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Intellectual Property Law Institute 2018


Speaker(s): Ali Torabi , Alison P. Buchanan, Bobby Ghajar, David Bender, Earl (Eb) Bright, James M. Kennedy, James Pooley, Jean I. Liu, Karen Frank, Kathleen E. McCarthy, Lateef Mtima, Lindsey J. Canning, Mark A. Jansen, Mark S. Holmes, Mary Albertson, Matthew Hult, Merri A. Baldwin, Robert P. Taylor
Recorded on: Oct. 22, 2018
PLI Program #: 249730

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 serves as a Venture Advisor to New Enterprise Associates and as a patent law expert for the National Venture Capital Association.  He also serves on the advisory boards of the Alliance of U.S. Startups and Inventors for Jobs (“USIJ”) and the United States Intellectual Property Alliance (“USIPA”), both groups advocating strongly for reliable and enforceable patent rights.

For more than 40 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 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 served as a member of the 1992 Commission on Patent Law Reform.  He is a former chair of the Antitrust Section of the American Bar Association, a former Patent Examiner, and a long-time member of the Institute of Electrical and Electronics Engineers.

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.  He served in the U.S. Army and worked as an engineer for Motorola and for Bell & Howell before attending law school.


David Bender has taught Privacy Law as an Adjunct Professor at the University of Houston Law Center, and also at Pace University Law School, and he is a Distinguished Fellow of the Ponemon Institute.  He has had extensive Privacy, Intellectual Property, and Information Technology counseling, litigation, and transactional experience.  He was a founder of the Intellectual Property practice at White & Case.  He was later a co-founder of the firm’s Privacy practice, which he headed at the time of his retirement from the firm.
           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.

         

Publications:   

  • Bender on Privacy and Data Protection (LexisNexis Release #11 2017);
  • 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.

 

Bar Admissions:  New York; US Patent and Trademark Office

 

Education: Sc.B. in Applied Mathematics, Brown University

                  LL.B., University of Pennsylvania

                  LL.M. in Patent Law, The George Washington University

                   S.J.D., The George Washington University

 

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)


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 (today the Harvard Journal on Racial and Ethnic Justice). 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 former international law firm of Coudert Brothers. Professor Mtima has served as a member of the Advisory Council for the United States Court of Federal Claims, President of the Giles S. Rich Inn of Court for the United States Court of Appeals for the Federal Circuit, a member of the founding Editorial Board for the American Bar Association intellectual property periodical Landslide, a member of the BNA Patent, Trademark & Copyright Journal Advisory Board and the ALI Practical Lawyer Editorial Board, and a  Distinguished Libra Visiting Scholar in Residence at the University of Maine School of Law. Professor Mtima is the Founder and Director of the Institute for Intellectual Property and Social Justice, an accredited NGO member of the World Intellectual Property Organization (WIPO), and which advocates for core principles of socially equitable access, inclusion, and empowerment in the development and implementation of the IP ecosystem.

Professor Mtima is the editor/contributing author of Intellectual Property, Social Justice, and Entrepreneurship: From Swords to Ploughshares (Edward Elgar 2015) and a co-author of Transnational Intellectual Property Law (West Academic 2016). Some of his other publications include The Idea Exclusions in Intellectual Property Law, 28 Texas Intell. Prop. L. J. 343 (2020); IP Social Justice Theory: Access, Inclusion, and Empowerment, 55 Gonzaga L. Rev. 401 (2019/20); Digital Tools and Copyright Clay: Restoring the Artist/Audience Symbiosis, 38 Whittier Law L. Rev. 104 (2018); Copyright and Social Justice in the Digital Information Society: “Three Steps” Toward Intellectual Property Social Justice, 53 Hous. L. Rev. 459 (2015); A Social Justice Perspective on IP, Innovation, Entrepreneurship, Innovation and Entrepreneurship, in Entrepreneurship and Innovation in Evolving Economies: The Role of Law (Edward Elgar 2012); What’s Mine is Mine but What’s Yours is Ours: IP Imperialism, the Right of Publicity, and Intellectual Property Social Justice in the Digital Information Age, 15 S.M.U. Sci. &Tech. L. Rev. 323 (2012); Fulfilling the Copyright Social Justice Promise: Digitizing Textual Information, 55 N.Y.L. Sch. L. Rev. 77 (2010) (quoted in The Authors Guild v. Google Inc., 770 F. Supp. 2d 666, 679, n. 15, (S.D.N.Y. 2011); Copyright Social Utility and Social Justice Interdependence: A Paradigm for Intellectual Property Empowerment and Digital Entrepreneurship, 112 W. Va. L. Rev. 98 (2009); Whom the Gods Would Destroy; Why Congress Prioritized Copyright Protection Over Internet Free Speech and Privacy in Passing the Digital Millennium Copyright Act, 61 Rutgers L. Rev. 627 (2009); So Dark the CON(TU) of Man: The Quest for a Software Derivative Work Right in Section 117,  70 U. Pitt. L. Rev. 1 (2008); and “Tasini and Its Progeny: The New Exclusive Right or Fair Use on the Electronic Publishing Frontier?” 14 Ford. Intell. Prop., Media & Ent. L. J. 369 (2004) (quoted in Greenberg v. National Geographic Society, 533 F.3d 1244, 1264, 1266 (11th Cir. 2008) (dissenting opinion)).

 


Mark Jansen’s practice focuses on domestic and international trademark and trade name counseling, and strategies for developing and managing domain name portfolios. He advises clients from startups to multinational corporations on brand strategy and the protection of brand assets, including brand creation, selection, protection, expansion and enforcement.

Mark has extensive experience working with cutting-edge companies that are disrupting industries and improving lives through technological innovation, including those in the artificial intelligence (AI), virtual, augmented, and mixed reality, computer vision, blockchain, autonomous vehicle, robotic and e-commerce industries. He also regularly counsels clients in the social media and Internet space, both advising platforms in trademark matters and helping brand owners navigate social media.

Mark is active in the International Trademark Association (INTA), the Intellectual Property Owners Association (IPO) and the American Bar Association’s (ABA) Intellectual Property Law Section. Super Lawyers honored Mark among the leading intellectual property lawyers in Northern California in 2017 and 2018.

Mark received his J.D. and a High Tech Law Certificate with honors from Santa Clara University School of Law in 2011. While in law school, he was honored with the ABA/BNA Award for Excellence in the Study of Intellectual Property Law, the Witkin Award for Academic Excellence in Intellectual Property and a CALI Excellence for the Future Award. Mark was also Lead Production Editor for the Santa Clara Computer & High Technology Law Journal. He served as a judicial extern for the Honorable Terry J. Hatter Jr. of the U.S. District Court of the Central District of California and also worked as a law clerk for Oracle, Quantum, and eBay.

Mark earned his B.A. in history from the University of California, Los Angeles.

Mark is a member of the State Bars of California, the District of Columbia and New York.


Merri Baldwin is a shareholder at Rogers Joseph O’Donnell, 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 Vice-Chair of the State Bar of California’s Closing the Justice Gap Working Group.  Ms. Baldwin is a former chair of the State Bar of California Committee on Professional Responsibility and Conduct, and is currently a member of the California Lawyers Association Ethics Committee.  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.  Ms. Baldwin co-edited The Law of Lawyers’ Liability (ABA/First Chair Press 2012) and since 2006 she 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


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 with Hoge, Fenton, Jones & Appel, Inc., in San Jose, California, where she serves as the firm’s General Counsel and chairs the firm’s Business Litigation Practice Group. Alison focuses her practice on business litigation, professional liability, and legal ethics. She has tried business litigation, legal malpractice defense, and employment discrimination cases to verdict.

Alison is a Certified Specialist in Legal Malpractice Law, as certified by the State Bar’s Board of Legal Specialization. She is a founding member of the Ethics Committee for the California Lawyers Association, serving as the Vice Chair of Publications. From 2011 to 2014, Alison served a three-year appointment to the California State Bar’s Committee on Professional Responsibility and Conduct (COPRAC). She previously served a four-year appointment to the State Bar's Legal Malpractice Law Advisory Commission.

Alison is a member of APRL (Association of Professional Responsibility Lawyers). She is also a member of the Santa Clara County Bar Association and previously chaired its Professionalism Committee. For ten years, Alison taught Professional Responsibility at Lincoln Law School in San Jose. Alison regularly speaks throughout the state on issues of attorney ethics and professional liability. She has been named a Northern California Super Lawyer from 2013 through 2020.  Alison earned her law degree from Chicago-Kent College of Law (Illinois Institute of Technology), with honors, in 2001.

In addition to her law-related endeavors, Alison proudly serves on 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.


Katie McCarthy is a partner in the New York office of King & Spalding’s IP practice group with more than 30 years of experience in trademark, design, internet, advertising and copyright matters.  Katie graduated from Columbia University School of Law and secured her bachelor’s in psychology from The College of the Holy Cross.

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

Katie is actively involved with the New York Intellectual Property Law Association (NYIPLA), having just finished several years on the Board and a term as President. 

Katie also 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.  Her article on trademark parodies, “Free Ride or Free Speech: Predicting Results and providing Advice for Trademark Disputes involving Parody,” was published in The Trademark Reporter in 2019 and won INTA’s 2020 Ladas Memorial Award in the Professional Category.

Katie speaks frequently for the NYIPLA, INTA and PLI, and serves as the new editor for the PLI one volume treatise, Kane on Trademark Law.  Katie also actively promotes diversity in the profession through her involvement in King & Spalding’s Women in IP and Technology initiatives and her mentorship of young lawyers and law students through various programs including the Leadership Council on Legal Diversity.

Katie lives in Astoria, New York with her husband and two sons.


Ali serves as Director of Corporate Development for Solar Junction Corporation, a semiconductor technology company based in Tempe, Arizona that designs and manufactures high efficiency solar cells and other optoelectronic devices.  Ali is responsible for corporate strategy and business development at Solar Junction, and he is closely involved in the development and management of the company’s intellectual property portfolio.

Ali received a Bachelor of Arts degree from Boston College in 2006 and a Juris Doctor degree from Suffolk University Law School in 2009.  Prior to joining Solar Junction in 2014, Ali worked in the Global Business Services and Corporate Legal divisions of International Business Machines (IBM) Corporation.  He is an active member of the Alliance of U.S. Startups and Inventors for Jobs (USIJ) and is licensed to practice law in Massachusetts.

 


James Pooley specializes in the litigation of patent, trade secret, copyright, and technology-related commercial matters. Mr. Pooley is recognized in the Guide to the World’s Leading Patent Law Experts and in Chambers’ America’s Leading Business Lawyers, which has referred to him as “trade secrets guru.” He is author of the treatise Trade Secrets and of the business book Secrets: Managing Information Assets in the Age of Cyberespionage. He teaches trade secret law in the IP program at the University of California’s Berkeley School of Law.


Jean I. Liu serves as General Counsel, Executive Vice President, Legal Affairs and Corporate Secretary of Seattle Genetics, Inc., a global oncology company, since November 2014. Prior to that, she served as Vice President and General Counsel of Halozyme Therapeutics, Inc., a publicly traded biotechnology company, from November 2011 to November 2014. From 1998 to 2011, she was with Durect Corporation, a publicly traded biotechnology company, where she served in positions of increasing responsibility, including most recently Chief Legal Officer and Corporate Secretary. Prior to Durect, Ms. Liu was with the law firms of Pillsbury, Madison & Sutro (now Pillsbury Winthrop) and Venture Law Group where she focused on broad areas of legal advisory for early stage companies, including technology transfer, licensing, patents, and copyright and trademark litigation. Ms. Liu received her B.S. in Cellular and Molecular Biology with highest distinction from the University of Michigan, her M.S. in Biology from Stanford University and her J.D. from Columbia University.


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.

 


Mary Albertson is the Associate Director, Operations, in Stanford University’s Office of Technology Licensing (OTL). She has worked at OTL for more than two decades supporting academic research commercialization. Mary is also the Immediate Past President of AUTM, an organization of professionals involved in transferring technology for commercialization. Mary manages technologies from evaluation through to licensing in a variety of fields. She is involved in information management, the analysis of technology transfer business processes and information collection systems. Mary is also regularly invited to speak on and teach about commercializing technology at international conferences and courses. OTL is responsible for the licensing of various state-of-the-art university technologies such as biotechnology and semiconductor inventions, laser technology, software and medical instrumentation.  In fiscal year 2016-2017 OTL received $45.5M from 808 inventions that generated income. 56 of those generated more than $100,000; 5 inventions generated $1M.