Present).  Lead open source attorney for Microsoft Corporation responsible for developing the company’s legal open source policies and compliance processes. Provide legal support for the Cloud and Enterprise and Sales Services and Marketing and Data Platform groups. Recipient of numerous awards including Microsoft’s Excellence in Innovation, Excellence in Collaboration, and Intellectual Property Legal Star awards.

Speaker on open source at seminars, podcasts and webcasts for Practising Law Institute (PLI), American Conference Institute Legal Conferences (ACI), American Intellectual Property Law Association (AIPLA), Open Source Conference (OSCON), Microsoft Legal Summit, Palamida User Conference, runasradio.com podcast and the Washington State Bar Association.

Assistant General Counsel – Sun Microsystems, Inc. (1990-2009). Product group attorney at Sun supporting both software and hardware business groups (Java, SPARC chips and Enterprise Server groups). Negotiated and drafted complex technology licensing agreements for the acquisition and development of computer systems, software and chip firmware. Open Source Expert: Recipient of Sun’s Open Source Expert Award in 2007. Thought leader and Sun’s ambassador on open source legal issues for over a decade.

Senior Associate Donahue Gallagher and Woods, LLP (1988 – 1999). Litigator on behalf of multinational corporations and entertainment clients (Grateful Dead, Microsoft, Adobe, Autodesk, Safeway, Jacuzzi, etc.). Conducted piracy raids on behalf of the Business Software Alliance (BSA). Tried cases in California Superior Court, Federal District Court (N.D. Cal.). Argued appellate cases before the California Court of Appeals and Federal Court of Appeals.

Professional Memberships: Washington State Bar and State Bar of California


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. These include IP licenses, supply and distribution agreements, outsourcing contracts and agreements relating to transformational IT projects.

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 working in NYC with her previous firm.


Tina is part of the IP Licensing & Technology Transactions team at Rambus where she spends much of her time negotiating outbound technology and patent licenses in the semiconductor space.  She works with a great group at Rambus, and particularly enjoys the strategy and teamwork involved in negotiating a deal through to execution.  She has found that it helps to have a diversity of personalities and backgrounds on a deal team, as one rarely knows at the beginning what will ultimately bring a contract to closure.  Prior to Rambus, Tina was at Dechert LLP’s Silicon Valley office where she worked on patent litigation for medical device and high tech clients, notably a group of cases involving stent technology for Medtronic.  Tina earned her J.D. and M.A. (English Literature) from Duke University, and her B.A. (French) from the University of Florida.


Cassidy Chivers is a Hinshaw & Culbertson LLP partner in the San Francisco office. She focuses her practice on the defense of lawyers and counseling lawyers and law firms on risk management and ethics issues, as well as law firm formation and registration. She also handles risk management hotline counseling for attorney-insureds on behalf of Hinshaw's various insurer clients. She is a regular contributor to various publications on risk management and ethics issues involving lawyers and law firms.


Geoff Holtz works on a variety of complex litigation matters, focusing on antitrust and intellectual property cases. He deals with class actions and other multi-party matters on both the plaintiff and defense side. Prior to law school, he worked as a programmer and computer network designer and, thus, developed a concentration in commercial disputes of all types involving complex software, hardware, and other technical issues.


Naomi Obinata is General Counsel of Nikon Precision Inc., a U.S. subsidiary of Nikon Corporation.  Naomi attended University of  California Berkeley where she obtained a B.S. in Chemical Engineering, worked as an engineer for 2 years, and earned her law degree at Santa Clara University School of Law.  She has spent more than half of her 20+ year career working in intellectual property matters, from patent prosecution to IP litigation to technology transactions, and working at marquis companies such as Applied Materials, Intel Corporation, and Taiwan Semiconductor Manufacturing Company.  A true Silicon Valley technology lawyer, Naomi is a licensed patent attorney and served as Vice President, Legal at SuVolta, Inc., a startup dedicated to developing semiconductor transistor technologies.  At SuVolta, Naomi grew the patent portfolio ten-fold and licensed patents and technology to industry giants.  Before concentrating in technology law, Naomi practiced employment law at a large law firm.  Naomi enjoys solving legal and business problems, resolving legal disputes, negotiating and closing deals, and implementing business processes.   In Naomi’s spare time, Naomi enjoys running with her dogs,  cooking and eating international cuisines, and mentoring young people