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Outsourcing 2021: Innovation and Disruption


Speaker(s): Adam Aft, Brad L. Peterson, George Kimball, J. Richard Supple, Jr., James R. Ferguson, John F. Delaney, Lei Shen, Marcelo Halpern, Oliver Yaros, Peter R. George, William A. Tanenbaum
Recorded on: Oct. 21, 2021
PLI Program #: 306089

Adam Aft helps global companies navigate the complex issues regarding intellectual property, data, and technology in M&A and technology transactions. He is the lead in Chicago for the Firm’s Technology, Media, and Telecom industry group. Adam also served as a law clerk to the Honorable Leslie H. Southwick of the US Court of Appeals for the Fifth Circuit and the Honorable Theresa L. Springmann of the US District Court for the Northern District of Indiana.

Adam advises clients on transformational activities, including the intellectual property, data and data privacy, and technology aspects of mergers and acquisitions, joint ventures, back office transformations, new product and service initiatives, and new trends driving business such as data monetization and artificial intelligence.

Adam also represents clients in structuring and drafting technology and software license agreements, telecommunication agreements, cloud agreements, supply chain agreements, outsourcing agreements, and other agreements involving data, intellectual property, and technology.


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.


James R. Ferguson focuses his practice on intellectual property, complex commercial litigation, and domestic and international arbitration. He also conducts domestic and international investigations for multi-national corporations. He has been lead trial counsel in patent, trademark, trade secret, license disputes, and breach of contract cases in federal courts and domestic and international arbitral tribunals.

A Fellow of the American College of Trial Lawyers, Jim has also been lead trial counsel in a wide range of other commercial and white-collar criminal litigation, including antitrust, securities, FCPA and tax cases. He has tried more than 50 cases to verdict or judgment and argued more than 40 appeals in federal courts, including the Federal Circuit.

In Chambers, Jim has been described as a "phenomenal" lawyer whose "high energy" practice "includes IP and white-collar criminal defense" (Chambers USA). In similar publications, he has been described as "dynamic," "incredibly impressive," an "exceptional attorney," a "real expert in the patent litigation field" and an "extraordinarily hardworking guy" with "sophisticated contentious expertise." (Legal 500; IAM 250; IAM Patent 1000). Jim is listed in Chambers' America's Leading Lawyers for Business (Litigation) (2005-present), Legal 500 (2007-present), The Best Lawyers in America (2006-present), Corporate Counsel's Top Lawyers (Bet-the-Company, Commercial and White Collar Criminal Litigation), and Leading Lawyers Network.

Jim is also listed as a "Band One" patent litigator in life sciences by IAM Life Sciences (2011-present), and he was selected by IAM 250 for inclusion in "The World’s Leading Patent Litigators" (2011) and IAM Patent 1000 (2012-present).

Jim is a member of the ICC Commission on Intellectual Property and the US Council for International Business Intellectual Property Committee. He is also a Lecturer in Law at the University of Chicago Law School and an Adjunct Professor at the Northwestern University School of Law and Northwestern University Feinberg School of Medicine. Jim is a registered neutral with AAA, CPR, the International Chamber of Commerce (United States), the World Intellectual Property Organization, and the Stockholm Chamber of Commerce.

Education

Northwestern University School of Law, JD Law Review - Articles Editor, Clerkship - Honorable William J Bauer, US Court of Appeals for the Seventh Circuit

Indiana University, BA Phi Beta Kappa


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.


J. Richard (Rick) Supple Jr. represents law firms and lawyers in professional ethics-related litigation, including disciplinary and legal malpractice cases, partnership and fee disputes, internal investigations, and disqualification and sanctions motions. He advises clients on regulatory compliance issues, litigation finance, lateral movement, and formation and dissolution matters.

As a former prosecutor and defense counsel, Rick regularly tries, arbitrates and mediates cases in federal and state courts, and has argued dozens of appeals. He is also frequently retained as an expert witness.

Rick is former general counsel of an AmLaw 100 law firm and was leader of that firm’s well-regarded lawyers’ professional ethics practice group. He is co-author of the leading treatise on New York attorney discipline procedure and regularly speaks on professional ethics matters nationwide.

Admissions

  • New York
  • US District Courts for the Eastern, Northern, and Southern Districts of New York
  • US Court of Appeals for the Second Circuit
  • US Supreme Court

Education

  • J.D., University of Wisconsin Law School, 1989
  • B.A., magna cum laude, Duke University, 1985

Memberships

  • New York City Bar Association
    • Professional Discipline Committee, Chair, 2010-2013
  • Practising Law Institute (PLI)
    • Faculty Member
  • Benjamin N. Cardozo School of Law
    • Adjunct Professor, 2004-2016

Experience

  • Successfully tried to verdict a law firm’s breach of oral contract claims against its former litigation counsel.
  • Successfully tried to verdict a partnership dispute arising from the dissolution of a preeminent plaintiffs’ personal injury law firm.
  • Obtained summary judgment for major law firm clients in several state and federal legal malpractice cases.
  • Successfully negotiated litigation funding agreement for multimillion dollar portfolio of nationwide tort and products liability cases.
  • Represented prominent law firm for internal investigation of alleged illegal lobbying activities relating to New York state corruption scandal.
  • Successfully argued appeal of disciplinary sanction imposed against attorney on basis of Dead Man’s statute in the New York Court of Appeals.
  • Obtained stay and then dismissal of Family Court judge’s order to show cause against lawyer for criminal contempt.

Presentations

  • "Lawyers' Professional Liability in Transformative Times," ABA National Legal Malpractice Conference, San Diego, California, September 2019
  • "Distributed Ledger Technology: Blockchain and Smart Contracts, the Implications for Law Firms," General Counsel, Compliance and Risk Forum, London, United Kingdom, May 2019
  • "Litigation Funding in Class Actions versus Arbitrations," The Litigation Funding Forum, New York, New York, April 2019
  • "Update – Litigation Finance," General Counsel Roundtables, Miami, Florida, January 2019 and Oklahoma City, Oklahoma, April 2019
  • "Cryptocurrency: Show Me the Money," Legal Malpractice & Risk Management Conference (LMRM), Chicago, Illinois, March 2019
  • "It's a Jungle Out There: Managing Risks in Mid-Sized Firms," Legal Malpractice & Risk Management Conference (LMRM), Chicago, Illinois, March 2018
  • "Winning the Arms Race in Big Civil Cases — the Upside and Downside of Litigation Finance," Legal Malpractice & Risk Management Conference (LMRM), Chicago, Illinois, March 2017
  • "The 'New' New York Rules on Attorney Discipline Procedure," Practicing Law Institute (PLI), New York, New York, January 2017
  • "Staying Out of Trouble 2016: The In-House Attorney-Client Privilege and Ethics and Technology Quiz Show," Practicing Law Institute (PLI), New York, New York, December 2016
  • "Playing the Away Game, How Can Non-Resident New York Lawyers Comply," New York State Bar Association, Miami, Florida, September 2016
  • "Phantom Clients and How to Exorcise Them," Legal Malpractice & Risk Management Conference (LMRM), Chicago, Illinois, March 2016
  • "Ethics for the Trademark Lawyer," Practising Law Institute (PLI), New York, New York, March 2015
  • "Defenses to Disqualification Motions: What Works and What Doesn't," Legal Malpractice & Risk Management Conference (LMRM), Chicago, Illinois, February 2015

Publications

  • Co-author, "New York Attorney Discipline: Practice and Procedure," ALM Press, updated every other year


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.


Lei advises clients on a wide range of global data privacy issues and works collaboratively to develop practical privacy and data protection strategies for their products and services. She helps companies navigate and comply with state, federal and international privacy regulations, including the California Consumer Privacy Act (CCPA), the EU General Data Protection Regulation (GDPR), and upcoming state consumer data protection laws. She also advises on issues concerning emerging technologies, such as telematics, connected products and services, and big data.

Lei has extensive experience working with companies across many industries to develop internal and external privacy policies and programs, including global policies and programs for companies that operate in dozens of jurisdictions internationally. She also helps companies create privacy-related terms and playbooks for customer and vendor agreements.

Lei has been accredited by the International Association of Privacy Professionals (IAPP) as a Certified Information Privacy Professional/United States (CIPP/US) for over 10 years.She was named to Global Data Review’s “40 Under 40” list for top data lawyers from around the world. Lei frequently speaks and writes on data privacy-related topics.

Prior to joining Cooley, Lei was a partner at Mayer Brown. 


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)


Oliver Yaros is a partner in the Intellectual Property & IT Group as well as the Technology Transactions and Cybersecurity & Data Privacy Practices of the London office of Mayer Brown. He advises clients on technology and outsourcing transactions with a particular focus on fintech and digital transformation projects, as well as clients operating within a broad range of sectors on data protection matters and cybersecurity incidents, intellectual property transactions and related issues.

Oliver joined Mayer Brown in 2004. He is the Chairman of the Digital Economy Committee of the UK International Chamber of Commerce (ICC) and is a Certified Information Privacy Professional in Europe (CIPP/E) by the International Association of Privacy Professionals (IAPP).

From May 2013 to October 2014, Oliver spent 18 months on secondment to the GBM Legal team of HSBC in London during which he advised the Global Banking and Markets (investment bank) division and worked with other divisions of HSBC on the creation of various global know your client / client onboarding and other types of banking industry utility joint ventures with other banks, on a number of multilateral and bilateral outsourcing projects, on investment banking technology procurement projects and on various worldwide IP portfolio management and data protection issues.

Oliver is a regular contributor to Mayer Brown’s Tech Talks Podcast, which provides insight on legal issues relating to technology transactions and touches on relevant and timely topics.

 


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.