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IP Issues in Business Transactions 2021


Speaker(s): Alicia A. Russo, Andrew Baum, Angela J. Grayson, CIPP/US, CLP, Audra A. Dial, Carolyn H. Blankenship, Debra A. Dandeneau, Eduardo da Gama Camara Junior, Eleanor M. Lackman, Eric A. Prager, Gail H. Zarick, Jack D. Slobod, Jami Mills Vibbert, Jeffrey D. Osterman, Jim Lennon, Joel Wolfson, Jonathan M. Seiden, Joseph M. Casino, Kenneth K. Cho, Kim Youngberg, Maria A. Scungio, Martin Köhler, Matt Goldberg, Melvin C. Garner, Michael R.. Manley, Zhun Lu
Recorded on: Jan. 4, 2021
PLI Program #: 306440

Alicia Russo is co-chair of Venable’s Intellectual Property Transactions Group. Alicia has significant experience in IP due diligence and licensing associated with high-profile acquisitions. She has represented clients in complex patent litigation and contested proceedings before the United States Patent and Trademark Office (USPTO) and has secured patents for clients in numerous technical fields. She focuses on biologics and small-molecule pharmaceuticals, informed by her prior work in medical research. Alicia also advises clients on matters related to energy, fiber technology, building materials, biotechnology, and bioinformatics.

In addition, Alicia leverages her understanding of global IP considerations to assist international clients with issues such as foreign patent litigation, oppositions, invalidation proceedings, and patent prosecution. 

Having spent more than a decade conducting academic medical research, Alicia has a passion for the field and brings a deep understanding to her clients’ technical matters. She has authored numerous articles in noteworthy scientific journals, including Science, Nature, Cell, and Proceedings of the National Academy of Sciences, some of which have been featured on the covers of Nature and Cell. She is also extensively published in the legal field.


Audra Dial is the Assistant General Counsel - Litigation at Mercedes-Benz USA where she leads the company’s litigation efforts.  Her team handles a wide range of litigation from intellectual property to product liability to labor and employment throughout the United States.  Prior to joining Mercedes-Benz USA, Ms. Dial was a partner at Kilpatrick Townsend & Stockton where she focused her practice on complex federal court litigation involving trade secrets, patent disputes, restrictive employment covenants, and complex business disputes involving intellectual property. Ms. Dial was recognized by The Best Lawyers in America® in 2018 and 2019 for Technology Law and was recommended by Legal 500 US in the area of Trade Secrets Litigation.

Ms. Dial earned her J.D. from William and Mary School of Law and served as the Managing Editor of the William & Mary Law Review and a member of the Moot Court Team.  She received her Bachelor of Arts from American University, where she graduated cum laude in Interdisciplinary Studies.


Debra A. Dandeneau is co-chair of Baker McKenzie's Global Restructuring and Insolvency Group and chair of its North America Restructuring and Insolvency Group. Her practice focuses on business reorganizations and debtor and creditors’ rights.

Ms. Dandeneau has been ranked by The Best Lawyers in America 2011-2018 in the practice areas of Bankruptcy and Creditor-Debtor Rights/Insolvency and Reorganization Law, and Litigation-Bankruptcy. She has also been recognized by Legal 500 US for Municipal Bankruptcy and Super Lawyers 2006-2017 for Bankruptcy. Super Lawyers has also named Debra among the 2017 Top Women for Bankruptcy Business in New York.

Ms. Dandeneau has dealt with a variety of entities experiencing financial distress, as well as a range of industries. Over the course of her career, her work has included representations in the real estate, manufacturing, power generation, healthcare, municipal, retail, and service sectors.

Ms. Dandeneau's professional honors include:

  • "Top Women" for Bankruptcy: Business in New York, Super Lawyers, 2017
  • "Super Lawyer" in Bankruptcy, Super Lawyers, 2006-2017
  • Pro Bono Publico Award, The Legal Aid Society, 2008
  • Recommended Lawyer in Municipal Bankruptcy in the US, Legal 500 US, 2015
  • "Best Lawyer" in Bankruptcy and Creditor-Debtor Rights/Insolvency and Reorganization Law and Litigation, Best Lawyers in America, 2011-2018


Eduardo is a partner at Dannemann Siemsen firm, and has a degree in Mechanical and Industrial Engineering and Law from the Pontifical Catholic University in Rio de Janeiro (PUC-Rio), with a specialization course in Intellectual Property at the Franklin Pierce Law Center, University of New Hampshire, and a postgraduate degree in Civil Procedural Law from the Pontifical Catholic University (PUC-Rio).  He is also co-author of the book Comentários à Lei da Propriedade Industrial [Comments on the Industrial Property Law], Publisher Renovar, Rio de Janeiro, 2013, of the book Patentes – Proteção na Lei de Propriedade Industrial [Patents - Protection in the Industrial Property Law], Publisher Gen/Atlas, Rio de Janeiro, 2019, and author of several legal articles. He takes part in important associations such as AIPLA, ABPI, CREA-RJ and OAB-RJ. His work has been recognized in publications such as MIP - IP Stars, Leaders League, IAM Patent and LACCA.


Eleanor M. Lackman is a Partner at Mitchell Silberberg & Knupp LLP, where she focuses on copyright and trademark litigation, licensing, and trademark prosecution and brand protection.  With a focus in the media, entertainment, sports, and technology industries, she splits her time between the firm’s New York and Los Angeles offices.

Eleanor graduated from Fordham University School of Law in 2003.  After graduation, she was affiliated with major international law firms and then spent eight years as partner at a recognized entertainment and IP boutique before joining MSK in 2019. 

Eleanor has been recognized by Chambers USA as a leading copyright and trademark attorney every year for the past six years.  She also has been named by Managing IP as one of the top 250 women IP lawyers worldwide and one of “Hollywood’s New Leaders” by Variety Magazine.  Super Lawyers has repeatedly named her as one of the top 100 lawyers in the New York metro area. 

 

 



Eric A. Prager, a partner in the firm’s intellectual property practice group, assists clients with all types of intellectual property issues. His practice involves contentious and non-contentious work, including strategic counseling, due diligence of IP assets, sophisticated licensing and agreement work, and litigation. He has litigated copyright, false advertising, patent, trademark and trade secret cases in courts around the country.

 With significant experience in the area of digital content distribution and protection, Eric represents one of the Big Three record companies and a major online subscription music service in their digital content matters. 

 Eric assisted in drafting several “digital agenda” copyright treaties for the World Intellectual Property Organization, including the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.  He has also served on the U.S. Patent and Trademark Office Public Advisory Committee for Trademark Affairs.

 Eric serves as an adjunct professor at Fordham Law School in New York co-chairs the New York version of this PLI program.


Jeffrey Osterman is a partner in Weil’s Technology & IP Transactions practice and concentrates on matters with deep commercial or technical complexity. He has had extensive experience with pure patent licensing, technology transfer, outsourcing, technology integration, content licensing and merchandising.

Mr. Osterman recently advised Sanofi in its worldwide exclusive licensing agreement with MannKind Corporation to develop and commercialize Afrezza (insulin human) Inhalation Powder; Verizon in connection with the acquisition of cloud TV technology from Intel; Lenovo in connection with the acquisition of Motorola Mobility from Google; and Mubadala and Sony/ATV in connection with the proposed $2.2 billion acquisition of EMI Music Publishing. Mr. Osterman also regularly represents Panasonic in connection with a wide variety of transactional matters involving consumer electronics and GE in connection with the IP aspects of numerous corporate transactions. He also counsels clients with respect to their rights under existing agreements and the development of new technologies.

Mr. Osterman lived in Japan from May 1997 to May 1998 where he worked in-house on loan to the headquarters of Panasonic Corporation.

Mr. Osterman is a member of the State Bar of New York and is admitted to practice before the United States Patent and Trademark Office. He has appeared on national television and lectured on intellectual property, electronic privacy and e-commerce throughout the United States and on U.S. intellectual property and contract law in Japan. He is also the Vice Chair of the IP Licensing Committee of the Intellectual Property Owners’ Association and is active in the open source legal community.

Mr. Osterman has received a number of awards for his expertise including being ranked by Chambers USA and Chambers Global as a national and global leader in the technology and outsourcing fields and by Legal 500 as a leading lawyer in the field of intellectual property. He is also recognized as an “IP Star” by Managing Intellectual Property’s IP Stars for Copyright, Counselling and Licensing, by Best Lawyers in America for Information Technology Law and in IAM Patent 2014.

Education

Harvard Law School (J.D., cum laude, 1995)

Cornell University (B.A., cum laude, 1992)


Melvin Garner is a Partner in the firm of Leason Ellis. His practice includes all phases of patent, trademark and copyright litigation. It also includes patent procurement involving various technologies, as well as infringement and validity opinions. He has appeared as an expert witness at several trials and has served as a mediator.

Mel is the author of numerous articles and of Chapter 13, “Intellectual Property Protection of E-Commerce” and Chapter 58, “Trade Secret Causes of Action and Defenses, Including Sample Pleadings,” Intellectual Property Counseling and Litigation, Matthew Bender (2010). In addition, he is a frequent lecturer at PLI events.

Mel is a Past President of the New York Intellectual Property Law Association and a Past President of the American Intellectual Property Law Association. He is on the Executive Committee and is a founding member of the Hon. William C. Conner Inn of Court. He is also a member of the Magistrate Judge Merit Selection Panel for the U.S. District Court for the Southern District of New York. He is listed in Euromoney’s Guide to the World’s Leading Patent Law Experts, Who’s Who Legal - Patents, and New York Super Lawyers.

EDUCATION:
J.D. Brooklyn Law School
M.S. Electrical Engineering, New York University
B.S. Electrical Engineering, Drexel University

BAR ADMISSIONS:
New York
U.S. Patent & Trademark Office

COURT ADMISSIONS
United States Supreme Court
U.S. Court of Appeals for the Second Circuit
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Southern District of New York
U.S. District Court for the Eastern District of New York


Michael R. Manley currently serves as Senior Vice President and General Counsel of 1-800-FLOWERS.COM, INC., a leading provider of gifts for all celebratory occasions, including gourmet foods and floral gifts. Mr. Manley is responsible for managing all legal affairs of the company.

Previously, Mr. Manley was a partner at the law firm, Venable LLP, where he led the firm's Fund Formation practice and headed its Risk and Compliance Group.  Prior to Venable, Mr. Manley served as the General Counsel and Chief Compliance Officer of CION Investment Management, LLC and CION Investment Corporation and as Managing Director and Counsel of ICON Capital Corp.  Prior to ICON, Mr. Manley served as Managing Director of Plainfield Asset Management LLC (PFAM) and Co-General Counsel, Chief Compliance Officer and Secretary of Plainfield Direct, a fund managed by PFAM. Mr. Manley managed the legal and compliance functions for Plainfield Direct and served as senior counsel to PFAM.

Prior to Plainfield, Mr. Manley served as President of PartMiner, Inc. from 2002 to 2007, a leading provider of information and procurement services to the global electronics, defense/aerospace, telecom, and medical devices industries. From 2004 to 2007, Mr. Manley also served as President of the PartMiner Information Services division, a leading provider of enterprise data, software and services to the global electronics, defense/aerospace, telecom and medical devices industries. Mr. Manley joined PartMiner in 1999 as Vice President and General Counsel.  Previously, Mr. Manley was an attorney with the law firm of Gould & Wilkie LLP, now known as Thompson Hine LLP, where he was responsible for building the its New Media and Internet practice.

Mr. Manley is a graduate of Yale University and the Fordham School of Law. Mr. Manley serves on the Board of Directors of Youth Soccer of New Rochelle Inc. Mr. Manley has been an Adjunct Professor in the Hagan School of Business at Iona College. 


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.

 


 


JACK D. SLOBOD has been employed by One-Blue, LLC, a standard essential patent pool for Blu-ray products, as its General Counsel for 7 years. In that capacity, he is responsible for patent pool management and governance issues, patent licensing agreements and negotiations, litigation management and antitrust issues.

Prior to joining One-Blue, he was employed by Philips Intellectual Property & Standards for 23 years, lastly as Principal IP Counsel.  Mr. Slobod was responsible within the Consumer Lifestyle and Corporate Technologies Sectors for licensing-out patents and other intellectual property rights of Koninklijke Philips Electronics N.V., litigation management, transactional matters, and defense of third party IP claims.   He was formerly lead IP counsel for various product divisions of Philips.

Prior to joining Philips, he was in the private practice of law for several years in small general practice firms, where he concentrated in intellectual property law and business and commercial transactions.

Mr. Slobod also practiced law in an Arlington Virginia patent law firm, and at the National Aeronautics and Space Administration.  Prior to that, he worked for several years as an engineer and member of the technical staff of various companies.

He holds B.E.E. and M.E.E. degrees from City College of New York, and a J.D. degree from George Washington University, where he was a member of Order of the Coif.

Mr. Slobod is admitted to the New York Bar and is a Registered Patent Attorney.   He is a member of the Antitrust Committee and the Standards and Open Source Committee of the American Intellectual Property Law Association.  He is also a member of the Litigation Committee and former member of the Board of Directors of the New York Intellectual Property Law Association.  Mr. Slobod was a former Chairman of the Standard Setting Committee of the Intellectual Property Owners Association.


Jami Mills Vibbert is a member of Venable's eCommerce, Privacy, and Cybersecurity Group who conducts comprehensive data security risk assessments and develops and implements data risk solutions, information security programs, and breach prevention and incident response plans.  Jami also engages in crisis management and breach notification and related investigations and litigation, with extensive experience helping companies prepare for and respond to security incidents.

Jami also assists companies developing new technologies engage in privacy and security by design fundamentals and evaluate data risk associated with such new technology, including by participating in the Texas Medical Center's Innovation Institute as an Expert Advisor.


Martin Köhler is specialized in patent infringement litigation and is regularly active in trademark and design rights enforcement as well as in unfair competition litigation. Outside court, his other work includes providing advice on licensing, research and development agreements as well as on employee invention matters.

Martin regularly represents clients in the areas of electronics, telecoms, mechanical and chemical engineering, automotive technology, pharmaceuticals and medical devices.

Martin publishes regularly on intellectual property issues and is a speaker at conferences on patent law issues. He is also a visiting lecturer at the Hagen Law School.


Matt is an attorney working in MUFG’s New York office and is responsible for providing legal advice relating to data privacy, protection, security, use, and transfer issues affecting MUFG’s global operations.  Prior to joining MUFG in January 2018, Matt advised on data privacy and data protection matters for American International Group (AIG) and Chubb for 8+ years, and is experienced in contract negotiation, third-party vendor risk management, and reviews of new technology engagements and strategic initiatives. Matt received his J.D. from Seton Hall University School of Law and his B.A. from Rutgers, The State University of New Jersey and holds a Certified Information Privacy Professional (CIPP) designation from the International Association of Privacy Professionals (IAPP).


While many intellectual property lawyers can claim a background in science, few can claim a previous career in geology. Jim Lennon sees this as a competitive advantage. As geologists must be thoroughly trained in a range of disciplines — especially chemistry, physics, and biology — this grounding gives Jim an unusually multi-dimensional, “big picture” perspective that he brings to both patent transactions and litigation. His clients in the pharmaceutical, chemical, and materials industries have long recognized his ability to absorb a wide variety of esoteric scientific concepts, and to interpret those concepts for non-technical audiences.

To Jim, a client’s IP strategy can only be effective in the context of the company’s overall business objectives. As patent law continues to be redefined, often by the Supreme Court, he advises clients on all their available options, sometimes even eschewing patents in favor of other forms of protection. He views litigation similarly, as a strategic decision whose ramifications — legal, financial, and reputational — must be thoroughly weighed for business efficacy, and either pursued or settled accordingly.

Jim often acts as Delaware co-counsel in major patent litigations, yet his role is anything but passive. Judges in the United States District Court for the District of Delaware place a premium on both brevity and clarity in written materials, and Jim is known as a savvy reviewer of his co-counsel’s written submissions. He regularly provides valuable insights into the workings of the court, strengthening the work product for maximum impact and optimal results.


With a degree in computer science, Joe Casino has carefully followed the recent proliferation of artificial intelligence, machine learning and block chain technologies and how different IP regimes can protect these technologies. 

Joe’s 20+ year career is highlighted by his work as lead counsel in hard-fought patent litigations throughout the US and in Patent Office proceedings. As the leader of Wiggin and Dana’s Intellectual Property Practice Group, he advises clients on patent office disputes, complex licensing, patent monetization, patent portfolio development, and worldwide intellectual property strategic matters.

His experience includes over 150 patent cases in a variety of high-tech fields, including consumer tech, electronics, aerospace, computers, hybrid electric vehicles, semiconductors, smart phones, medical devices, and batteries. Examples include Lufthansa Technik AG v. Astronics Advanced Electronic Systems Corp., Case No. 2:14-CV-1821 (W.D. Wash.), an avionics industry case where Joe led the patent team to a successful claim construction and summary judgment of patent indefiniteness, which was affirmed on appeal; and Therasense, Inc. v. Becton, Dickinson and Co., Case No. 3:05-CV 3117 (N.D. Calif.), a medical-device case where Joe’s client obtained a successful summary judgment on one patent and a verdict of invalidity/inequitable conduct on a second patent, including an award of attorneys’ fees, setting the current standards for inequitable conduct through an en banc appeal.

His knowledge spans all aspects of IP law, including litigation, licensing, opinions, and prosecution. His work has earned him industry recognition, being named one of the world’s leading IP strategists by IAM Strategy 300, as well as Super Lawyer honors. Joe has been the lead negotiator for license and cross-license discussions involving some of the largest patent portfolios. Joe is Secretary for the Licensing Executives Society standard-setting program for developing an ANSI standard of best practices for licensing negotiations.

Joe received his J.D. cum laude from Brooklyn Law School, where he was an editor for the Brooklyn Journal of International Law and received various academic awards. He earned a B.S. cum laude in computer science from Brooklyn College.

 


Angela J. Grayson, CIPP/US, CLP is an accomplished nationally recognized lawyer, speaker, and author.  She is Principal Member and Founder of Precipice IP PLLC.  PRECIPICE is an award-winning consultancy and technology law boutique with expertise in patent, trademark, copyright, and data law. PRECIPICE helps entrepreneurs and technology-focused businesses protect their products, brands, designs and data. 

Prior to founding PRECIPICE, Ms. Grayson was Associate General Counsel, Intellectual Property and Patent Operations Lead at Walmart Stores, Inc.  Before joining Walmart, Ms. Grayson served as in-house patent counsel for several Fortune® 100 companies, and she has prior experience as a Patent Examiner for the United States Patent and Trademark Office.

She is committed to advancing Diversity and Inclusion (D&I) in the legal profession, and is equally committed to STEM (Science, Technology, Engineering, and Math) initiatives that focus on better preparing our youth to compete. She is a past Board Chair of the Minority In-House Counsel Association (MIHCA), and previously served on the Board of Trustees for the American Intellectual Property Law Education Foundation (AIPLEF).

Ms. Grayson is a Director on the Board of the Patent Pro Bono Advisory Council, and is past Chair of the American Intellectual Property Law Association (AIPLA) Special Committee on Pro Bono. Ms. Grayson is the current Chair of AIPLA Diversity in IP Law Committee, and she serves Chair of the Intellectual Property and Sports Law Section of the Mississippi Bar.

 

 


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.


Gail Zarick currently serves as IBM’s Counsel for Regulatory Compliance, Source Code and Data Security, advising on and negotiating transactions in which the security of data and code is at issue.  She also co-leads IBM’s Armonk, New York pro bono program for IBM lawyers.  Gail previously served as IP Counsel for IBM’s Security Division, and she has managed teams of IP attorneys who support various IBM business units, Research labs, and CHQ organizations. In other roles, she has negotiated patent assignments and licenses, managed patent litigations, and managed due diligence efforts for patent sales. Before joining IBM, Gail practiced intellectual property law at Pennie & Edmonds LLP in New York.

 

Admitted to the bar in the State of New York

Registered to practice before the U.S. Patent & Trademark Office

Member, NYIPLA

 

JD, Pace University School of Law

MSE, University of Pennsylvania

BSE, Princeton University


Jonathan Seiden is an attorney and business affairs executive with over 15 years of experience sourcing, negotiating, and drafting industry-specific agreements in the fields of entertainment and media.

As of March 2019, Mr. Seiden serves as Vice President Associate General Counsel, IMG Licensing and the Miss Universe Organization.  Mr Seiden is responsible for counseling IMG and its clients on legal matters, including live events, music, sponsorships, content and intellectual property licensing, digital distribution and merchandising.

From November 2014 until June 2016, Mr. Seiden served as Senior Vice President, Business and Legal Affairs at SFX Entertainment, Inc. (“SFX”) and Executive Vice President of Beatport LLC (“Beatport”). In his capacity as SVP for SFX, Mr. Seiden was responsible for counseling SFX and its live entertainment and media companies with respect to entertainment law matters, including, without limitation, live events, brand integration and sponsorship deals, new media and content deals, music publishing and master recording agreements, and licensing.

Prior to joining SFX in 2014, Mr. Seiden was Vice President, Intellectual Property and Legal Affairs for CORE Media Group Inc. (“CORE Media”) from 2006 – 2014. In his capacity as Vice President for CORE, Jonathan counseled CORE and its subsidiaries, namely 19 Entertainment and Sharp Entertainment (and previously Elvis Presley Enterprises and Muhammad Ali Enterprises), with respect to intellectual property and entertainment law matters, including, without limitation, the acquisition of intellectual property content, character and merchandise licensing, music publishing, master recording agreements, intellectual property maintenance, enforcement, and litigation.

Prior to joining CORE in 2006, Jonathan was a member of the Intellectual Property and Technology Group at Skadden, Arps, Slate, Meagher & Flom LLP in New York primarily focusing on intellectual property acquisitions and licensing.

 

Education

University of Pennsylvania Law School, J.D., 2001

Cornell University, Bachelor of Arts, 1998


Kenneth Cho is a partner in Wiggin and Dana’s Litigation Department and Intellectual Property Practice Group in New York specializing in cross border dispute resolution, intellectual property litigation and licensing, IP asset management and valuation, and counseling matters.

Ken has represented international clients in the fields of cryptocurrency, semiconductor and OLED manufacturing, telecommunications and mobile telephony, biomedical devices, optical disc storage technologies and the like.  Ken’s experience is international in scope and has also spanned Europe and the Far East.  Ken has worked overseas as a U.S. attorney at South Korea’s most prestigious law firm; spent about a decade working “in-house” in the Intellectual Property and Standards group of Philips Electronics and as a patent assertion attorney for AT&T Corp. specializing in offensive patent assertion and licensing matters.

Ken has served on the Board of Directors of a number for professional associations including the American Intellectual Property Law Association (AIPLA) from 2013-2016, the International Association of Korean Lawyers (also past President), and the Korean American Lawyers’ Association of Greater New York.  Ken is a trained mediator through the New York State Office of Court Administration.

Ken earned his J.D. from Rutgers School of Law and his B.S.E.E. from Rutgers College of Engineering. Ken has been recognized by IAM Patent 1000 – The World’s Leading Patent Professionals; Who’s Who Legal: Patents; Managing Intellectual Property: Named an “IP Star”; and IAM Licensing 250 as one of the world’s leading patent and technology licensing practitioners.


Kim Youngberg is the Chief Legal Officer of DJDTP, a film/TV music production house, and partner at The Davis Firm, a boutique entertainment law firm.  The firm concentrated in music for many years but is now expanding into film and TV.  Prior to DJDTP, Kim was the General Counsel of Screenvision Media, a cinema advertising company.  In addition to the normal blocking and tackling as a general counsel, at SVM Kim created deals for emerging technologies, digital and programmatic advertising, digital insights and audience analytics for advertisers and exhibitors.  She also developed deals for AR and VR in theater lobbies.  Before advertising, Kim spent 9 years as the SVP Business and Legal Affairs at Wind-Up Entertainment, an indie record label and music publisher.  Kim helped launch a merchandising company while at Wind-Up and lead the label through the transition from analog to digital music consumption.  With her new jobs, Kim has come full circle, she started her legal career working in the glory days of music at Davis Shapiro & Lewit, a music law firm with superstar clients such as Mary J. Blige, Black Eyed Peas and Cheap Trick.


Maria Scungio is based in the firm’s New York office and has more than 20 years of experience advising on trademark, copyright and design rights—including protection, enforcement and transactional matters—for well-known brands.

Maria’s practice includes counseling clients in the fields of skincare, apparel, footwear, jewelry, food and beverage, pharmaceuticals, nutritional products, tobacco and e-cigarette products, and music and entertainment publishing.  She advises on strategic issues affecting the exploitation, enforcement, acquisition, divestiture and realignment of intellectual property rights.  She also provides counsel on trademark availability, bringing counterfeit and infringement actions, and initiating opposition and cancellation actions.

Maria has partnered with clients to serve as interim in-house intellectual property counsel during corporate transitions.  She has litigated cases before federal courts and the Trademark Trial and Appeal Board, acting for plaintiffs and defendants, involving trademarks for diverse consumer products and services.

Prior to joining Robinson & Cole, Maria served as co-chair of the Trademark, Copyright and Advertising Group at Locke Lord.  She began her legal career as a law clerk to the Honorable Jane A. Restani in the US Court of International Trade in New York.


A former scientist at the Yale School of Medicine, Zhun Lu is a highly accomplished and experienced intellectual property lawyer with a particular focus on companies in greater China operating in the biotech, biomedical, pharmaceuticals, chemicals, telecommunications, computers, automobile diagnostic tools and semiconductor industries. He advises and represents clients in patent counseling and opinions, as well as litigation and prosecution. Zhun also counsels Asian companies on U.S. business development and often acts as outside general counsel to such firms.

 

Patent Protection

Clients look to Zhun to help them obtain and manage patents and for advice on technology transfer and licensing and multinational brand protection. Zhun presently serves as a co-chair of the American Intellectual Property Law Association’s (AIPLA’s) Intellectual Property Practice in the Far East Committee. His unique background and experience enable him to help international clients with their intellectual property protection needs and business operations in the United States and in the Greater China region.

 

Greater China Practice

For more than 15 years, Zhun has advised companies in and around China seeking to do business in the United States. Zhun helps these clients expand and sustain their business interests. He also helps American and other international companies operating and doing business in the greater China marketplace. He is an honorary member of the Chinese Intellectual Property Society and has been a frequent lecturer at law firms, universities, companies and conferences in the Greater China region.

 

Corporate Counsel

Zhun is experienced in corporate matters relating to Delaware business entities, governance, compliance, restructuring, initial public offerings, merger and acquisition due diligence, commercial dealings, employment and U.S. antitrust class action litigation.

 

While in law school, Zhun served as an intern for the Honorable Peter Dorsey, former chief judge of the Federal District Court for the District of Connecticut.

 

Professional Associations

  • Co-Chair of AIPLA’s IP Practice in the Far East Committee, 2019 – present
  • AIPLA, China's State Intellectual Property Office (SIPO)/U.S. Bar Liaison Council, 2016-18
  • Co-chair of AIPLA’s IP Practice in China Committee, 2014-15

 

Firm Leadership

Drinker Biddle & Reath LLP — Senior Director, Greater China Practice, 2014-19

 


A retired partner and intellectual property lawyer with Foley & Lardner LLP, Andrew Baum focused his practice on trademark, unfair competition, false advertising and copyright litigation, counseling, licensing and enforcement work on Internet domain names. Mr. Baum represented a broad cross-section of clients from the publishing, luxury goods, interactive entertainment, personnel staffing and home furnishings industries. He was a member of the firm’s Trademark, Copyright & Advertising and IP Litigation Practices and the Technology Industry Team.

Prior to joining Foley, Mr. Baum was a partner and managing principal with Darby & Darby P.C., where he represented major clients in trademark and copyright litigation, oversaw the management of international trademark portfolios, and supervised the intellectual property aspects of significant corporate transactions.

Representative Experience


Major cases include one in which he helped lead a team which defeated a $150 million damage claim for false advertising in a three-week jury trial, and successfully defended the verdict on appeal to the Eleventh Circuit. In 2013, Mr. Baum secured summary judgment dismissing a trademark infringement case brought against Foley’s client the New York Jets. In 2014, he argued and won the appeal before the Fifth Circuit.