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Intellectual Property Law Institute 2018


Speaker(s): Ali Torabi , Alison P. Buchanan, Bobby Ghajar, Darryl M. Woo, David Bender, Earl (Eb) Bright, Fabio E. Marino, James M. Kennedy, James Pooley, Jean I. Liu, Jennifer Sklenar, Joseph P. Lavelle, Karen Frank, Kathleen E. McCarthy, Lateef Mtima, Lindsey J. Canning, Mark A. Jansen, Mark S. Holmes, Mary Albertson, Matthew Hult, Merri A. Baldwin, Richard M. Marsh, Jr., Robert Greene Sterne, Robert P. Taylor, William Sloan Coats
Recorded on: Oct. 22, 2018
PLI Program #: 249730

 Jennifer Sklenar is a partner in the Los Angeles office of Arnold & Porter. She focuses her practice on patent litigation, particularly in the medical device, biotech, computer hardware, software, and networking-related fields.  She has significant trial experience both in the district courts and in contested Patent Office proceedings.  Ms. Sklenar also counsels clients on patent prosecution matters and intellectual property issues associated with corporate transactions.

She has an undergraduate degree in biomedical engineering and is a registered patent attorney.  

She has been recognized as a Southern California Super Lawyer and one of the Top 250 Women in IP.
 



 


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. 


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.


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).


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.


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.  Lindsey also has a particular focus on privacy and cyber-security, helping clients to navigate the increasingly complex regulatory landscape in this area.   

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 in NYC working for 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.


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.


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.


Robert Greene Sterne is a founding director of Sterne, Kessler, Goldstein & Fox P.L.L.C., a premier intellectual property law firm based in Washington, D.C.  Mr. Sterne has extensive expertise in AIA post issuance proceedings and concurrent patent litigation, USITC 337 investigations, Federal Circuit appeals, EU 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).  In his practice, Mr. Sterne holds a BSEE and a MS and specializes in electronics, computers, software, communications, semiconductors, wireless, medical devices, nanotechnology, and business methods technologies. He is counsel in more than 196 PTAB contested proceedings at the USPTO 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). Mr. Sterne is highly rated in peer-review rankings, including a consistent "Band 1" patent prosecution designation by Chambers & Partners. 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 boutique and 337th largest US law firm.


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.

 


Darryl is a partner at Goodwin Procter LLP and veteran first chair IP trial lawyer who has represented a variety of clients in high profile and “bet-the-company” litigation in both district courts and at the ITC.  He served as counsel for the original Napster in its struggle against the recording industry, he defended Google Earth from patent attack, and his experience with handheld mobile communications devices reaches as far back as the Palm and Treo smartphones.  His $74.7M jury verdict for a semiconductor industry client in the Northern District of California was one of the top awards the year in which it was tried.  More recently, he defended NFL Entertainment with respect to patents asserted against his client directed to aspects of its interactive TV and video streaming services. Among other accolades, he has been named to The Best Lawyers in America©, one of the Top 100 Leading Lawyers in California, a Top 75 IP Lawyer in California, and to the IAM Patent 1000 list of The World’s Leading Patent Practitioners.  For fun, he recently served as a technical advisor for the fifth season of HBO’s “Silicon Valley” show, and has a page on IMDb.com.

Darryl received his law degree from Georgetown University in 1981 and his Bachelor’s in Biology from the University of California, Berkeley in 1977.  Darryl is a licensed member of the State Bar of California, and a member of the Bar Association of San Francisco, American Bar Association, Asian American Bar Association of the Greater Bay Area, National Asian Pacific American Bar Association, American Intellectual Property Law Association, Federal Circuit Bar Association, Mechanics Institute of San Francisco, and ITC Trial Lawyers Association. He also served as a member of the board of the Northern California Chapter of the Association of Business Trial Lawyers from 2005 to 2012. Darryl is admitted to practice in California, all federal district courts in California, the United States District Court for the Eastern District of Texas, the United States Courts of Appeals for the 9th and Federal Circuits, and the United States Supreme Court.

 

 


Fabio Marino is an experienced intellectual property trial lawyer who serves as Vice Chair of the firm's Intellectual Property department, as well as practice chair for the Intellectual Property and Technology Litigation group. He also leads the firm's Silicon Valley office in his capacity as Office Managing Partner. Fabio tries high-stakes patent, trade secrets, and copyright cases across the United States, with an emphasis on computer-related technologies and arguing appeals at the Federal Circuit.

Prior to becoming an attorney, Fabio earned his bachelor’s and master’s degrees in computer science and worked in the industry as a software architect. He currently teaches an Intellectual Property Litigation class at Santa Clara University’s School of Law and coaches University of California-Berkeley teams in the Giles S. Rich Patent Moot Court Competition.

 


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.


Rick Marsh helps clients grow and protect their intellectual assets. His practice focuses on various specialties in patent law, with particular expertise in patent eligibility, post-grant proceedings, patent prosecution, patent validity and infringement evaluations, and patent litigation:

Rick led the ABA’s Post-Alice Task Force for over two years, and routinely publishes articles and speaks at national conferences on Section 101 issues. Rick also was a prominent presenter at the USPTO’s 2017 national roundtable on patent subject matter eligibility. Rick assists clients with patent eligibility issues for both prosecution and litigation.

Rick graduated magna cum laude from the University of Michigan Law School in 2009. After graduation he served as a law clerk to the Honorable William C. Bryson at the Court of Appeals for the Federal Circuit.  Rick is a partner at Faegre Baker Daniels.

 

 


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.    


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 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.