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Intellectual Property Law Institute 2020 SF


Speaker(s): Alison P. Buchanan, Andrea L. Gothing, Andrew P. Bridges, Bobby Ghajar, Cara Coburn, Ph.D., Carolyn H. Blankenship, Charan J. Sandhu, Christine Yun Sauer, Courtney Quish, Dan D. Crouse, David Bender, Douglas (Chip) A. Rettew, James B. Kobak, Jr., James M. Kennedy, James Pooley, Jean Liu, Joel Wolfson, Joseph P. Lavelle, Katherine M. Basile, Kathleen E. McCarthy, Lateef Mtima, Laura Berton, Leslie Fischer, Ph.D., Louis S. Sorell, Mark S. Holmes, Mary Albertson, Merri A. Baldwin, Michael S. Borella, Patrick Sharkey, Peter Harvey, Robert Greene Sterne, Robert P. Taylor, Sushupta Sudarshan, Victoria A. Cundiff, William Sloan Coats
Recorded on: Oct. 19, 2020
PLI Program #: 277817

Andrea Gothing serves as a Director at Fortress Investment Group in San Francisco, where she oversees investment monetization strategies, including licensing and litigation.

Before joining Fortress, Ms. Gothing was a litigation partner at the law firm of Robins Kaplan LLP, where she served on the hiring committee and as an instructor in the firm’s trial practice program. Prior to law school, she worked as a semiconductor device engineer at Motorola.

Ms. Gothing earned her law degree magna cum laude from the University of Minnesota. In addition, she has a Master of Science in Electrical Engineering from the University of Minnesota and a Bachelor of Science in Electrical Engineering from Worcester Polytechnic Institute.


Andrew Bridges defends innovators and their companies in important battles typically involving new technologies or business models, often when a company’s or an entire industry’s future is at stake.  His practice includes complex litigation, high-stakes counseling, and policy advice in Internet, copyright, trademark, advertising, unfair competition, consumer protection, trade secret, and commercial law matters.

Among his major litigation successes are:

  • Defending Diamond Multimedia in RIAA v. Diamond Multimedia (challenge to MP3 players)
  • Defending Google in Perfect 10 v. Google (Amazon.com)(challenge to search engine)
  • Defending MasterCard in Perfect 10 v. VISA and MasterCard (challenge to payment processing for alleged infringers)
  • Defending ClearPlay in Huntsman v. Soderbergh (challenge to DVD replay filtering software)
  • Enforcing Bare Escentuals’ rights against Intelligent Beauty (trademark and false advertising)
  • Representing Richard O’Dwyer (UK university student) in avoiding extradition from UK and prosecution in US for operating linking site
  • Representing owner of dajaz1.com in recovering domain after seizure by Homeland Security in Operation In Our Sites
  • Defending Fitbit in Fitbug v. Fitbit (challenge to company name and brand)
  • Defending Giganews in Perfect 10 v. Giganews (challenge to Usenet service provider; obtained award of $6.5 million in attorneys’ fees for prevailing defendants)
  • Defending SoundCloud in Average Joe’s Ent’t v. SoundCloud (claims against sound recording platform by music label and publisher)
He received the California State Bar Intellectual Property Section Vanguard Award (private practice category) 2014, and National Law Journal honored him as an IP Trailblazer in 2017.  He received his law degree from Harvard; an M.A and B.A. from University of Oxford (Merton College) in philosophy and ancient history; and a B.A. from Stanford in Greek and Latin.


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.


Cara Coburn is an experienced life sciences intellectual property professional and leader with a proven track record of working closely with scientists and business executives to develop and implement successful global patent strategies to provide vital protection for biopharmaceutical assets in all stages of development. Prior to Genentech, Cara was an associate at Morrison & Foerster and a judicial law clerk at the Court of Appeals for the Federal Circuit.


Christine Yun Sauer focuses her practice on intellectual property litigation and patent office trials. Yun Sauer represents plaintiffs and defendants ranging from individual inventors to Fortune 500 companies across a vast array of technologies in District Court, the PTAB, and the ITC. Ms. Yun Sauer specializes in evaluating patent portfolios for their market impact and applying econometric techniques and thought in order to isolate the technology’s fair value in litigation. Ms. Yun Sauer further uses this experience to counsel clients on the development, protection, licensing, acquisition, and divestment of patents and core technology. Ms. Yun Sauer further advises her clients on licensing FRAND obligations and implications of the same in district court, international courts, and the ITC.


Courtney Quish is a Director at Fortress Investment Goup.  Fortress’s IP team makes both private equity and credit investments based on the value of a company’s intellectual property assets.  At Fortress, Courtney oversees investment monetization strategies, including licensing and litigation. Before joining Fortress, Courtney held the position of VP, Patent Strategy, M&A at Rovi Corporation, a TiVo Company where she was responsible for designing and implementing IP monetization strategies as well as leading patent acquisitions.  Prior to joining Rovi, Courtney spent ten years in private practice, most recently as a Member of Mintz Levin’s patent litigation practice where she spent the majority of her time representing patent owners in licensing and litigation matters. Courtney earned her Juris Doctor from the University of Michigan Law School and her Bachelor of Arts degree from Middlebury College.


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

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

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

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

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


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)


Dr. Leslie Fischer, Ph.D., J.D. is a Principal Patent Attorney at Sandoz Inc. in Princeton, NJ.  She focuses on global biosimilar development, including freedom to operate, patent clearance, regulatory exclusivity, contractual negotiations, and due diligences.  Dr. Fischer also teaches mechanical patent claim drafting as an adjunct professor of law at Seton Hall Law School, in Newark, NJ. 

Prior to joining the Novartis Group in 2007, Dr. Fischer was an associate attorney at Fitzpatrick, Cella, Harper and Scinto in New York, during which time she provided detailed opinion work for a broad range of clients, consulted on biotechnology litigation, and performed pharmaceutical and biotechnology patent prosecution.

Dr. Fischer holds a J.D. from Rutgers University, and a Ph.D. in Biochemistry from Thomas Jefferson University in Philadelphia. Her Ph.D. thesis focused on the interaction of Bone Morphogenetic Proteins and Wnts during mouse limb development, with her work appearing in Osteoarthritis and Cartilage, the Journal of Cellular Biochemistry, and the Journal of Biological Chemistry.

Dr. Fischer has appeared as a speaker and panelist in numerous public forums, and for the past seven years, she has also acted as co-chair of American Conference Institute’s “Advanced Summit on Life Sciences Patents" meeting, which is held yearly in New York, NY.


James B. Kobak, Jr. is Senior Ethics Counsel and former General Counsel at Hughes Hubbard & Reed LLP where he formerly chaired its Practice Standards, Procedures and Ethics Committee and Antitrust Practice Group.

He is a member of the ABA Center for Professional Responsibility, the Ethics Institute and Ethics Committee of the New York County Lawyers Association, the Committee on Standards of Attorney Conduct of the New York State Bar Association, the Professional Discipline Committee of the New York City Bar Association and the Association of Professional Responsibility Lawyers. Mr. Kobak is a past president of the New York County Lawyers Association. Mr. Kobak serves as one of two editorial advisors to the New York ethics treatise published by Oxford University Press, and is a member of the editorial advisory board of Law 360 Legal Ethics. He was a founder of NYCLA's American Inn of Court and was awarded NYCLA's Boris Kostelanetz President's Medal in 2006.

Mr. Kobak is a graduate of Harvard College and the University of Virginia Law School where he was the Associate Editor of the Law Review. Mr. Kobak served as lead counsel to the SIPA Trustee for the liquidations of Lehman Brothers Inc. and MF Global, Inc. He taught seminars on antitrust/intellectual property issues for over a decade at Fordham and University of Virginia Law Schools and served as editor of the ABA Antitrust Sections' publication Intellectual Property Misuse: Licensing and Litigation.


Jean I. Liu is General Counsel, Executive Vice President, Legal Affairs and Corporate Secretary for Seattle Genetics 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 where she was a Harlan Fiske Stone Scholar.


Jim Pooley is a Silicon Valley lawyer representing clients in trade secret and technology-related commercial disputes.  He advises companies on trade secret strategy and management.  He also serves as a special master, expert witness and arbitrator.

Jim is an author or co-author of several major works in the IP field, including his treatise Trade Secrets (Law Journal Press) and the Patent Case Management Judicial Guide (Federal Judicial Center). His most recent business book is Secrets: Managing Information Assets in the Age of Cyberespionage (Verus Press).

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

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

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

 

 


Joseph Lavelle is an experienced patent lawyer, focusing primarily on the preparation and trial of patent infringement cases.

Joseph also has handled a number of successful appeals to the Court of Appeals for the Federal Circuit.

Patent Litigation

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.

Antitrust

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 (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)).

 


Louis S. Sorell is Senior Patent Counsel at Google Inc. in New York City.  Prior to joining Google in 2011, Mr. Sorell was in private practice, specializing in patent law.  Mr. Sorell received his B.E. degree in Chemical Engineering from Cooper Union, his M.S. degree in Chemical Engineering from Georgia Institute of Technology, his J.D. degree (cum laude) from Pace University Law School, and his LL.M. in Trade Regulation-Intellectual Property from New York University Law School. 


Mary Albertson is Senior Director of Commercialization at the Center for Technology and Venture Commercialization (TVC) at the University of Utah. TVC is responsible for managing the transfer of university technology for commercialization through both licensing and startup formation. Previously she was at the Office of Technology Licensing at Stanford University where she worked for over 26 years. Mary is also a Past President of AUTM, an organization of professionals involved in transferring technology for commercialization.

Mary has been a frequent speaker on and educator for university technology transfer at both national and international conferences.


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


Michael S. Borella is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm’s Software & Business Methods Practice Group. Dr. Borella provides legal and technological advice in support of validity, infringement, patentability analyses, and litigation matters. His expertise includes networking, Internet telephony, wireless communication technologies, telecommunications, artificial intelligence and machine learning, financial transactions, cloud computing, routing, TCP/IP, computer graphics and imaging, voice and facial recognition, robotics, and mobile applications.

Dr. Borella has drafted or been involved in the prosecution of hundreds of patents in the U.S., as well as in other jurisdictions. He has experience in numerous phases of patent litigation, including invalidity analysis, discovery, motion practice, and claim construction. His practice also includes patentability, validity, and infringement analyses, as well as client counseling with respect to the procurement of all types of intellectual property rights.

Dr. Borella has written extensively on the patent-eligibility of computer-implemented inventions, and has been a featured presenter for several seminars on the topic as well.

Prior to joining MBHB, Dr. Borella served on the management teams of Fastmobile, UTStarcom, and 3Com, and was in charge of several large software engineering projects, managing over 75 software engineers on two continents. He also held the position of adjunct professor at Northwestern University, and has lectured on patent law at the Chicago-Kent College of Law. Dr. Borella is a named inventor on more than seventy U.S. patent applications and has authored a similar number of academic and technical papers related to networking, telecommunications, and computer science.


Mr. Wolfson is a Director and Associate General Counsel in the Office of General Counsel for the Bank of America Merrill Lynch business in New York City.  He concentrates on bank/broker-dealer contracts, computer contracts, intellectual property, commercial, and corporate matters. 

He had been a partner in Blank Rome’s Washington, D.C. office, with a concentration in transactions, intellectual property, corporate law, and public policy for the: financial industry, information provider, biotechnology, software, and computer fields. 

Prior to that, Mr. Wolfson was Vice President and Associate General Counsel and head of The Nasdaq Stock Market’s e-Commerce and Intellectual Property Practice Group. 

His publications include (1) a multi-volume treatise on high-technology contract law; and law review articles on: (2) First Amendment protections against liability for incorrect information; (3) express warranties and published information; (4) the ability of licensing law and copyright law to peacefully co-exist; and (5) class action suits in bankruptcy court.

 


 


Patrick Sharkey is a thoughtful, efficient and effective trial attorney who has managed and tried a variety of cases. Clients in the professional services and financial services sectors, including high-level C-Suite and finance professionals, seek his counsel. Pat has experience in real estate litigation, including eminent domain challenges and damage awards. He has tried eminent domain taking and land valuation cases before juries and administrative agencies in Massachusetts and Maine.

Also, Pat is Mintz's advisor with respect to matters of ethics and professional responsibility and he has held leadership roles on various bar association professional ethics committees.

Following graduation from law school, Pat clerked for the Hon. June L. Green, US District Court for the District of Columbia and then joined Mintz.

Education

  • Northeastern University (JD)
  • University of Massachusetts (BS)

Admissions

  • Massachusetts
  • United States District Court for the District of Massachusetts
  • United States Court of Appeals for the First Circuit
  • United States Supreme Court

Involvements

  • Former Chair, Boston Bar Association Committee on Professional Ethics
  • Former Chair, Joint Bar Committee on Judicial Nominations
  • Former member, Standing Advisory Committee to the Supreme Judicial Court on the Massachusetts Rules of Professional Conduct

Practices

  • Commercial Litigation
  • Securities Litigation
  • Real Estate Litigation

Industries

Insurance & Financial Services


Peter Harvey is the founder of Harvey & Company in San Francisco. His practice emphasizes trademark, trade dress, copyright, trade secrets, and unfair competition litigation in U.S. federal courts. He also advises on IP rights clearance, registration, and management. He has assisted clients in a wide variety of industries, including alcoholic beverages, entertainment, healthcare, real property development and management, tourism, clinical pharmaceutical research, food and wine, and consumer products and services.

Mr. Harvey’s more significant cases include representing an Italian motor scooter manufacturer against a former Indian licensee selling infringing copies of the scooter (Piaggio & C.S.p.A. v. Bajaj Auto Ltd.), securing a defense verdict following a jury trial against a Canadian creator of classical music products for children, and its U.S.-based distributor, in a trademark infringement action (Mavrides v. Hammond); defending a trademark infringement action brought by Jacques Cousteau and The Cousteau Society against Mr. Cousteau’s son arising out of the latter’s use of the Cousteau name in connection with a luxury eco-resort in the Fiji Islands (The Cousteau Society v. Post Ranch); and securing the Ninth Circuit’s affirmance of a summary judgment involving tequila bottle trade dress (E. & J. Gallo Winery v. Proximo Spirits, Inc.).  In addition to his trial practice, Mr. Harvey has served as an expert witness and mediator in a variety of cases involving trademark and other IP issues.

Mr. Harvey is identified in Who’s Who Legal and the World Trademark Review’s WTR300 as a recognized international expert in trademark law and has been honored among Northern California Superlawyers for many years. He has been very active in the International Trademark Association (INTA). He currently serves on INTA’s Trademark Mediators Network and its Academic Committee.  He was an INTA board member in 1994-1996, has chaired several INTA committees, served as INTA’s Counsel in 2008-2009 and received the INTA President’s Award in 2012. Since 2001, Mr. Harvey has taught Entertainment & Media Law as an Adjunct Professor at the University of San Francisco School of Law. He was honored as the Adjunct Professor of the Year in 2013.  Since 2016, he has co-directed the law school’s Summer Externship Program in European Intellectual Property Law.

Mr. Harvey is a frequent speaker and widely-published author. For his full curriculum vitae, see his firm’s website at www.harvey.law.

After a childhood in suburban Chicago and graduation from Lake Forest High School in Lake Forest, Illinois, Mr. Harvey attended Cornell University’s College of Arts and Sciences, graduating magna cum laude in economics and with distinction in all subjects.  He received his law degree from Yale Law School. He has practiced law in San Francisco ever since. Contact Peter Harvey at pharveyr@harvey.law.


Robert Greene Sterne is a founding director of Sterne, Kessler, Goldstein & Fox P.L.L.C. in Washington, D.C.  He has extensive expertise in AIA post issuance proceedings and concurrent patent litigation, USITC 337 investigations, Federal Circuit appeals, EU and China enforcement, reexamination, patent monetization and licensing, and corporate intellectual property best practices (CIPO and Board of Directors). 

He is a registered U.S. patent attorney, has spoken and written extensively on these topics, was named in 2015 by the Financial Times as one of the "Top Ten Legal Innovators in North America," was named in 2015 by Law360 as one of  “The Top 25 Icons of IP,” and was named in 2014 by The National Law Journal as an “Intellectual Property Trailblazer and Pioneer.” He is editor in chief of Patent Office Litigation (2012), and Patent Office Litigation 2nd Edition (2017)(Thomson Reuters). He is counsel in more than 200 PTAB contested proceedings and has played a key role in precedent-setting U.S. case law, including: In re Beauregard, (Fed. Cir. 1995), KSR (2007), i4i (2011), In re Jung (Fed. Cir. 2011), ETG (Fed Cir. 2012), and Hear Wear (Fed. Cir. 2014).

Among many honors, he is the recipient of the Sedona Conference Award for Excellence in Advanced Legal Education (2004), the Sedona Lifetime Achievement Award (2012), and the 2012 Attorney of the Year “Good Scout” Award for his leadership in community service. He has been at the forefront of software patent protection, having represented IBM in the precedent setting In re Beauregard case that produced the 1996 USPTO software patent guidelines and having delivered in 1985 the seminal AI and Expert System Legal Protection presentation before the AIPLA. Sterne Kessler is ranked in 2019 as the 4th largest US IP specialty firm and 322nd largest US law firm.


Sushupta T. Sudarshan, Assistant General Counsel, Intellectual Property, leads Northrop Grumman’s IP department in Falls Church, Virginia. 

Before joining Northrop Grumman, Sushupta was a Senior IP Counsel at GE Aviation in Cincinnati, Ohio.  During her 8 years at GE, Sushupta supported various GE Aviation business units including Commercial Engines and Military Systems. 

Sushupta spent the first 8 years of her career in private practice as a patent attorney in Washington, D.C.  She earned her J.D. from The George University Law School and a B.S. degree in chemical engineering from the University of South Carolina. 


Victoria A. Cundiff is a partner at Paul Hastings resident in New York, where she is a leader of the Firm’s nationally ranked global trade secrets litigation practice.  She works with clients in a variety of industries including technology, software, media, financial services, insurance, pharmaceutical, Ecommerce, manufacturing and sales and distribution organizations. She has tried trade secrets and related commercial and intellectual property disputes throughout the United States and before a variety of arbitration and mediation tribunals.  As important is her work to help organizations avoid litigation.  She has designed contracts, training programs, and confidential verification protocols for investigating and resolving intellectual property use and ownership disputes in and outside court. 

Ms. Cundiff writes and speaks frequently on intellectual property issues. She particularly enjoys sharing her experience with students.  She is a Visiting Lecturer in Law at Yale Law School, where she teaches intellectual property law and at the University of Pennsylvania Law School and the University of Virginia Law School, where she teaches trade secrets law and has spoken at WIPO’s summer school for lawyers, professionals and officials from around the world.

Ms. Cundiff is the Vice Chair of the Sedona Conference Trade Secrets Working Group and has served as the Vice Chair of the IPO’s Committee on Trade Secrets and Chair of the New York State Bar Association’s Intellectual Property Section.  She is listed in The Best Lawyers in America; Chambers; Legal 500 (which has named her to its “Hall of Fame” nationally in Trade Secrets law); and New York Super Lawyers, among other directories. She is on the Board of the United States Senate Youth Program Alumni Association and on the Advisory Board of the Yale Law School Center for the Study of Corporate Law. She is a member of the American Law Institute.  She provides legal services to Open Style Lab, a 501(c)(3) organization committed to making style accessible for everyone, regardless of their cognitive and physical abilities, and has served on the Board of the York Theatre Company, a 501(c)(3) organization a 501(c)(3) organization based in Manhattan that is devoted to developing new musicals and talent and rediscovering prior gems.


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.


Over the past 20 years as an international commercial Tech and IP attorney, Laura has represented a wide array of entrepreneurs and private companies in complex business transactions as well as their ongoing needs as they arise in the areas of information technology, outsourcing, cloud computing, software development, licensing, telecommunications, e-commerce and data protection.

Laura frequently advises suppliers and acquirers on a range of technology related contracts including licensing, IT and outsourcing contracts and complex technology procurements. She works on large scale multinational outsourcing projects and also acts as an interim general counsel to start-ups or more established companies restructuring their in-house capability.

Beyond her technology and commercial contract expertise, Laura focuses on UK and European digital regulation for online platforms, social media companies and emerging technologies (AI, automation, AR/VR etc.), guiding businesses through the complexities of the UK and EU’s rapidly evolving online regulatory environment.

Thanks to her language skills and time spent on in-house secondments, Laura is also used to helping businesses move into new jurisdictions, advising on the expansion process and the adaptation to local legal practices. She also has extensive experience of working with, and co-ordinating and managing, foreign counsel and advising on multi-jurisdiction technology projects.

Laura grew up between Brussels and Luxembourg and has travelled extensively for leisure and business. She spent 7 months in Saudi Arabia heading up a legal team and has a particular interest in advising businesses on their international expansion and ensuring their legal compliance evolves with their business strategy.

Laura was named a "rising star" in Intellectual Property in Super Lawyers and regularly lectures on European/UK Digital regulation, Brexit, European licensing, Artificial Intelligence and negotiation.


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.


Carolyn H. Blankenship is General Counsel, Innovation & Product for Thomson Reuters.  She joined Reuters in 2001 and before that held a variety of IP-related positions as both in-house and outside counsel, including stints at Skadden, Arps and Priceline.com.

Carolyn’s practice focuses on fostering innovation and protecting those innovations throughout the company.  In addition, Carolyn oversees all patent litigation and supports the IP aspects of the company’s M&A activity. 

As an undergraduate, Carolyn attended the Massachusetts Institute of Technology for two years and went on to earn a B.A. in Biology from Harvard College.  She has a J.D. from Arizona State University College of Law and clerked for the Hon. Noel Fidel of the Arizona State Court of Appeals.


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.


Katy Basile, a WTR Global Leader 2019, is describe as, “Among high-level clients for whom strong, distinctive brands are pivotal, Katherine Basile is a sought-after font of trademark protection and enforcement expertise. The former in-house counsel manifests a rare faculty for providing concise, practical and business-tailored counsel backed up by exceptional legal rigour.”  Katy is particularly proud of her success in ADR proceedings to resolve numerous trademark cases to her clients’ satisfaction.

Katy is a current member, and a former National Chair, of INTA’s Saul Lefkowitz Moot Court Committee, a member of the INTA Presidential Task Force on Committee Structure, Participation and Function (2016), and a member of ECTA’s prestigious Law Committee. She also is co-Chair of the ChIPs Silicon Valley Chapter; a San Jose Business Journal Women of Influence (2012); and a recipient of Reed Smith’s Sean Halpin Award for the pro-bono asylum work she and colleagues undertook at the ICE Detention Facility in Dilley, Texas in 2018. Katy is a member of Reed Smith’s firmwide pro-bono committee, and is a Silicon Valley Office representative to Reed Smith’s women’s initiative WinRS and Reed Smith’s Diversity and Inclusion firmwide committee.



Charan Sandhu is a partner in Weil’s Technology & IP Transactions practice and is based in New York. Ms. Sandhu concentrates on the areas of complex technology transactions and intellectual property. She represents clients in matters relating to technology transfer, and the development, acquisition, use and commercial exploitation of technology and intellectual property. She has extensive experience in a wide variety of complex technology transactions, including technology development and licensing agreements, joint ventures, strategic alliances, professional services agreements, outsourcing arrangements, distribution agreements, and settlements of IP litigation.

Ms. Sandhu is consistently recognized by Chambers USA as a leading lawyer for Technology & Outsourcing, where clients have praised her for “consistently producing work of the highest order.” She is also recognized by Legal 500 US; IAM Licensing 250’s “World’s Leading Patent & Technology Licensing Lawyers;” and IAM Patent 1000. She was also named an “IP Star” for licensing in New York by Managing Intellectual Property’s IP Stars; recognized as a Financial & Transactional Life Science Star by LMG Life Sciences Guide; named among the 2015 “Top Women” for Intellectual Property in New York by Super Lawyers; and shortlisted in the “Best in Technology” category at the Americas Euromoney Women in Business Law Awards 2016.

Ms. Sandhu is a member of the Firm’s Diversity Committee. She is also actively involved with the Firm’s pro bono efforts and regularly represents Kids in Need of Defense. Ms. Sandhu was inducted into the YWCA’s Academy of Women Leaders for her outstanding professional achievement, civic commitment and leadership. She was also featured in Profiles in Diversity Journal’s 11th Annual WomenWorthWatching® issue.


Douglas (Chip) Rettew is a partner in the Washington, DC office of Finnegan Henderson. He has been recognized in World Trademark Review WTR 1000 as ”[o]ne of the best litigators in the country with an unbelievable success rate,” and “a go-to litigation lead for world-famous consumer brands.” He focuses his practice on trademark, false advertising, and unfair competition litigation and disputes.

Doug litigates cases involving a broad range of issues, including traditional trademarks, false advertising, product disparagement, rights of publicity, unfair competition, trade dress, design patents, and domain names. Doug is also involved in advertising issues and counseling, right-of-publicity matters, and trademark and copyright prosecution and licensing. Clients include Under Armour, Bridgestone, the NFL Players Association, Capital One, Subaru, the Association of Tennis Professionals (ATP), and PNC Bank. 

Doug has first-chair jury and bench trial and appellate experience and has argued appeals before the U.S. Courts of Appeals for the Federal, Fourth, and Eighth Circuits. He also litigates oppositions, cancellations, and ex parte appeals before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO). Doug has significant experience in obtaining (and defeating) temporary restraining orders (TROs) and preliminary injunctions, including those involving counterfeiting and ex parte seizures. He previously served as leader of the firm’s trademark and copyright practice and is currently serving on the firm’s compensation committee.

 


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.