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IP Issues in Business Transactions 2019

 
Author(s): Eric A. Prager, Kenneth K. Cho, Lothar Determann, Karen N. Ballack
Practice Area: Banking
Published: Jan 2019
ISBN: 9781402432866
PLI Item #: 249505
CHB Spine #: G1398

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.


Kenneth K. Cho is a senior U.S. attorney in the intellectual property practice group of Kim & Chang specializing in patent licensing, litigation and counseling matters. Mr. Cho represents international clients from diverse technology fields such as internet, multi-platform messaging, and software related inventions; semiconductor devices and manufacturing equipment; telecommunication and mobile telephony; LEDs; biomedical devices; optical disc and storage technologies and the like. Mr. Cho spent almost a decade working in-house as the Managing Director of Strategic Alliances and Chief Patent Counsel for a private equity fund dedicated to investing in IP centric opportunities; as the IP Counseling and Acquisition Manager, and a Licensing Officer, of Philips Intellectual Property & Standards for the Consumer Electronics product division of Philips Electronics; and as a patent assertion attorney for AT&T Corp. specializing in offensive patent assertion and licensing matters. Mr. Cho has handled Intellectual Property matters that span the United States, Far East and Europe.

Mr. Cho is a former member of the Board of Directors of the American Intellectual Property Law Association (AIPLA) and a former Chairman of the IP Practice in the Far East committee; a member of the Asia Practice Committee of the Intellectual Property Owners Association (IPO); and a member of the International Association of Korean Lawyers where he formerly served as the chairman of the Board of Directors and former past President of the Overseas (U.S.) chapter. Mr. Cho also served on the Board of Directors for the Korean American Lawyers Association of Greater New York (KALAGNY). Mr. Cho is a trained mediator through the New York State Office of Court Administration. He is admitted to the bars of New York, New Jersey and the District of Columbia, and is also admitted to practice before the U.S. Patent & Trademark office.


Karen Ballack is an intellectual property transactional attorney with emphasis on representing technology companies, particularly in the computer (hardware and software), Internet, semiconductor, biotechnology, pharmaceutical and medical device industries.

Ms. Ballack has extensive experience in a wide variety of complex technology and intellectual property alliances and transactions. Representative matters include: licensing arrangements; research and development collaborations; joint ventures; strategic alliances and corporate partnering transactions; intellectual property acquisitions and divestitures; manufacture and supply arrangements; distribution and reseller arrangements; co-marketing alliances; consulting and professional services agreements; and other arrangements involving the commercial exploitation of technology and intellectual property. Ms. Ballack’s practice also includes providing intellectual property assistance in connection with private equity, M&A and other corporate transactions. Ms. Ballack is frequently engaged as a guest speaker on topics relating to technology and intellectual property transactions.

Experience

Yahoo! in connection with a variety of Yahoo’s strategic technology and intellectual property collaborations, arrangements, acquisitions and divestitures and all technology and intellectual property aspects of over 30 of Yahoo’s M&A deals.  Most recently, Ms. Ballack served as Yahoo’s lead intellectual property counsel on Yahoo’s highly publicized reverse spin-off of its operating business, auction sale of that business, and ~ $4.48 billion acquisition of that business by Verizon, as well as Yahoo’s transfer of approximately 4,000 patent assets to a new Yahoo subsidiary, Excalibur, for monetization purposes.

Technology and intellectual property alliances, transactions, acquisitions and divestitures on behalf of Advanced Technology Investment Company, Apple, Applied Materials, ArthroCare, Cardinal Health, Getty Images, GLOBALFOUNDRIES, HCL Technologies, Illumina, Intel, Maxim Integrated, Micron Technology, Orix USA, Panasonic, PDL Biopharma, Pioneer Hi-Bred International (a DuPont company), Sumeru Equity Partners, Texas Instruments, The Progeria Research Foundation, TPG, Trimble Navigation, United Way, Vonage, and Wind River Systems.

Research and development collaborations involving technology companies, universities (such as California Institute of Technology, Carnegie Mellon University, Harvard, MIT, Stanford, Texas A&M and University of California), and research institutions (such as National Institutes of Health).

Ms. Ballack is actively involved with the Firm’s diversity and pro bono efforts. She is also a member of the Board of Directors of The Progeria Research Foundation.

Ms. Ballack is widely recognized in the industry. Among her recent accolades, she was named among “The World’s Leading IP Strategists 2018” by IAM Strategy 300 and among the “Top 250 Women in IP 2017” by Managing Intellectual Property. The Recorder named Ms. Ballack a “Trusted Advisor” for technology transactions in 2016 and 2017. She was named by The Silicon Valley Business Journal as one of Silicon Valley’s 2015 Women of Influence. Ms. Ballack was named to the Daily Journal’s 2017 list of “Top 100 Lawyers in California.” She was also named to the Daily Journal’s 2014 - 2016 lists of Top Women Lawyers in California, with the publication noting “When Weil represents major technology giants in high-value corporate transactions, the firm calls on Ballack to handle the complex intellectual property aspects of the deals.” She has also been included in The Recorder’s 2013, 2015 – 2017 lists of Women Leaders in Technology Law, which recognizes women lawyers who have demonstrated leadership and expertise in solving the most pressing legal concerns in the technology sector. She has been ranked by Chambers USA 2010-2018 as a leader in California in the field of IT & IT Outsourcing. Sources in Chambers USA 2015 describe Ms. Ballack as having the ability to “cut through and find areas of compromise” in major M&A deals and as being “a superb drafter and negotiator.” She has been recognized by The Legal 500 US 2010-2018 in the field of Intellectual Property, Patent Licensing, and has also been named an “IP Star” by Managing Intellectual Property IP Stars 2013-2018. Ms. Ballack has also been named to the 2017 and 2018 Lawdragon 500 Leading Lawyers list.  In addition, Ms. Ballack is included in IAM Licensing 250’s “World’s Leading Patent & Technology Licensing Lawyers” and IAM Patent 1000’s “World’s Leading Patent Practitioners.”


Lothar Determann practices and teaches international technology, commercial and intellectual property law.

At Baker & McKenzie LLP in San Francisco and Palo Alto, he has been counseling companies since 1998 on data privacy law compliance and taking products, business models, intellectual property and contracts international. He is admitted to practice in California and Germany. He has been recognized as one of the top 10 Copyright Attorneys and Top 25 Intellectual Property Attorneys in California by the San Francisco & Los Angeles Daily Journal and as a leading lawyer by Chambers, Legal 500, IAM and others. For more information see www.bakermckenzie.com.Prof. Dr. Determann has been a member of the Association of German Public Law Professors since 1999 and teaches Data Privacy Law, Computer Law and Internet Law at Freie Universität Berlin (since 1994), UC Berkeley School of Law (Boalt Hall, annually since 2004), Hastings College of the Law (since 2010), Stanford Law School (2011) and University of San Francisco School of Law (2000-2005). He has authored more than 100 articles and treatise contributions as well as 5 books, including Determann’s Field Guide to Data Privacy Law (2nd Edition, 2015) and California Privacy Law - Practical Guide and Commentary (2nd Ed. 2017).