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Outsourcing 2019: Innovation and Disruption


Speaker(s): Andrea S. Pipkin, Barbara Murphy Melby, Brad L. Peterson, David M. Ross, Douglas Plotkin, Dr. Sonia Baldia, George Kimball, George Kimball, Janis M. Meyer, John F. Delaney, Marcelo Halpern, Peter R. George, Rebecca S. Eisner, Rick Nathanson, Robert M. Finkel, Seema Phekoo, Sonia Baldia, William A. Tanenbaum
Recorded on: Oct. 30, 2019
PLI Program #: 253874

Sonia Baldia

S.J.D. (in Intellectual Property Law), The George Washington University Law School
LL.M., University of Georgia School of Law
LL.B., University of Delhi Law School
B.Ed., Punjabi University
B.S., Punjabi University

Dr. Sonia Baldia is an Associate Professor of Law at Widener's Delaware campus. Prior to joining the faculty at Widener, Professor Baldia was a partner in the Washington, D.C. office of Mayer Brown LLP and co-chair of the firm's global India practice where she focused on U.S. and international business transactions, intellectual property and corporate matters. She also served as pro bono General Counsel to the Asian University of Women Support Foundation, a not-for-profit organization supporting the creation and management of the Asian University For Women established in Chittagong, Bangladesh, in Fall 2008. Prior to joining Mayer Brown, she was a consultant to the U.S. Agency for International Development and the U.S. Department of Commerce advising foreign governments on site in technology, telecommunications, and intellectual property-related developmental projects.

Professor Baldia has degrees in law, science and education from the U.S. and India, and she has been a visiting scholar in IP at several international legal institutions, including the Max Planck Institute for Intellectual Property in Munich, the Research Center for Advanced Science and Technology in Tokyo, and the International Development Law Institute in Rome.

Professor Baldia teaches and writes in the areas of Intellectual Property, Business Organizations, and International Business Transactions and Technology Transfer. One of her IP-related publications, which concerned parallel importation to India, was quoted at length and substantially relied upon as an authority by the Delhi High Court of India in Samsung Electronics Company Limited v. Mr. Sahani (2006 (33) PTC 425 (Del.)), which was a parallel importation and IP infringement case of first impression under Indian law concerning IP owned by a multinational electronics company.

Professor Baldia is a registered patent attorney in the U.S. and India, and is admitted to practice in the District of Columbia, New York and India.


Brad Peterson is a co-chair of PLI’s outsourcing program in Chicago and leads the Technology Transactions practice at Mayer Brown.  His practice focuses on outsourcing, data, digital services, and software transactions.

Brad has been ranked as a Band 1 individual for several years in both Chambers Global (Global – US Outsourcing category) and Chambers USA (Illinois Technology and the National Outsourcing categories) (“the gold standard of legal advisers on IT outsourcing and contracts”).  Best Lawyers named Brad as the Information Technology Law "Lawyer of the Year" for Chicago" for 2017.   Legal 500 has for several years named Brad as a Leading Lawyer ("singled out for praise“).

Brad earned an MBA from the University of Chicago Graduate School of Business and a JD from Harvard Law School. Prior to law school, he worked for years as a computer programmer and an IBM Marketing Representative.


George Kimball is a member of the outsourcing and technology practice at Wiggin and Dana LLP.

Before joining his present firm, he was an Associate General Counsel at HP, where his responsibilities included negotiation of major outsourcing engagements; teaching, training and practice tools for HP lawyers, sales executives and account executives; and legal support for cloud and security businesses.

Earlier in his career, he spent more than 30 years in private practice in California, including partnerships at Latham & Watkins, Arnold & Porter, Baker & McKenzie and a Los Angeles technology boutique, Kimball & Weiner LLP.

Since the early 1990s, he has advised clients concerning contracts to outsource information technology and business processes in a wide range of industries. He is author of Outsourcing Agreements: A Practical Guide (Oxford 2010). He has been ranked as a leading outsourcing lawyer by Chambers Global, Chambers USA and Legal 500.

A native of Southern California and resident of Ann Arbor, Michigan, George is a graduate of UCLA, University College London and the University of Michigan Law School, where he teaches as an adjunct lecturer. He is a member of the Bar in California, Michigan and New York and has been admitted to practice before the US Supreme Court.


Janis Meyer is a partner at Hinshaw & Culbertson LLP where she focuses her practice on professional responsibility, risk management and professional liability law, with particular emphasis on attorneys and law firms. Having served as the general counsel of a global firm, Ms. Meyer is familiar with a broad spectrum of professional liability, human resource, and other risk management issues arising in law firms. During her career, Ms. Meyer has also represented and advised clients in a variety of industries, including banking, financial products and insurance.

Professional Background

Prior to joining Hinshaw & Culbertson in January 2015, Ms. Meyer was a partner and the General Counsel of Dewey & LeBoeuf and its predecessor, Dewey Ballantine. She was also a member of the two-person wind-down committee that oversaw Dewey & LeBoeuf's bankruptcy filing in 2012 and the subsequent wind-down of the firm.

Ms. Meyer is a Special Professor of Law at The Maurice A. Deane School of Law at Hofstra University where she teaches "The Nuts & Bolts of Lawyering" and Legal Ethics. Ms. Meyer clerked for the Honorable George C. Pratt in the United States District Court for the Eastern District of New York and the United States Court of Appeals for the Second Circuit.

Professional Affiliations

  • Law360, Legal Ethics Editorial Advisory Board, 2016, 2017
  • New York City Bar Association, Professional Ethics Committee (2014-present)
  • New York City Bar Association, Committee on Recruitment and Retention of Lawyers (1993-2011), Chair (2007-2011)

Ms. Meyer has written numerous articles and is a frequent speaker at bar association and industry conferences on issues of professional responsibility, law firm risk management, diversity, women in the law, and the role of law firm general counsel.


Marcelo Halpern is the firmwide co-chair of Perkins Coie’s Technology Transactions and Privacy practice group.  His practice focuses on complex commercial transactions involving the development, deployment and distribution of technology in a wide variety of industries.

Marcelo counsels multinational FORTUNE 100 companies, startups, emerging growth companies, governments and nonprofits on structuring and negotiating collaboration, development, distribution, license and service agreements.  He provides practical counsel in connection with emerging technologies, including those related to big data analytics, artificial intelligence, fintech and blockchain, internet of things, smart cities, mobile, cloud computing and “as a service” platforms, hardware and e-commerce, as well as the overall interplay of interoperability, industry standards and IP licensing approaches.  He has a strong focus on complex strategic alliances and licensing transactions, outsourcing and ERP implementation, digital strategies—including open source licensing, data security, data use and privacy issues—and other marketing and distribution strategies.

He regularly works with clients in the blockchain industry, advising on technology and platform issues, structuring token offerings, digital currency issues, tokenization of assets, and the development and operation of blockchain based collaborative platforms.  He also has advised on the formation of various blockchain consortiums, including the Enterprise Ethereum Alliance, that develop blockchain platforms in specific industries and create industry standards.

Marcelo was honored by U.S. News - Best Lawyers as the Chicago “Lawyer of the Year” in the technology law category and has been listed since 2004 as one of “America’s Best Lawyers” for technology law by Chambers USA in its annual guide of leading business lawyers.

Outside of his legal practice, Marcelo serves on the board of directors for Youth Guidance, an organization offering school-based programs that empower youth in Chicago to succeed in school and in life.  He also serves on the board of directors for the Lawyers Trust Fund of Illinois supporting civil legal aid services to the underserved.  Marcelo previously served as president of the board of directors for Illinois Legal Aid Online, a trailblazing platform connecting people to the resources they need to resolve their legal problems and interact with the legal system when they cannot find or afford a lawyer.


Rebecca Eisner is a member of the Global Management Committee for the firm and previously served as a member of the Global Partnership Board and as Partner-in-Charge of the Chicago office.  She has over 25 years of experience representing clients in hundreds of matters in three main areas: outsourcing, emerging technologies, and data privacy and security.

In outsourcing, Rebecca has represented clients in many industries in complex global technology and business process outsourcing transactions of all types. She also has experience with re-structuring and re-negotiating outsourcing transactions, in-sourcing, managing acquisitions and divestitures in outsourcing transactions, and termination of outsourcing arrangements, and other strategic sourcing relationships. In emerging technologies, Rebecca has advised clients negotiating with emerging technology providers on private and public cloud SaaS, PaaS and IaaS agreements and on appropriate regulatory, risk management, privacy, data protection, data use and analytics and licensing terms for cloud contracts. She has also represented clients in data acquisition and data analytics agreements. In traditional technology transactions, Rebecca has extensive experience in software development, robotic process automation and artificial intelligence agreements, database licensing and use agreements, ERP implementations, systems integrations, hosting and data center agreements and hardware acquisition and maintenance agreements. In security and data privacy, Rebecca regularly advises clients in global data transfers and privacy issues, privacy assessments, privacy compliance, and appropriate security and privacy measures in supply chain and third party contracting. She also advises on e-commerce issues, such as electronic contracting and signatures, and web site design and review. Rebecca is recognized as one of the leading lawyers in the outsourcing field by Chambers Global (“1” ranking in Outsourcing), Chambers USA (“1” ranking in “Nationwide: Outsourcing” and “Illinois: Technology & IT Outsourcing”) and Legal 500 (recognized in “Technology Outsourcing”). Best Lawyers named Rebecca as its Chicago Technology Lawyer of the Year for 2015. Profiles in Diversity Journal have named her a “Woman Worth Watching”.


Robert M. Finkel
Partner

Robert Finkel is a partner in the Corporate Practice Group and a member of the FinTech Group. Mr. Finkel has more than 20 years of experience in private practice representing leading international corporations and financial institutions in complex commercial transactions with a particular focus on technology and outsourcing. Over the course of his career, he has represented clients in over 100 major outsourcing transactions, across a wide variety of industries and types of transactions.

Mr. Finkel has for many years been a Band 1 Chambers Global and Chambers USA ranked lawyer in the areas of Outsourcing (Global and Nationwide) and Technology (New York). He is one of only a handful of lawyers worldwide to have a Band 1 ranking in the Chambers Global USA and Chambers USA Nationwide and New York categories. Mr. Finkel is widely regarded by outside observers as being one of the leaders in the profession and has been described "as an impressively active practitioner with a sense of gravitas" and one "who gives excellent strategic, business-focused advice." In addition, his "understanding of our company and the nuances of our business is magnificent," commented a client in 2013 for a major legal directory publication.

Practice

Mr. Finkel has extensive knowledge in structuring and negotiating outsourcing transactions and other complex technology and service arrangements. Mr. Finkel’s practice also encompasses mergers and acquisitions, joint ventures and strategic alliances, and software and technology licensing. His clients have included many of the leading domestic and international corporations and financial institutions. Mr. Finkel has published on a broad range of corporate, outsourcing and technology issues in such publications as the M&A Lawyer, the Computer Lawyer, Cyberspace Lawyer, the Journal of Internet Law, Intellectual Property Today, E-Commerce Adviser, Global eCommerce, Director’s Monthly and the National Law Journal, among others.

Honors & Awards

Consistently recognized as a Band 1 ranked attorney by Chambers USA: America's Leading Lawyers for Business for his nationwide outsourcing and New York technology and outsourcing practices

Ranked in Band 1 for outsourcing by Chambers Global: The World's Leading Lawyers for Business 2012, 2013 and 2014, which desribed him as "a leader in the outsourcing industry [who is] enormously respected." A source was also quoted saying "his understanding of our company and the nuances of our business is magnificent."

Recognized as a "fantastic outsourcing lawyer" by The Legal 500 US in the technology: outsourcing category. In the 2013 edition, a source stated that "he is very knowledgeable and always achieves an appropriate balance between legal requirements and business drivers."

Consistently ranked by Who’s Who in American Law for his technology and outsourcing practice

Named by LawDragon as one of the leading lawyers in the US, and recognized as an elite leading lawyer by LawDragon 3000 (previously known as ‘The Finalist’)

Recognized by Euromoney as one of the leading lawyers in both IT and media

Chosen by peers and through independent research as a "New York Super Lawyer" from 2006 through 2013

Professional Activities

Mr. Finkel is a recent member of the Stanford Law School Board of Visitors. He is an adjunct professor at New York Law School, where for the past several years he has instructed an advanced seminar course on Corporate Governance. Prior to attending law school, Mr. Finkel served as an aide to the late United States Senator from New York, Daniel Patrick Moynihan.

Practice Area

  • Transactional
    • Corporate
    • Technology Transactions and Licensing
    • Outsourcing

Education

JD, Stanford University, 1987
MA, International Affairs, Columbia University, 1988
BA, magna cum laude, University of Pennsylvania, 1981

Bar Admissions

New York


John Delaney advises clients ranging from startups to FORTUNE 500 companies on licensing, intellectual property and technology-related matters. John’s experience includes negotiating complex IT and business process outsourcing contracts and service level agreements, joint ventures, software and content development agreements and licenses and similar transactions. John routinely advises clients on matters relating to social media, mobile apps, cloud computing, AI, big data analytics, smart contracts, blockchain and other emerging technologies. 

John also assists clients in identifying online liability issues and developing risk-reduction strategies, including in connection with data scraping, online marketing campaigns, user-generated content, voice platforms and interactive products and services.   

In the media space, John has extensive experience with the licensing of music, TV, film and other content for transmitting, streaming or downloading through traditional distribution channels and online platforms. 

In the social media space, John is highly knowledgeable of the rapidly evolving law of social media, social influencers and interactive marketing. He drafts and helps implement social media policies and guidelines, advises on compliance with the Digital Millennium Copyright Act (DMCA) and Communications Decency Act (CDA) safe harbors, and assists with online tracking and issues in connection with corporate blogs, third-party social media platforms and mobile applications.

John is a frequent author, blogger and lecturer on technology and intellectual property law developments.


Mr. George practices international commercial law and regularly advises clients, both on the buyer and supplier side, on domestic and multi-jurisdictional sourcing and supply transactions, and complex business services transactions involving procurement, human resources, finance and accounting and engineering services. Mr. George is a recognized leader in the areas of outsourcing, system design and implementation, licensing, cloud contracting, robotic process automation, Internet of Things and other disruptive technologies. He regularly advises clients on the issues these technologies raise, both domestically and from a global perspective. Mr. George also helps clients manage the complex intellectual property and data rights issues that these technologies raise.

Practice focus

Mr. George advises clients in the areas of cross-border and domestic sourcing and supply transactions, data and technology transfers and licensing transactions.

Representative clients, cases or matters

SaaS Agreements - Represented technology services provider with respect to international structure and drafting of template cloud contracting and storage services agreements.

Cloud Computing - Represented Fortune 50 medical products and pharmaceutical distribution company with respect to template SaaS contracts and playbook for reviewing and negotiating third party service provider contracts for cloud based solutions.

System Procurement and Implementation - Represented chemical company with respect to procurement and implementation of global enterprise resource planning system, including structuring pricing and liquidated damages provisions to align incentives of provider and client.

Digital Platform - Advised global energy company on regulatory compliance, privacy, security and contractual issues related to digital supply chain platform.

Education

Northwestern University School of Law (J.D., cum laude) (1997)

University of Michigan (B.A.) (1992)

Admission

Illinois~United States (1997)


William A. Tanenbaum is ranked in top tiers by Chambers: America’s Leading Lawyers for Business and in its Global Edition, Who's Who Legal, and Best Lawyers in America in technology, outsourcing, IP, AI and Data Law and recognized for his strength in healthcare technology.  He works closely with clients to bring actionable, industry-informed solutions to their business needs.

Bill has “expertise in technology transactions that puts him at the very top of the market” (Who's Who Legal) and "his technology approach and understanding of healthcare - his domain expertise - is a winning combination.” (Chambers)  According to Chambers, Bill “brings extremely high integrity, a deep intellect, fearlessness and a practical, real-world mindset to every problem.”  Bill is recognized as one of the “leading names” in AI and as a “go-to expert [on] data.” (Who's Who Legal/Global Data Review)  He was named as the “Lawyer of the Year” in IT in New York in 2013 by US News & World Report and one of the Top 30 IT lawyers in the U.S. (Best of the Best/Expert Legal Guide), and as one of the “IAM Strategy 300 - The World's Leading IP Strategists,” as an “IP Star” and as a “Life Sciences Star.” (Managing IP; LMG Life Sciences) Bill was President of the International Technology Association and is the Contributing Editor of the International Comparative Legal Guide to Digital Health 2020

Chambers also finds that Bill has a “solid national reputation,” “is a “prominent figure in technology and outsourcing,” “provides savvy representation,” and “uses his expertise to help [clients] successfully navigate negotiations.”  Bill also “has strong litigation experience” with patent victories in the Court of Appeals for the Federal Circuit (Who's Who Legal).  He was appointed by peer review to the “List of the World’s Leading Neutrals [Arbitrators]” and is Board Member of the Silicon Valley Arbitration and Mediation Center.  He is also a past Vice President of the Society for Information Management, an  industry CIO association (New York Chapter). 

Prior to joining Moses & Singer, Bill was the Chair of IP and Technology Transactions at a Wall Street firm, a partner in an international IP firm, and the Practice Co-Chair of Healthcare Technology Transactions at an Am Law 100 firm. 

 

 


DAVID M. ROSS is an assistant general counsel with the Intellectual Property and Global Technology Unit of the General Corporate Law Section at MetLife.  David’s responsibilities focus on global strategic IT issues including intercompany platform development and integration, IT security and cybersecurity, IT policies and standards, business and technology process migration, and telecommunications matters.  He also has extensive experience in negotiating complex third-party outsourcing agreements, as well as software licenses, data licenses, and other forms of vendor agreements.

He has been on the faculty of the Practicing Law Institute in prior years, was the founding chair of the Committee on Telecommunications Law of the Association of the Bar of the City of New York and also served as the Association’s Administrative Law Committee chair.

Prior to MetLife, David had various legal positions at Lehman Brothers, Guardian Life, Kramer, Levin and Fried, Frank.

David received his B.A. from the University of Illinois, an M.A. in political philosophy from McGill University in Montreal, Canada, and his J.D. from the NYU School of Law.


Sonia Baldia is a partner in Baker & McKenzie's North American International Commercial Practice in Washington, DC. She brings more than 17 years of global sourcing, technology and intellectual property experience, with an emphasis on India. Ms. Baldia routinely advises on outsourcing, international supply chain arrangements, joint ventures, complex licensing, cloud offerings, e-commerce and IP matters as well as cross-border commercial transactions involving India. She has multiple law degrees from the US and India and is qualified to practice law both in the US and India. She is also a registered patent attorney both in the US and India. She possesses a unique combination of international experience and credentials that she leverages to assist companies in her global sourcing, technology and India practices. She is a member of the firm’s Global Outsourcing Steering Committee and the Global India Steering Committee. She has been consistently recognized as a leading outsourcing lawyer by Legal 500 USA and Chambers USA. Prior to joining Baker & McKenzie, Ms. Baldia was a partner at another top tier international law firm in Washington, DC, and an associate professor of law. She has also served as a consultant to the US Agency for International Development and the US Department of Commerce, advising foreign governments on IT, telecom and IP-related development projects. She has been a visiting scholar to the Max Planck Institute on innovation in Munich, Germany, Cambridge University in England, and the Research Center for Advanced Science and Technology in Tokyo, Japan.