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IP Issues in Business Transactions 2021


Speaker(s): Ariana Issaias, Christian H. Nadan, Cyndi Wheeler, David S. Almeling, Debra A. Dandeneau, Eric A. Prager, Greg Warder, Jacob D.C. Humphreys, Jason D. Kipnis, Jeffrey D. Osterman, Jeffrey L. Van Hoosear, John Tsai, Karen L. Elburg, Karen N. Ballack, Kevin P. Smith, Lothar Determann, Marjorie M. Goux, Martin J. Collins, Mary A. Fuller, Rachel Lovejoy, Ray Strimaitis, Suzanne Y. Bell, Tessa J. Schwartz, Theodore D. Herzog, Thomas F. Villeneuve, Tonik Matthews, Violetta Kokolus
Recorded on: Feb. 4, 2021
PLI Program #: 306447

Lothar Determann practices and teaches international technology, commercial and intellectual property law.

At Baker & McKenzie LLP in San Francisco and Palo Alto, he has been counseling companies since 1998 on data privacy law compliance and taking products, business models, intellectual property and contracts international. He is admitted to practice in California and Germany. He has been recognized as one of the top 10 Copyright Attorneys and Top 25 Intellectual Property Attorneys in California by the San Francisco & Los Angeles Daily Journal and as a leading lawyer by Chambers, Legal 500, IAM and others. For more information see www.bakermckenzie.com.Prof. Dr. Determann has been a member of the Association of German Public Law Professors since 1999 and teaches Data Privacy Law, Computer Law and Internet Law at Freie Universität Berlin (since 1994), UC Berkeley School of Law (Boalt Hall, annually since 2004), Hastings College of the Law (since 2010), Stanford Law School (2011) and University of San Francisco School of Law (2000-2005). He has authored more than 100 articles and treatise contributions as well as 5 books, including Determann’s Field Guide to Data Privacy Law (2nd Edition, 2015) and California Privacy Law - Practical Guide and Commentary (2nd Ed. 2017).


Ariana Issaias is Of Counsel at Bowmans Kenya in the IP and Technology team specializing in commercial IP transactions and data protection in particular.

Ariana specialises in commercial contracts, distribution, franchising and licensing, intellectual property (including brand portfolio enforcement), e-commerce, software development and collaboration. 

She assists clients with regulatory and enforcement advice and has worked extensively with clients in business and product transfers and dealing with the applicable registries to record and complete such transfers.  Her specialist knowledge of distribution and licensing frameworks and IP exploitation, both intragroup and external, in technology, manufacturing, pharmaceutical, hospitality, retail, media, agricultural and service sectors is notable.

Ariana holds a LLB 2:1 (Hons) from the Manchester University and LPC Distinction BPP from the School of Law in London. 

 

Publications

IP comes to the fore in East Africa

COVID-19: Impact on Businesses and Investments in Kenya

SNAPSHOT: Analysis of the Data Protection Act 2019

The Extra-territorial effect of the EU General Data Protection Regulation: There’s No Getting Away From It

Parallel imports remain a grey area for IP rights in East Africa

Co-author of Kenyan chapter in “Privacy Law: A Global Legal Perspective on Data Protection relating to advertising and marketing” published by GALA (Global Advertising Lawyers Alliance).


Chris Nadan is SVP & General Counsel of Actian Corporation, a leader in Data Management, Integration and Big Data Analytics software offered both in the cloud and on-premise. He heads the legal department and is responsible for all legal affairs for Actian (formerly Ingres Corp.). He recently steered the company through a $330M acquisition by a joint venture comprised of a PE firm and a large strategic buyer.

Mr. Nadan was formerly Senior Director and Deputy General Counsel for Sun Microsystems, Inc., heading the legal group responsible for supporting Sun software.

In addition, Mr. Nadan was an adjunct professor of law at the U.C. Berkeley Boalt Hall School of Law for 17 years teaching a course on intellectual property transactions.

Mr. Nadan is also a co-author of the Common Development & Distribution License (CDDL), an open source license certified by the Open Source Initiative.

Before joining Sun, Mr. Nadan was an attorney at Farella, Braun & Martel in San Francisco. Mr. Nadan received his undergraduate degree from Stanford University and his J.D. from U.C. Berkeley Boalt Hall School of Law.


Cyndi Wheeler is the Senior Director of IP for Slack Technologies, Inc., where she is responsible for all aspects of intellectual property, including patents, trademarks, open source, and IP litigation.  She is also on the Board of Directors of ChIPs, a nonprofit organization that advances and connects women in technology, law and policy.

Cyndi began her career as an electrical engineer at Intel after graduating from the Colorado School of Mines. While at Intel, she attended Santa Clara University School of Law and graduated cum laude in 2005.  Cyndi continued her career as a patent attorney at Intel and then at Apple, where over the span of more than a decade she held various roles managing patent prosecution, NPE and competitor patent litigation, and Apple’s PTAB practice. 


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


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.


Greg Warder is chief IP counsel at Maxim Integrated Products, an S&P 500 semiconductor company headquartered in Silicon Valley.  He joined Maxim in 2014, where he currently oversees the IP legal and corporate security groups. 

Greg has an extensive background as an in-house attorney working for public companies, as well as at law firms representing major corporate clients.  He is responsible for a broad range of legal issues including management of Maxim’s patent and trademark portfolios, litigation of IP-related claims and technology and software licensing.  He also leads global security efforts to protect Maxim critical business information.

Originally from South Dakota, Greg graduated with a degree in Mechanical Engineering from S.D. School of Mines and Technology and a J.D. of Law from the University of Wyoming. Greg previously served as a patent examiner with the U.S. Patent and Trademark Office, and he has worked as an engineer in the telecommunications and electronics industries.

Greg is a frequent speaker on the topics of intellectual property and cybersecurity. He also volunteers with Child Advocates of Silicon Valley, a non-profit organization supporting foster youth, where he has acted as a court appointed child advocate and a member of the board of directors.   


Jake Humphreys is Associate General Counsel at Facebook, where he works with teams in Facebook Reality Labs developing the next generation of virtual and augmented reality devices. In this role, Jake advises his clients on IP strategy, negotiates complex, IP-heavy technology transactions, and counsels the business on a variety of other issues, including data privacy and security.

Prior to joining Facebook, Jake was a partner at a boutique Seattle commercial transaction and litigation firm, where he was a Super Lawyer Rising Star for five consecutive years. In addition to trying multiple cases to verdict in state and federal courts, he advised commercial clients on a wide range of matters, from pre-litigation strategy to negotiation of complex technology development deals.

Jake works in Facebook Reality Labs’ Redmond, WA offices.


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)


John Tsai is IP Counsel at Stripe, where he works on all aspects of IP.

He started his in-house career at PayPal, working on patent strategy and open source, before transitioning to Facebook, where he supported all Facebook companies (including Instagram, WhatsApp, and Oculus) in IP licensing.

John graduated from UC Berkeley School of Law in 2009.  After graduation he joined the SF office of Kirkland & Ellis LLP as a patent litigator and later worked in IP licensing at Bridges and Mavrakakis LLP. 

John leverages his technical background to better understand how to best protect a company’s IP.  He has extensive experience in IP licensing, open source, patent strategy, and M&A due diligence.  He is also a member of the Ambassador’s Council of the California Minority Counsel Program, a non-profit dedicated to promoting diversity in the legal profession by providing attorneys of color with access and opportunity for business and professional development.


Karen Ballack is an intellectual property transactional attorney with emphasis on representing technology companies, particularly in the computer (hardware and software), Internet, semiconductor, biotechnology, pharmaceutical and medical device industries.

Ms. Ballack has extensive experience in a wide variety of complex technology and intellectual property alliances and transactions. Representative matters include: licensing arrangements; research and development collaborations; joint ventures; strategic alliances and corporate partnering transactions; intellectual property acquisitions and divestitures; manufacture and supply arrangements; distribution and reseller arrangements; co-marketing alliances; consulting and professional services agreements; and other arrangements involving the commercial exploitation of technology and intellectual property. Ms. Ballack’s practice also includes providing intellectual property assistance in connection with private equity, M&A and other corporate transactions. Ms. Ballack is frequently engaged as a guest speaker on topics relating to technology and intellectual property transactions.

Ms. Ballack is actively involved with the Firm’s diversity and pro bono efforts. She is also a member of the Board of Directors of The Progeria Research Foundation.

Ms. Ballack is widely recognized in the industry. Among her recent accolades, she was named among “The World’s Leading IP Strategists 2017-2019” by IAM Strategy 300 and among the “Top 250 Women in IP 2017” by Managing Intellectual PropertyThe Recorder named Ms. Ballack a “Trusted Advisor” for technology transactions in 2016 and 2017. She was named by The Silicon Valley Business Journal as one of Silicon Valley’s 2015 Women of Influence. Ms. Ballack was named to the Daily Journal’s 2017 list of “Top 100 Lawyers in California”. She was also named to the Daily Journal’s 2014 - 2016 lists of Top Women Lawyers in California, with the publication noting “When Weil represents major technology giants in high-value corporate transactions, the firm calls on Ballack to handle the complex intellectual property aspects of the deals.” She has also been included in The Recorder’s 2013, 2015 – 2017 lists of Women Leaders in Technology Law, which recognizes women lawyers who have demonstrated leadership and expertise in solving the most pressing legal concerns in the technology sector. She has been ranked by Chambers USA 2010-2019 as a leader in California in the field of IT & IT Outsourcing. Sources in Chambers USA 2015 describe Ms. Ballack as having the ability to “cut through and find areas of compromise” in major M&A deals and as being “a superb drafter and negotiator”. She has been recognized by The Legal 500 US 2010-2019 in the field of Intellectual Property, Patent Licensing, and has also been named an “IP Star” by Managing Intellectual Property IP Stars 2013-2019. Ms. Ballack has also been named to the 2017 and 2018 Lawdragon 500 Leading Lawyers lists. In addition, Ms. Ballack is included in IAM Licensing 250’s “World’s Leading Patent & Technology Licensing Lawyers” and IAM Patent 1000’s “World’s Leading Patent Practitioners.”


Karen Elburg is a partner and head of the IP practice at Herzog, Fox & Neeman in Tel-Aviv, Israel.

Karen graduated from the Bar Ilan University Law School in 1990 and qualified as an Israeli lawyer in 1991. She has held both law-firm and in-house positions and is an experienced commercial lawyer in addition to her intellectual property expertise. Karen has been with Herzog, Fox & Neeman since 2001 and has headed the IP practice since 2012.

Karen advises on the acquisition, disposal, protection, and exploitation of IP rights, as well as trademark clearance, all aspects of brand protection and trademark & domain-name disputes, with a unique specialty in IP issues in the online gaming industry. Karen specializes in negotiating and drafting all types of IP transactions (including patent licensing), with extensive experience in the IP aspects of corporate and commercial transactions. Her work focuses on transactional IP and on licensing, development, technology transfer, and other commercial agreements for clients ranging from start-ups to multi-national corporations, in a broad range of industries and fields.

Consistently recognized for her excellence as an IP practitioner, Karen has been ranked in numerous publications, including Legal 500, WTR 1000, and IAM Patent 1000, and has been selected as a WIPR Leader every year since 2016. She is also a senior editor on the editorial board of the Trademark Reporter, the world’s only peer-reviewed, scholarly journal dedicated solely to trademark law and related topics.

 

 


Kevin Smith is the General Counsel & EVP, Business Development for Sirtex Medical, a medical device company based in the Boston area.  Kevin is an accomplished life sciences attorney and supports Sirtex across all aspects of its legal, compliance and business development matters. 

Prior to Sirtex, Kevin was the VP & Associate General Counsel for Flexion Therapeutics focusing on intellectual property, securities, business development and other matters faced by early-stage, commercial biopharmaceutical companies.  He was also previously the General Counsel for the Danaher Life Sciences Platform, managing the legal, compliance, intellectual property, trade compliance and EHS functions for the companies within the platform.  Before that, Kevin held several senior legal leadership positions within Novartis, including as the General Counsel for the Novartis Molecular Diagnostics Unit, Head of Legal for the Emerging Growth Markets and Head of Legal for the General Medicines unit (NSO, IID and Established Medicines).  Before moving in-house, Kevin worked for international law firms in New York, Silicon Valley and London.  

Kevin is admitted in New York, California and as in-house attorney in Massachusetts, as well as a registered patent attorney with the US PTO.  He holds a B.S. in Mechanical Engineering from Rensselaer Polytechnic Institute and a Juris Doctorate from Albany Law School.


Lothar Determann practices and teaches international data privacy, technology, commercial and intellectual property law.

At Baker McKenzie in San Francisco and Palo Alto, he has been counseling companies since 1998 on data privacy law compliance and taking products, business models, intellectual property and contracts international. Admitted to practice in California and Germany, he has been recognized as one of the top 10 Copyright Attorneys and Top 25 Intellectual Property Attorneys in California by the San Fran-cisco & Los Angeles Daily Journal and as a leading lawyer by Chambers, Legal 500, IAM and others. For more information see www.bakermckenzie.com. Contact: ldetermann@bakermckenzie.com.

Prof. Dr. Determann has been a member of the Association of German Public Law Professors since 1999 and teaches Data Privacy Law, Computer Law and Internet Law at Freie Universität Berlin (since 1994), University of California, Berkeley School of Law (since 2004), Hastings College of the Law (since 2010), Stanford Law School (2011) and University of San Francisco School of Law (2000-2005). He has authored more than 150 articles and treatise contributions as well as 5 books, including Determann’s Field Guide to Data Privacy Law (3d Edition, 2017, also available in Chinese, German, Japanese and Russian) and California Privacy Law - Practical Guide and Commentary (3d Ed. 2018).

Latest paper: eSignature Laws Need Upgrades - http://ssrn.com/abstract=3436327.


Mary Fuller formed Fuller Tech Law after serving as an attorney and legal executive for over 20 years. She entered the Silicon Valley tech industry as an electrical engineer for Hewlett-Packard Co., where she assisted in the design of laser printers. After earning her juris doctor from the University of Notre Dame Law School, she worked in patent litigation and prosecution for the law firms of Pennie & Edmonds LLP, Carr & Ferrell LLP, and Bingham McCutchen LLP.

Mary then joined Santa Clara-based Marvell Semiconductor, Inc. as a senior patent litigation attorney. There, she rose through the ranks to become Director and Managing Counsel for Litigation. While at Marvell, she guided Marvell through a Securities and Exchange Commission investigation relating to stock option backdating, resulting in the company’s multi-year restatement of noncash expenses and management reorganization.

Following her tenure at Marvell, Mary served as Managing Director and Associate General Counsel, Intellectual Property at Maxim Integrated Products, Inc. in San Jose. As chief intellectual property counsel, Mary was responsible for IP development, licensing, acquisition, policy, standards, and disputes on a global scale. Mary was the first patent attorney at Maxim, a then 27-year-old Silicon Valley tech company with no prior patent program. She designed and implement its patent program, which grew the patent portfolio over 400%. That entailed working with other executives to implement a patent approval process, board, metrics, database, and award program, as well as the company’s first patent licensing program in over 20 years. She also provided leadership to the company’s Ethics and Compliance Group, and led its Cybersecurity Steering Group.

After more than eight years at Maxim, Mary became General Counsel and Corporate Secretary at Adaptive Spectrum and Signal Alignment, Inc. (“ASSIA”) in Redwood City. While at ASSIA, Mary drove and closed a key round of corporate financing for tens of millions of dollars that included issuing a new series of stock. She was also instrumental in closing the company’s largest single commercial deal with a significant European telecommunications company.

After working at ASSIA, Mary served as vice president, chief policy officer and head of legal at Kudelski Intellectual Property and Innovation in Mountain View.

In addition to leading Fuller Tech Law, Mary is an adjunct professor and supervising attorney at Santa Clara University School of Law’s Entrepreneurs’ Clinic, where students provide pro-bono legal services to high-tech startups. She also speaks regularly on topics such as intellectual property, patent licensing strategies, artificial intelligence, litigation management and contract law. She is a frequent presenter at the Practicing Law Institute.


Rachel Lovejoy is currently Senior Counsel at Space Exploration Technologies Corp. (SpaceX), a company founded by Elon Musk that designs, manufactures and launches advanced rockets and spacecraft.  She manages SpaceX’s intellectual property strategy, including patents, copyrights, trademarks and trade secrets; negotiates complex technology transactions across SpaceX’s lines of business, and advises SpaceX on issues of data privacy, security and confidentiality, among other issues.

Rachel has over 20 years of experience working with technology companies.  Prior to joining SpaceX in early 2014, she worked for IBM for 11 years in various roles in San Francisco, New York, Dubai and Sao Paolo.  Earlier in her career, she worked in Silicon Valley with high-tech startups, both in private practice and in-house, and served as an officer in the US Army Reserve. Rachel received her undergraduate degree from the University of Notre Dame, and her law degree from Harvard Law School. She currently works in the Washington, DC offices of SpaceX.


Ted Herzog is Sector General Counsel – International at Ecolab Inc., a global leader in water, hygiene and energy technologies and services.  In his current role, Ted is responsible for Ecolab’s international legal matters, as well as for legal support for digital commercial solutions, global supply chain and IT security.  Ted also serves as Ecolab’s global data protection officer and spent four years advising Ecolab’s management and board of directors in the areas of corporate governance and securities law.

Prior to joining Ecolab in February 2014, Ted served as global legal counsel responsible for legal support of all supply chain-related operations for Honeywell’s largest division.  Earlier in his career, Ted spent five years at Pentair, Inc., progressing through a series of legal roles including as general counsel of Pentair’s largest division, M&A counsel and global lead compliance leader. Ted spent seven years in private practice at the law firm of Dorsey & Whitney, serving clients in numerous areas of law, including international business transactions, M&A, corporate governance, securities law, corporate finance, compliance and international employee benefits.

Ted earned a juris doctor from the Stanford University School of Law, a Master of Arts degree in Economics from the University of Minnesota, a diploma from Jagiellonian University in Kraków, Poland, and a Bachelor of Arts degree in Economics and German from the University of Wisconsin – Eau Claire.  In addition, Ted was a Fulbright Scholar in the Faculty of Economics at the Free University of Berlin, Germany. 


Tonik Matthews is Director and Senior Corporate Counsel at Autodesk, Inc., a leading 3D design, engineering and entertainment software platform company. 

Ms. Matthews received her law degree from the Stanford Law School and is a Phi Beta Kappa graduate of Harvard University.  During her 9-year tenure at Autodesk, she has been senior legal counsel to the company’s Chief Technology Officer (including the AI Research unit), SVP of Business Strategy and Marketing, and its Chief Information Officer. She also co-led an Autodesk team focused on AI/ML legal issues.  Prior to Autodesk, Ms. Matthews served as the Director of Business Affairs for Lucasfilm Ltd. and was General Counsel of a multinational media distribution company.

Tonik currently serves as a Director on the Board of Marin Promise Partnership, an organization addressing socio-economic and educational inequities of school-age children.  She also is a member of the grant review committee for 100 & Change, the MacArthur Foundation's bi-annual $100 Million global competition to fund a single proposal to solve a critical problem of our time.


Violetta Kokolus is a partner in the intellectual property transactions group. She advises on complex technology and intellectual property transactions, as well as on critical IP and privacy/cybersecurity aspects of M&A transactions across various industries.

Violetta has been involved in countless M&A transactions in her career, leading negotiations and resolving complex IP issues that arise during diligence. Additionally, Violetta has extensive experience with strategic IP licensing and commercial transactions, such as IP acquisitions, licensing matters, joint ventures, and research and development collaborations. She has also guided clients on legal issues related to data strategies and monetization, along with the integration of artificial intelligence.

Prior to joining Ropes & Gray, Violetta practiced at a leading international law firm in New York. She also was seconded as legal counsel to Apple Inc. in Cupertino, California and Panasonic Corporation in Osaka, Japan.


David Almeling is a partner in the San Francisco office of O’Melveny & Myers.  He is one of the country’s leading attorneys in trade secret law.  Legal 500 describes him as one of the “key figures in the trade secrets space,” IAM Patent 1000 calls him a “trade secret authority,” he has taught trade secret law at UC Berkeley Law School, and he has testified before Congress on safeguarding trade secrets. David was profiled for his trade secret work in The National Law Journal ’s “Intellectual Property Trailblazers & Pioneers” as one of the top 50 intellectual property lawyers and in Daily’s Journal’s list of “Top Trade Secret Lawyers” in California.  The third edition of his book, Trade Secret Law and Corporate Strategy, was published by LexisNexis in 2018.


Jason Kipnis focuses his practice on complex intellectual property matters and advises clients on IP portfolio management, litigation, enforcement and dispute counseling, and audits and due diligence. His experience includes trade secret protection and management, standards counseling, open source matters, international rights management and identification and acquisition of intellectual property of third parties.  In addition, he has advised clients at various stages of development in a wide range of technologies, including computer architecture and system design, software, semiconductor design and fabrication, optics, networking and telecommunications, biotechnology and medical devices.

Mr. Kipnis is a frequent speaker on intellectual property matters at professional and academic conferences, was for many years an adjunct lecturer at Stanford Law School, where he taught IP Strategy for High Technology Companies. He is a current board member of the Portola Valley Theatre Conservatory and a past President of the Board of the Bay Area Video Coalition.

Prior to beginning his legal career, Mr. Kipnis worked as a consultant for Oracle Corporation, where he designed and implemented database applications.


Marjorie Goux is a mission driven legal and business leader. She is Vice President and Chief Legal Counsel at the five-bottom-line company, CLIF BAR, whose energy bars fuel our adventures and an Advisor/Investor for TANOSHI Kids’ Computing – an award-winning Silicon Valley startup closing the homework gap with affordable tablets designed and loaded for kids between the ages of 6 and 12. Previously, she helped fuel growth at The Clorox Company in a dual role as Division Counsel for a succession of Clorox’s market leading businesses such as CLOROX and GLAD and as Chief Counsel for Clorox’s global strategic partnering and innovation teams. Earlier in her career, Marjorie thrived in roles focusing on IP law and anti-counterfeiting at HP and the powerhouse firm, BAKER MCKENZIE (both in London and in Palo Alto).

A passionate advocate for breaking the poverty cycle through education, Marjorie supports education-focused organizations through board and other advocacy work and is currently Vice Chair of The Oakland Public Education Fund Board. Her alma maters are: The University of Washington (Chemistry) and University College, London (Law).


Jeffrey L. Van Hoosear is a partner in the Orange County office. He focuses on international trademark and unfair competition matters. His practice also includes domestic and foreign trademark selection and clearance, trademark and copyright prosecution, proceedings before the Trademark Trial and Appeal Board, intellectual property licensing, domain name and website content issues and state rights of publicity.

Mr. Van Hoosear represents a number of clients in the apparel and sporting goods industries, and also represents clients in the food and beverage, automotive, academic, entertainment, fashion, financial, insurance, real estate and software industries. He has represented clients in a wide variety of industries, including Kate Spade, Pacific Life, First American Financial, Green Street Advisors, Motion Picture Licensing Corporation, Lee & Associates, Orexigen Therapeutics, House Foods, 99 Cents Only Stores, and Public Storage.

Education

Boston University School of Law (J.D. 1986)
Beloit College (B.A. Government 1983), cum laude, Dean's List, Martha Peterson Award, Phi Beta Kappa Honor Society


Martin Collins has served as General Counsel since April 2014 and as head of Compliance and Corporate Development since October 2014.

Prior to joining QuinStreet, Mr. Collins served as vice president of corporate development at Bloom Energy, a distributed energy provider, where he was in charge of all corporate development and legal matters. Prior to that, Mr. Collins was the general counsel and head of internal audit at Novellus Systems. He was also previously in charge of M&A and corporate and securities matters for Oracle Corporation’s legal department.

Mr. Collins received his law degree from Georgetown and holds a B.A from Williams College.


Ray Strimaitis currently serves as Vice President at AST where he is oversees Corporate Development & Global Strategy.  Previously, Ray served as Vice President of Intellectual Property and Deputy General Counsel for Yahoo, and as Vice President of Excalibur IP, LLC.  He led a global team of IP professionals and was responsible for all IP matters at Yahoo and Excalibur.  As part of his role, he was responsible for setting patent strategy, monetizing the Yahoo and Excalibur patent portfolios, managing patent risk, guiding patent advocacy and overseeing all trademark/copyright matters. During his tenure at Yahoo, Ray successfully established and led a program to monetize Yahoo patents that generated $600 million in patent sales and license transactions.  In 2016 he led the effort to form Excalibur IP, LLC – a wholly owned Yahoo subsidiary that was created to further optimize patent value to Yahoo shareholders. Before joining Yahoo, Ray served in various legal, management and patent monetization roles at IBM.


Suzanne Bell has more than 20 years of experience representing some of the world’s most prominent technology companies in their most significant technology and intellectual property transactions. Recognized as a leading practitioner in Chambers USA for her "wealth of experience," clients describe her as "service-oriented, delivering high-quality work product in a practical and friendly manner."

Ms. Bell focuses on technology and IP transactions—with an emphasis on complex strategic alliances—for a wide range of software, electronics, AI, IoT, autonomous vehicle, telecommunications, cloud computing, digital media, Internet, fintech, digital health, and clean technology companies. Her practice also includes strategic intellectual property asset purchases and sales; technology mergers, acquisitions, and spin-offs; and intellectual property litigation settlement agreements. In addition to her transactional work, she provides product counseling and advice on structuring business models for emerging technology companies and traditional companies that are embracing technology. Ms. Bell works with both growth and mature companies, and she has advised many of Silicon Valley's most prominent companies from start-up to maturity.


Tessa Schwartz has an active practice counseling companies on intellectual property issues, and negotiating complex intellectual property and commercial agreements. She advises on a range of strategic transactions, including key patent licenses and acquisitions, technology procurement agreements, and complex development, collaboration, joint-venture and distribution deals. Ms. Schwartz also regularly advises companies on the IP aspects of their M&A transactions.

In addition to maintaining an active practice and working with clients on a daily basis, Ms. Schwartz currently serves as a firmwide managing partner.

Ms. Schwartz advises clients primarily in technology and data intensive sectors, representing software, SaaS, cloud computing, hardware, consumer electronics and products, social media, Internet, mobility and wireless, e-commerce, advertising, healthcare, fintech, transportation, semiconductor, and other companies. Ms. Schwartz’s M&A experience includes advising companies on the IP aspects of strategic transactions. She also focuses on matters related to energy-efficiency, renewable-energy, and sustainability. 

Ms. Schwartz provides clients with prelitigation and litigation advice. She frequently advises executives and senior management on strategic business, legal and commercial issues, including the structuring of transactions, risk management and contract compliance. She also counsels clients with respect to a wide variety of IP issues, including patent exhaustion and implied licenses, standing and standards, the protection of data and other trade secrets and the development and distribution of open-source software.

In addition to her transactional expertise, Ms. Schwartz’s litigation background includes representing clients in arbitration, as well as in state and federal courts in such areas as antitrust, false advertising, unfair competition, breach of contract, securities, trademark, copyright and trade secret law. Her litigation experience includes complex, multidistrict and class action litigation, as well as appellate advocacy.

Ms. Schwartz’s pro bono efforts have included work for The Biomimicry Institute, Goodwill, Common Sense Media, Business for Social Responsibility, The World Wildlife Fund, Build Change and the Sustainability Accounting Standards Board (SASB). She also provides IP advice to a variety of cultural, media and arts organizations; and other assistance for nonprofits. She recently received the Wiley W. Manuel Award for Pro Bono Legal Services from the State Bar of California.

Ms. Schwartz received her B.A. magna cum laude from Harvard College in 1991. In 1996, she earned her J.D. from the University of California at Los Angeles, where she was elected to the Order of the Coif.


Tom F. Villeneuve, a founding partner of the firm, is a nationally recognized authority in the areas of U.S. and international corporate partnering, strategic alliances, joint ventures, and licensing, as well as in intellectual property strategy and commercialization. He has extensive expertise representing start-up/emerging companies and multinational corporations in these areas, and has successfully represented emerging company clients in major corporate partnering/strategic alliance and/or licensing arrangements with a great many of the largest U.S. and international information technology, communications, pharmaceutical and medical device companies, as well as with the major research universities and institutes.
 
Tom was the only licensing/partnering lawyer named among the "Top 25 IP Lawyers" by California's leading legal trade publication. He is also one of only a handful of licensing/partnering attorneys named to Global Counsel's "Most Recommended Lawyers" lists and is recognized as one of California's top corporate transactional lawyers in both "Best Lawyers in America" and the Chambers USA guide to "America's Leading Lawyers for Business," as well as one of the Northern California "Super Lawyers." 

Tom has been a Federal court-appointed expert arbitrator, and has been appointed as an expert negotiator and expert counselor/witness regarding intellectual property issues and licensing/partnering practices in various industries. This includes such notable matters as: amicus counsel to the Software Industry Coalition and the Computer Software Industry Association with respect to the U.S. Supreme Court review of the seminal Lotus v. Borland copyright case; appointment by the California Attorney General as the lead strategist and negotiator in resolving the State's highly-publicized Oracle licensing scandal; and serving as the expert consultant and witness on corporate partnering/strategic alliances in the Beckman Center/City of Hope dispute with Genentech.