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Intellectual Property Law Institute 2019


Speaker(s): Alison P. Buchanan, Bobby Ghajar, Dan D. Crouse, David Bender, Douglas (Chip) A. Rettew, Earl (Eb) Bright, Hugh M. Ray III, James M. Kennedy, James Pooley, Jennifer Sklenar, Joseph L. Schenck, Joseph P. Lavelle, Jule Sigall, Karen Frank, Kathleen E. McCarthy, Kelly W. Smith, Lateef Mtima, Laurie Hill, Lindsey J. Canning, Mark S. Holmes, Merri A. Baldwin, Robert Greene Sterne, Robert P. Taylor, William Sloan Coats, Ziyong (Sean) Li
Recorded on: Oct. 21, 2019
PLI Program #: 249601

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.


Merri Baldwin is a shareholder at Rogers Joseph O’Donnell in San Francisco, where her practice focuses on attorney liability and commercial litigation. She handles claims of legal malpractice and breach of fiduciary duty, as well as motions to disqualify and for sanctions. She regularly counsels lawyers and law firms on legal ethics and law practice management issues. She represents attorneys in disciplinary matters before the State Bar of California, and has extensive experience handling attorney-client fee disputes. Ms. Baldwin is a past chair of the State Bar of California Committee on Professional Responsibility and Conduct. She is a co-chair of the Legal Malpractice subcommittee for the American Bar Association Litigation Section Committee on Professional Services Litigation. Ms. Baldwin served as the President of the Bar Association of San Francisco for 2017. Ms. Baldwin frequently lectures to attorneys and professional organizations on issues related to litigation, legal malpractice and ethics issues, and she is a lecturer at the University of California at Berkeley School of Law, where she teaches professional responsibility. Ms. Baldwin co-edited The Law of Lawyers’ Liability (ABA/First Chair Press 2012) and has served as a consulting editor for the Attorney Fee Agreement Forms Manual, published by Continuing Education of the Bar, California. Prior to law school, Ms. Baldwin was a Fulbright Scholar at the London School of Economics.

Education

J.D., University of California at Berkeley,
School of Law (Boalt Hall)

B.A., Smith College
Magna Cum Laude with high honors


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. 


Dan Crouse is Aon IP Solutions’ Chief IP Officer and heads its consulting services practice. In that capacity, Dan is part of a team that is developing and delivering a range of new consulting, insurance, and valuation services and products. Aon IP Solutions’ goal is to help clients grow and articulate enterprise value through the selective growth of intangible assets and mitigation of intangible risks.

Before joining Aon IP Solutions, Dan was a partner with Lee & Hayes, focused primarily on the areas of intellectual property strategy and valuation and was part of a team dedicated to applying big data analytics across the spectrum of IP issues and opportunities faced by firm clients.

Prior to that, Dan was at Microsoft Corporation, last serving as Deputy General Counsel responsible for intellectual property. He was one of the architects of the original Microsoft patent portfolio development strategy and was actively involved in building and managing the resultant portfolio, negotiating patent cross-license agreements, developing Microsoft’s patent license program, addressing conflicts, and providing counsel to clients and lawyers on a host of transactional and strategic matters.

Dan has been a frequent speaker and writer on intellectual property subjects and has conducted numerous CLE presentations for organizations such as the American Intellectual Property Lawyers Association, Washington State Bar Association and Seattle King County Bar Association.

Dan has served on a variety of boards including the University of Iowa Law School Foundation and the Industrial Advisory Council for Iowa State University’s Engineering College. Dan earned his J.D. from the University of Iowa (Order of the Coif) and his B.S. in Electrical Engineering from Iowa State University.


Hugh M. Ray, III is a partner in Pillsbury’s Insolvency & Restructuring practice, where he focuses on complex reorganization, bankruptcy and commercial litigation.  He has been board-certified in business bankruptcy law by the Texas Board of Legal Specialization since 2005.

Hugh graduated from Vanderbilt Law School and Vanderbilt Divinity School in 1996 with both a J.D. and M.Div.  Hugh has represented publicly traded companies who successfully reorganized in bankruptcy and major creditors in their collection from complex bankruptcies. He has been the lead trial counsel in several high-profile and bet-the-company cases. Hugh represents a supermajor oil company in complex bankruptcy matters.

As an elected member of the American Law Institute, he serves on the American Law Institute’s Member’s Consultative Group drafting the Restatement of the Law of American Indians. 

Hugh earned individual recognition from Chambers USA, is “AV” rated by Martindale Hubbell and has been honored by several other organizations.  He frequently speaks on bankruptcy, legal ethics, and drone law. 


James Pooley is a Silicon Valley lawyer representing clients in trade secret, patent and technology-related commercial disputes, and provides advice on IP strategy and data security management. He also serves as a special master, expert and arbitrator.

Mr. Pooley is an author or co-author of several major works in the IP field, including his treatise Trade Secrets (Law Journal Press) and the Patent Case Management Judicial Guide (Federal Judicial Center). His recent business book is Secrets: Managing Information Assets in the Age of Cyberespionage (Verus Press 2015). His most recent journal article is The Myth of the Trade Secret Troll: Why the Defend Trade Secrets Act Improves the Protection of Commercial Information, 23 Geo. Mason L. Rev. 1045 (Summer 2016).

The Senate Judiciary Committee relied on Mr. Pooley for expert testimony and advice during consideration of the 2016 Defend Trade Secrets Act, and one Senator later called his participation “instrumental” in achieving passage of this landmark legislation. 

In 2014 he completed a five-year term as Deputy Director General at the World Intellectual Property Organization in Geneva, where he was responsible for management of the international patent system. He is a past President of the American Intellectual Property Law Association and Chairman of the National Inventors Hall of Fame. He currently serves as Chair of the Sedona Conference Working Group 12 on Trade Secrets and as Co-Chair of the Trade Secret Task Force of the International Chamber of Commerce. He also teaches trade secret law at the University of California’s Berkeley School of Law.

In 2016 Mr. Pooley was inducted into the IP Hall of Fame for his contributions to IP law and practice.


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.


Joseph Schenck focuses his practice on representing technology companies in commercial transactions involving intellectual property. Joseph has extensive experience with intellectual property transactions including acquisitions, outsourcings, mergers and secured financings in the areas of software, SaaS, mobile platform products and other information technology assets.

Prior to joining Fenwick & West, Joseph was an associate in the intellectual property and litigation practice groups of a leading international law firm. He also was a programmer analyst for the United States Air Force, receiving an Achievement Medal from NATO for the creation of software to automate flight planning operations.


Jule Sigall is Associate General Counsel for Copyright in Microsoft’s Legal & Corporate Affairs department, where he leads the company’s copyright and trade secrets group. Before joining Microsoft, Jule served as Associate Register for Policy & International Affairs at the U.S. Copyright Office, where he led the division responsible for providing domestic and international copyright policy advice to both the Legislative and Executive branches. He was principal drafter of the Office’s Report on Orphan Works and testified on the Report before Subcommittees of the Senate and House of Representatives. He was also an adjunct professor at George Washington University Law School, where he taught copyright law, and is a frequent speaker on copyright in both domestic and international conferences. Prior to his government service, Jule practiced in the Intellectual Property & Technology Group of Arnold & Porter in Washington, DC, where he was involved in some of the leading cases involving copyright and new technology. He is a summa cum laude graduate of Catholic University’s Columbus School of Law and received his A.B. from Duke University.


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).


Laurie L. Hill is a transformational legal leader and business strategist with deep scientific expertise whose passion lies in game-changing innovation that changes our lives and our world.  She is Vice President of Intellectual Property at Genentech & leads a team of energetic attorneys, agents & support staff in creating high value, global portfolios that enable delivery of innovative medicines to patients.  Dr. Hill previously has led legal teams at Illumina, MedImmune, and Life Technologies.  She holds a J.D. from the University of Texas School of Law and a PhD in Microbiology & Immunology from Thomas Jefferson University. 


Robert Greene Sterne is a founding director of Sterne, Kessler, Goldstein & Fox P.L.L.C. in Washington, D.C.  He has extensive expertise in AIA post issuance proceedings and concurrent patent litigation, USITC 337 investigations, Federal Circuit appeals, EU and China 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). He is counsel in more than 200 PTAB contested proceedings 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). 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 specialty firm and 337th largest US law firm.


Ziyong “Sean” Li is an associate in Quinn Emanuel’s San Francisco office. His practice focuses on high-tech litigation involving intellectual property and competition laws.  Sean has experience in diverse fields including consumer electronics, medical devices,  telecommunications, semiconductor devices, and computer hardware and software. He has represented clients in all phases of litigation, successfully briefed and argued motions, negotiated with opposing counsel to reach early, favorable settlements, and bayonet charged at trial.

Before going to law school, Sean majored physics and minored psychology at Peking University.


Jim has been Pixar’s Senior Vice President, Business Strategy and Chief Legal Counsel since 2009.  He oversees Pixar’s Legal and Business Affairs matters, and also serves a member of Pixar’s senior leadership team.

Jim’s previous experience includes senior-level legal and business affairs positions at THQ, Electronic Arts, Mindscape, and the Lucasfilm companies.  He began his career as a corporate attorney at Gibson Dunn & Crutcher.  He holds an undergraduate degree from Princeton University, a law degree from Boston College School of Law, and an MBA in Strategic Leadership from Dominican University 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.


President and General Counsel. Eb has many years of technology development, company formation and financing experience. He is an inventor, a founder of several companies, a patent attorney and has served on the executive management teams of many start-up companies (Acclarent, Neotract, Vibrynt, Moximed, Nuelle, Willow). He serves on the Alliance for U.S. Startups & Inventors for Jobs (USIJ) Advisory Committee. Previously, Eb was Director of Intellectual Property West Coast Operations at Guidant Corporation where he directed a 9 member team involved in litigation and the strategic development of over 1300 patent and trademark applications related to the Vascular Intervention, Cardiac Surgery and Endovascular Solutions divisions as well as handling legal issues for Guidant Japan and the Compass Group, the unit responsible for Guidant’s venture capital and merger and acquisition activities. Eb is an inventor on fourteen U.S. issued patents with others currently pending. He holds M.B.A.s from Columbia University and University of California, Berkeley, and Juris Doctorate and B.S. in Mechanical Engineering degrees from the University of Oklahoma.


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 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.


Alison Buchanan is a Shareholder in the firm’s Silicon Valley office, where she focuses her practice on business litigation.  Alison represents clients in complex business disputes, including contract, fraud, misappropriation of trade secrets, and unfair competition claims. She has significant trial experience, which includes serving as lead trial counsel in her last four trials.

Alison is a Certified Specialist in Legal Malpractice Law as certified by the State Bar of California Board of Legal Specialization.  Alison is a sought-after speaker on attorney ethics.

Alison was named a “Northern California Super Lawyer” for 2018, 2017, 2016, 2015, 2014, and 2013, as chosen by her peers and through the independent research of Law & Politics and San Francisco Magazine. She was named a Northern California "Rising Star" in 2012.

REPRESENTATIVE MATTERS/CLIENTS

  • Represents corporate clients with contract, fraud, misappropriation, and unfair business practice claims
  • Represents law firms and lawyers defending allegations of professional malpractice and breach of fiduciary duty
  • Represents lawyers in State Bar disciplinary proceedings
  • Significant trial experience, including jury and bench trials
  • Advises law firms and lawyers on ethics issues, such as conflicts, confidentiality, and fee disputes
  • Federal court jury trial experience involving allegations of unfair competition and false advertising

PROFESSIONAL ACTIVITIES

Alison is presently serving a four-year appointment as a Commissioner for the Legal Malpractice Law Advisory Commission of the State Bar of California's Board of Legal Specialization. From 2011 through 2014, Alison served a three-year appointment to the California State Bar’s Standing Committee on Professional Responsibility and Conduct (COPRAC). She serves on the Executive Committee of The Bar Association of San Francisco’s Legal Malpractice Section. Alison is a member of APRL (Association of Professional Responsibility Lawyers).

Alison is serving a three-year term as a member of the Board of Directors for the Humane Society Silicon Valley. 


Bobby Ghajar is an intellectual property litigation partner. While he has litigated cases that cover a wide range of complex commercial litigation, Bobby's practice is focused on counseling leading companies in trademark, trade dress, copyright, right of publicity and false advertising litigation. He has handled dozens of high-stakes litigation and appellate matters for some of the top brand owners in the world, and many of his cases have helped to create legal precedent.


Jennifer Sklenar is co-chair of Arnold & Porter’s Intellectual Property Group and a partner in its Washington D.C. office. She focuses her practice on patent litigation, particularly in the medical device, biotech, semiconductor and networking-related fields. She has managed all aspects of litigation and has significant trial experience in the US District Courts and in Section 337 cases in the ITC. She has also been lead counsel in numerous contested Patent Office proceedings.


Katie McCarthy is a partner in the New York office of King & Spalding’s IP practice group with 31 years of experience in trademark, design, internet, advertising and copyright matters. 

Katie advises clients on global IP issues and litigates IP cases in the federal courts and the U.S. Patent and Trademark Office Trademark Trial and Appeal Board. 

Katie is active on the Board of Directors of the New York Intellectual Property Law Association (NYIPLA) and is currently President-Elect of that organization, slated to take over as President in May. 

Katie recently finished a two-year term as the Editor-In-Chief of the International Trademark Association’s scholarly journal The Trademark Reporter, having written, solicited and edited articles for the journal for more than 20 years. 

Katie speaks frequently for the NYIPLA, INTA and PLI, and serves as one of the editors for the PLI book, Kane on Trademark Law.  Katie also actively promotes diversity in the profession through her involvement in King & Spalding’s Women in IP initiatives.

Katie lives in Astoria, New York where she, her husband and two sons can be found frequently hosting assorted siblings, nieces, nephews, cousins and friends.


Kelly W. Smith is Managing Counsel at Intel Corporation in the Trademarks & Brands legal team.  Her practice includes trademark clearance, enforcement, and complex licensing.

Kelly graduated cum laude from the University of California Hastings College of the Law in 1997.  Before joining Intel, she worked in private practice at Fenwick & West LLP and Perkins Coie LLP, specializing in intellectual property litigation. 

Kelly has been recognized by the World Trademark Review as one of the WTR 300 World’s Leading Corporate Trademark Professionals.  She is an active member of the International Trademark Association and currently serves as Vice Chair of the INTA Enforcement Committee. 


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.

 


KAREN FRANK is a partner at Coblentz Patch Duffy & Bass LLP, focusing on copyright, trademark, right of publicity, internet, publishing  and advertising law.  
Prior to joining Coblentz Patch in 2008, Ms. Frank was a partner at Howard Rice Nemerovski Canady Falk & Rabkin, in San Francisco, a shareholder at Legal Strategies Group in Emeryville, California, and at Pillsbury Madison & Sutro in San Francisco.  

Professional Memberships:

Karen has been named a Top 250 Women in IP by Managing Intellectual Property Magazine.  She is listed in The Best Lawyers in America in the Intellectual Property Litigation category and was named Best Lawyers Northern California Copyright Lawyer of 2018.  She is recognized as a Northern California Super Lawyer, and is a Martindale Hubbell AV Rated Attorney.  Karen was selected by her peers for inclusion in 2007 and 2009 Who's Who Legal: California, Trademarks chapter and is listed in Who's Who in America Law, 2009 and 2010 and Who's Who in America, 2007 – 2012.

 


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.