Skip to main content

Advanced Licensing Agreements 2020 SF


Speaker(s): Ako S. Williams, Brian S. Kelly, Danika B. Vittitoe, David W. Tollen, Erik Oliver, Ira Jay Levy, Joseph Yang, Laura M. Franco, Marcelo Halpern, Mark G. Tratos, Mark S. Holmes, Peter J. Kinsella, Sean Hogle, Thomas J. Klitgaard
Recorded on: Jan. 27, 2020
PLI Program #: 276863

Ako Williams is Vice President, General Counsel and Corporate Secretary of Ushio America, Inc., in Cypress, California. Ushio America is a leading provider of light sources and solutions for a variety of applications including scientific, medical, semiconductor, entertainment, horticulture, and architectural applications.  Ushio America is a subsidiary of Ushio Inc., a publicly traded global manufacturer in Tokyo, Japan.  In her role as General Counsel and Corporate Secretary, Ms. Williams oversees all of the company’s legal, compliance, risk management, and corporate governance matters.  As a native of Japan, Ms. Williams uses her language skills and deep understanding of both Japanese and U.S. business cultures in providing effective legal and strategic advice to Ushio America and other group companies.  Ms. Williams also serves on the board of directors of KA Imaging Inc. in Kitchener, Canada, a developer of portable multi-energy x-ray detectors and micro-CT scanners for a wide variety of applications in healthcare, veterinary, security, automotive, non-destructive testing, food inspection, and other areas.

Previously, Ms. Williams was an Assistant General Counsel and Compliance Officer of Christie Digital Systems USA, Inc. (an affiliate of Ushio America), and an Assistant General Counsel of Apria Healthcare and also practiced commercial and IP litigation and corporate transactions at major law firms. 

Ms. Williams currently serves as a Council Leader for the U.S.-Japan Council and Program Chair for the International Legal Affairs Network of the Association of Corporate Counsel.  She has previously served on the Board of Governors of the Japanese American Bar Association of Greater Los Angeles and the Board of Directors of the Women In Technology – Orange County. 

Ms. Williams received her B.S., highest distinction, from Northwestern University and J.D. from Loyola University Chicago School of Law where she was on the school’s law review and Editor-in-Chief of the Loyola Forum of International Law.

 


Brian Kelly is a partner in the firm’s Los Angeles office.  He has extensive experience counseling clients at all stages of growth in the commercialization of intellectual property. He focuses his practice on structuring, negotiating and documenting technology-based transactions. These transactions, many of them with international dimensions, have involved clients in a variety of industries, including health IT, financial services, retail, distribution and telecommunications.  He also advises clients on open source technologies, data security and privacy issues, and intellectual property aspects of mergers, acquisitions, development and distribution relationships, and strategic alliances.


Danika Vittitoe is the head of business and legal affairs for Global Eagle Entertainment Inc. (NASDAQ: ENT), a media and content producer and distributor and satellite internet connectivity provider to mobility markets across the globe, including aircraft in flight, ships at sea, and off the grid land operations. Danika’s previous legal experience includes in-house positions with Snap, Inc. (parent company of Snapchat), Yahoo Inc. (now Verizon Media), and OWN: Oprah Winfrey Network. Danika began her legal career as a litigation associate with Arnold & Porter LLP. She obtained her law degree from the University of California, Hastings College of the Law, and her undergraduate degree from Dartmouth College.


Erik Oliver is a partner in at Richardson Oliver Law Group LLP specializing in patent and business matters, including licensing, buying, selling, valuation, prosecution and business processes.

He provides data driven advice using his firm’s proprietary database of patent market information covering more than 115,000 patents and over $12B worth of deals. He has patent portfolio licensing and marketing experience resulting in millions worth of patent license bookings.

Prior to founding the ROL Group, Erik was a Vice President at ThinkFire Services USA, Ltd’s Silicon Valley office. Erik has held various senior positions with a range of responsibilities at Rambus Inc., Synopsys, Inc., and a number of Silicon Valley startups. He was also previously an associate at Wilson Sonsini Goodrich and Rosati.

Erik has over 40 published articles and lectures on patent strategy, intellectual property, and related business issues at Stanford, Santa Clara, and the Center for Intellectual Property at Chalmers.

Erik is a member of the California and District of Columbia Bar and a United States Patent and Trademark Office registered patent attorney.

Erik has a B.S. in Computer Science/Mathematics from Haverford College, an M.S.E. in Computer Information Science from University of Pennsylvania, and a JD from the University of Pennsylvania.


Joseph Yang is an IP transactions partner at PatentEsque Law Group, LLP.

Joe specializes in structuring & negotiating tech/IP-centric deals (technology transactions, strategic alliances, patent licensing/sales, standards body issues, IP aspects of M&A) and in using IP as strategic business assets. He has led hundreds of deals involving billions of dollars in and across the information technology, electronics, entertainment, consumer goods, healthcare, energy, chemical & manufacturing industries. Reflecting these diverse experiences, Joe is often retained to “bridge the gap” in cross-industry deals (e.g., joint ventures, IoT, SaaS & “big data” deals) between companies whose industries historically didn’t interact with each other.

Joe is also an expert witness for high stakes tech & patent licensing disputes.

Joe teaches the "Technology and Patent Licensing" course at Stanford Law School, and has taught the “Patent Law and Policy” course at U.C. Berkeley School of Law. Joe is a long-time chair of the “Advanced Licensing,” “Advanced Patent Licensing” and “Understanding the IP License” courses at the Practising Law Institute in NYC, SF and Chicago. He has written for journals & books, and been cited by courts & treatises, on licensing & patent law.

Joe previously served as VP & General Counsel of Cryptography Research, Inc. (CRI), negotiating deals under which 10+ billion devices/year are made by its licensees in the smart card/phone, semiconductor, pay TV, printer & other fields. He also developed, enforced & defended CRI’s patent portfolio, and played a key role in CRI’s successful sale in a series of M&A deals (with Macrovision & Rambus) valued at $400+ million.

Before that, Joe co-founded and later led the “IP Strategy & Transactions” practice based in the Silicon Valley office of the world’s largest law firm (Skadden, Arps). He has also practiced at other large multinational law firms, and served as an arbitrator.

Joe has been named one of the “World’s Leading IP Strategists,” “World’s Leading Patent Professionals” and “World’s Leading IP & Technology Licensing Lawyers” by Intellectual Asset Management (IAM) publications. IAM named Joe as 1 of only 10 "highly recommended" IP transactional attorneys in California -- the only one from a boutique (non-AmLaw 100) firm:

“Joseph Yang is a major-league deal maker and licensing authority” as well as “a transactional mastermind” with arbitration and litigation skills that make him a formidable negotiator.” “He … is a creative problem solver who can clearly articulate legal risks and provide effective advice to guide business decision making.”

Joe is “one of the best expert witnesses you could hope to deal with. He considers all the issues before committing to an opinion, and his positions are always rock solid”.

He is also profiled in “Marquis Who’s Who in American Law”, “Marquis Who’s Who in America” and “Marquis Who’s Who in the World”, and named to the California SuperLawyers list.

Joe also serves on the advisory board of the Licensing Executives Society - Silicon Valley chapter, and is a board member of the Asian Pacific American Bar Association of Silicon Valley.

Joe was originally a research engineer in the aerospace & energy fields. He holds a J.D. from Stanford Law School and a Ph.D. (engineering) from the California Institute of Technology, where he has been a board member of the Caltech Associates & Caltech Alumni Association.


Laura Franco is of counsel in the firm’s San Francisco and Silicon Valley offices and focuses her practice on intellectual property counseling and litigation, including trademark, copyright, and brand enforcement and protection. Laura is a “popular choice among brands of all stripes” (WTR 1000), including start-up and Fortune 500 companies in diverse industries, from consumer products to financial institutions. Laura’s trademark practice includes thoughtful and strategic counseling to ensure a brand’s integrity, and developing and applying practical branding strategies to coincide with clients’ business goals. She has extensive experience representing global companies in trademark, copyright, unfair competition, false advertising and domain name litigation, in federal and state courts, before the TTAB and in private arbitration. Laura also works with clients to develop and execute registration and enforcement strategies for global portfolios; negotiating and drafting IP licenses; and handling domain name portfolio management and enforcement. Laura’s client-base is focused in the automotive, financial services, fin-tech, food and beverage and technology sectors.  Laura is Co-Chair of LLAW, Winston’s Latinx lawyer affinity group.

Experience

  • Manages the global trademark portfolios for numerous brands in the FinTech, Food and Beverage and Consumer Goods spaces, including CITADEL, CHARLES SCHWAB (previously), DRISCOLL’S, FAGE, QUEST and PAN AM.
  • Represents clients in the hospitality, retail, food and automotive industries in acquisition, divestment and licensing of strategic trademark portfolios.
  • Represents Brake Parts, Inc. in connection with domain name portfolio management and enforcement.
  • Represents several investment companies in connection with brand protection and portfolio management.
  • Representation of numerous private equity groups in their acquisition of high-profile brands in the clothing and food and beverage industries.
  • Counsels and prepares commercial agreements for clients in the food and beverage industry.

Activities

Laura’s professional affiliations include: International Trademark Association; California Bar Association – Intellectual Property Section (past Vice-Chair International Interest Group); Women’s Intellectual Property Lawyers Association (past Secretary). Hispanic National Bar Association; San Francisco La Raza Lawyers Association; Co-Chair of LLAW, Latinx Lawyers at Winston; Board Vice-Chair, Puente de la Costa Sur.

Credentials

Laura received her B.A., cum laude, in Economics and Latin American Studies from University of California, Berkeley in 1991 and she received her M.P.P. in Public Policy from Harvard in 1994. She received her J.D., from the University of California, Berkeley in 1995 where she was a member of the La Raza Law Journal.


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.


Mark G. Tratos is the Founding Shareholder of Greenberg Traurig’s Las Vegas office and a long-time member of the University of Nevada and the Boyd School of Law Adjunct Facility.

Mark’s practice of the past four decades has focused upon the creative protection of artists, entertainers, athletes, producers and venues.  He has represented clients in federal court actions and appeals across the country, negotiates talent licenses and entertainment contracts for both celebrities and their estates. 

Since 1990, he has authored the Nevada chapter of INTA State Law Handbook.  Since 2003, he has been the author of the New York Bar Association Entertainment Treatise chapter: Entertainment on the Internet: The Evolution of Entertainment Production, Distribution, Ownership and Control in the Digital Age.  Since 2010, he has authored that treatise chapter Exhibitions: Art and Artifact Exhibits as an Expansion of the Entertainment Industry.

Mark has been AV rated for more than three decades; has been recognized by Legal Elite, Super Lawyers, and Best Lawyers in America which has included him since 2003.  His peers have voted him Lawyer of the Year eight times in his fields of practice.  Mark is the Past Board Chair of the National Judicial College.  He is Co-Founder and Past Chairman of the Discovery Children’s Museum in Las Vegas; and serves as Secretary of and outside counsel for the Board for the Smith Center for Performing Arts.


Peter Kinsella is a partner in the firm's Technology Transactions & Privacy and Intellectual Property practices. His practice is focused on advising start-up, emerging and large companies on technology, licensing and intellectual property transaction matters. He is a frequent lecturer on licensing and technology issues. Prior to joining the firm in 2010, Pete was a partner with Faegre & Benson. Prior to that, he worked in various legal capacities with Qwest Communications International, Inc. (formerly U S WEST, Inc.) in Denver and Honeywell, Inc. in Minneapolis. 

Pete offers extensive experience structuring and negotiating domestic and international agreements in a wide variety of areas, including: cloud services, outsourcing, product development, technology transfer, telecommunications, data sharing, complex procurement, product distribution and sales, contract manufacturing, and a wide variety of patent, trademark and copyright licenses. He offers significant international experience, including, intellectual property holding companies, export control and international intellectual property issues. Pete also regularly handles intellectual property issues in connection with public and private company mergers and acquisitions, including due diligence and licensing issues. The value of several of these transactions has exceeded one billion dollars.

Pete has been materially involved in a number of high profile intellectual property disputes in a variety of industries, including the semiconductor, telecommunications, computer networking, automotive, clean- tech and health sciences industries. In 2005, he wrote significant portions of the appeal brief filed on behalf of AWH Corporation in the United States Court of Appeals for the Federal Circuit en banc proceedings, Phillips v. AWH Corporation, concerning the procedures that should be used to determine patent claim construction. Most recently, Pete successfully represented a third party semiconductor tooling manufacturer in connection with a government ITC investigation seeking to ban the importation of hard drives into the United States.

As a registered patent attorney, Pete counsels clients on patent matters, including, infringement, validity, and pre-litigation issues. While at U S WEST, Inc. he was responsible for managing over 1500 trademark applications and registrations in 62 countries and all trademark opposition and litigation proceedings.


Sean Hogle has been practicing law for more than 25 years. He is managing partner of the San Francisco office of Rooney Nimmo PC, the managing partner and founder of Sean Hogle PC (epiclaw.net), and the CEO and founder of Redline (redline.net), an exclusive collaboration environment for lawyers. He practices in the areas of technology, intellectual property, M&A, and commercial law for venture clients worldwide. Sean is a frequent lecturer and writer on open source software and licensing.


In 2011, Tom received the prestigious Magnolia Silver Award from the Shanghai Municipal Government’s Foreign Affairs Office for his “valuable support to Shanghai’s development.”  He was one of only six Americans and the only attorney to receive the Award.  He helped open the China market for Pacific Telesis International and for Tandem Computers.  In 2018, he was a member the faculty at the University of San Francisco Law School as an Adjunct Professor of Chinese Business Law.  He is currently a non-equity partner at the law firm of Dillingham & Murphy, LLP, in San Francisco and in private practice as an international and domestic arbitrator and mediator and commercial lawyer.

Starting in 1985, Tom was off and on Chair of a business management training program for mid-level Chinese business managers in Shanghai in conjunction with the Shanghai Foreign Affairs Office and China’s State-Owned Assets Supervision and Administration Commission-Pudong Branch.

Ll.B., Boalt Hall, University of California Law School, Berkeley, 1961

Graduate, Monterey Institute of International Studies Training for Service Abroad Program (Chinese Language Instruction), 1979

Law Clerk to Supreme Court Justice William O. Douglas, 1961 Term

Arbitrator, International Centre for Dispute Resolution (American Arbitration Association, New York)

Author: “Updated Insights on Arbitrating Disputes with Chinese Business Entities,” USLAW MAGAZINE (2010)

Lecture: “The Influence of Culture, Religion, and Confucianism on Arbitration in the East Asian Countries,” Northern California International Arbitration Club (2011)


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.


David Tollen is an attorney, trainer, author, and expert witness. He is the founder of Tech Contracts Academy™, which provides training on IT contracts, for both lawyers and businesspeople—including contract managers, procurement officers, and IT staff. He’s also the author of the American Bar Association’s bestselling manual on IT agreements, The Tech Contracts Handbook: Cloud Computing Agreements, Software Licenses, and Other IT Contracts for Lawyers and Businesspeople.

David practices law with Sycamore Legal, P.C.® in San Francisco. He represents buyers and sellers in technology transactions, including IT outsourcing contracts and other large-scale agreements. He also provides advice and assistance related to e-commerce, social media, and intellectual property.

Finally, David serves as an expert witness in litigation related to IT contracts. He addresses industry custom and practice surrounding software licenses, software-as-a-service (SaaS) agreements, other cloud computing transactions, and IT professional services contracts.

David graduated with honors from Harvard Law School and has degrees from Cambridge University in England and U.C. Berkeley. In addition to his legal work, he’s the author of an award-winning novel that uses fantasy to teach history, called The Jericho River.