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Intellectual Property Law Institute 2021


Speaker(s): Brian W. Brokate, Carolyn H. Blankenship, Charan J. Sandhu, Christine Yun Sauer, Dale Cendali, David Bender, Douglas (Chip) A. Rettew, Gail H. Zarick, Hon. Paul R. Michel (Ret.), James B. Kobak, Jr., Joel Wolfson, Jonathan E. Moskin, Joseph P. Lavelle, Kathleen E. McCarthy, Lateef Mtima, Laura Berton, Leslie Fischer, Ph.D., Louis S. Sorell, Mark S. Holmes, Michael S. Borella, Peter Harvey, Robert Greene Sterne, Robert P. Taylor, Victoria A. Cundiff, William Sloan Coats
Recorded on: Sep. 27, 2021
PLI Program #: 306610

Brian Brokate is the head of Gibney’s Intellectual Property Practice Group. He guides emerging businesses and leading global brands in developing comprehensive intellectual property protection programs. He designs proactive brand protection strategies to secure their intellectual property in the United States and abroad and help advance their business goals. His work includes enforcement procedures to combat trademark and copyright infringement, civil anti-counterfeiting and infringement litigation and state and federal criminal actions. 

He is partnering with brands to address the rise of counterfeiting during the pandemic, including establishing enforcement priorities, recommending cost-effective protection strategies and working closely with US Customs and Border Protection. 

Brian has been recognized as an industry leader in publications including World Trademark Review and IP Stars, and he is frequently quoted on trends in intellectual property law. He is a speaker and author for PLI, focusing on intellectual property rights and anticounterfeiting enforcement, as well as trade dress trends and protection best practices. 

Brian is a member of Gibney’s Management Committee and he serves on the board of the Intercontinental Grouping of Accountants and Lawyers (IGAL). 


Peter Harvey’s practice emphasizes trademark, trade dress, copyright, trade secrets, and unfair competition litigation in U.S. federal courts. He also advises on IP rights clearance, registration and management.  He has assisted clients in a wide variety of industries, including alcoholic beverages, athletic footwear, banking, computer hardware and software, food, wine, motorcycles, music and video, paper products, publishing, and communications, and including high-technology businesses headquartered on the West Coast.  

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

Mr. Harvey is listed in Who’s Who Legal and World Trademark Review’s WTR1000 as a recognized international expert in trademark law and has been honored among Northern California Superlawyers for many years.  He is active in the International Trademark Association (INTA).  He has served on INTA’s Trademark Mediators Network, which offers alternative dispute resolution services in intellectual property related matters.  He was an INTA board member in 1994-1996 and has chaired several INTA committees, including the International, Forums, Meetings and Alternative Dispute Resolution Committees.  He served as INTA’s Counsel in 2008-2009 and received the INTA President’s Award in November, 2012.  Mr. Harvey has also chaired American Bar Association Intellectual Property Law Section subcommittees on the federal trademark dilution law and the right of publicity.  Since 2001, Mr. Harvey has taught Entertainment & Media Law as an Adjunct Professor at the University of San Francisco School of Law.  He was honored as the Adjunct Professor of the Year in May, 2013.  

Mr. Harvey is a frequent speaker and widely-published author.  Most recently, he has written and lectured on damages in copyright cases and evolving issues under the Right of Publicity at the annual Practising Law Institute’s (PLI’s) IP Institute in New York and San Francisco in 2020 and 2021.  He is a contributor to the Federal Judicial Center’s Trademark Case Management Judicial Guide for Federal judges and has appeared as a panelist on “Issues in Trademark Case Management,” in Intellectual Property in the New Technological Age – A Conference for Federal Judges sponsored by the Federal Judicial Center and the Berkeley Center for Law & Technology in Berkeley, California, May, 2011 through May, 2018.  

Mr. Harvey graduated magna cum laude in economics from Cornell University’s College of Arts and Sciences and received his law degree from Yale Law School. He has practiced law in San Francisco since 1973. Contact Peter Harvey at pharvey@harvey.law and (510) 206-9926. 

 


Bob Taylor is the founder and owner of RPT Legal Strategies PC in San Francisco and Palo Alto, providing legal and business advice to companies and investors with respect to all aspects of intellectual property and related fields of endeavor.  He serves as a Venture Advisor to New Enterprise Associates and as a patent law expert for the National Venture Capital Association.  He also serves on the advisory boards of the Alliance of U.S. Startups and Inventors for Jobs (“USIJ”) and the United States Intellectual Property Alliance (“USIPA”), both groups advocating strongly for reliable and enforceable patent rights.

For more than 40 years, Bob focused primarily on intellectual property litigation, serving as lead trial counsel and/or appellate counsel in dozens of patent, copyright, trade secret and antitrust cases involving a wide range of technologies and industries.  He is a Fellow of the American College of Trial Lawyers and a Lifetime Member of the American Law Institute.

Bob has written and lectured extensively on the business and legal problems associated with both intellectual property protection and the laws related to competition.  He served for several years as the co-chair of the Antitrust Committee of Intellectual Property Owners Association and also as a Member of IPO’s Amicus Committee.  Bob served as a member of the 1992 Commission on Patent Law Reform.  He is a former chair of the Antitrust Section of the American Bar Association, a former Patent Examiner, and a long-time member of the Institute of Electrical and Electronics Engineers.

Bob holds a J.D degree from Georgetown University Law Center and was a member of the editorial board of the Georgetown Law Journal.  He holds a B.S.E.E degree from the University of Arizona and was elected to Tau Beta Pi.  He served in the U.S. Army and worked as an engineer for Motorola and for Bell & Howell before attending law school.


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


Dale Cendali is a nationally recognized leader in the field of intellectual property litigation, having successfully litigated and tried numerous high-profile cases, and having argued before the U.S. Supreme Court. Her practice encompasses copyright, trademark, false advertising, patent, Internet, and trade secrets law, as well as defamation, the right of publicity, privacy, complex contract disputes and similar areas, including electronic discovery. Dale heads Kirkland’s Copyright, Trademark, Internet and Advertising practice group.

In 2017, Dale was named “Outstanding Litigator: New York” at Managing IP’s North America Awards. In 2016, Law360 named Dale one of the 25 “Icons of IP,” who have “made an indelible mark in the IP area.” In 2013, The National Law Journal selected Dale as one of the “100 Most Influential Lawyers in America.” The National Law Journal had previously named her one of “America’s Top 50 Women Litigators,” one of the “50 Most Influential Women Lawyers in America,” and one of “The Most Influential Lawyers” for media and entertainment. Dale has repeatedly been ranked as a “top tier” lawyer by Chambers Global and Chambers USA, which describes her as “one of the best lawyers in the country” in her field who combines “intellectual acuity” with a “tough, hard-working attitude”; a “superb litigator” who “thinks quickly on her feet and vigorously defends her clients.” The World Trademark Review recognized Dale as a “Trademark Experts’ Expert,” “at the top of anybody’s list of the best trademark lawyers in the country”. Euromoney Legal Media Group also named Dale as “Best in Copyright [in] the Americas” at its inaugural Americas Women in Business Law Awards in 2012 and in 2013, and in 2014 was awarded “Best in Trademark [in] the Americas.” Dale also was included in Euromoney’s Benchmark guide, “The Top 250 Women in Litigation.” Dale was also selected as one of the “20 Most Influential Women in IP Law” by Law360.  Managing Intellectual Property selected Dale as one of the six “Outstanding IP Practitioners” in the United States, and named her trial victory for J.K. Rowling on the high-profile “Lexicon” fair use case as the “Copyright Trial of the Year.” IP Stars has named Dale one of the “Top 10 Women in IP.” Dale was listed as one of Lawdragon’s 500 Leading Lawyers in America in the 2013-2014 and 2014-2015 guides. The Legal 500 U.S. recognized Dale as a “leading lawyer” in the areas of copyright and trademark litigation. IP Law & Business recognized her as one of the “Magnificent Seven - IP’s Best Young Trial Lawyers.” Dale was selected for the 2017 edition of The Best Lawyers in America in the areas of Copyright Law and Litigation – Intellectual Property. In 2016, she was selected as Litigation – Intellectual Property “Lawyer of the Year.” She also has repeatedly been named by Super Lawyers among “The Top 100 New York Lawyers” and “The Top 50 Female New York Lawyers,” and was profiled in the feature story “Truth, Justice and the Cendali Way” in the 2007 New York Metro edition of Super Lawyers Magazine. World Trademark Review named Dale a “revered branding expert” who “remains keenly engaged in the development of the law.” Dale has been recognized by the Harvard Law Bulletin as one of Harvard Law School’s “Nifty 50,” celebrating 50 of Harvard Law School’s alumnae. Dale was also selected as a litigation star in the 2013 edition of Benchmark Appellate. Kirkland was named by Managing Intellectual Property in 2014 as “Trademark Contentious Firm of the Year-Nationwide.”

Dale is also an adjunct professor at Harvard Law School, teaching copyright and trademark litigation. She is also a prolific writer and has long been active in the bar. In 2010, INTA elected Dale to serve as Counsel, the highest-ranking position in the organization for an outside counsel. She also previously chaired INTA’s Dilution and Enforcement Committees, and is the current chair of INTA’s inaugural Copyright Committee.

Dale was also the Vice Chair of the Copyright Division and chair of the IP Special Issues Division for the IP Section of the ABA, and currently serves on Council for the ABA IP Section. Among many other positions in the bar, Dale is also the former Chair of the Trademarks and Unfair Competition Committee of the Association of the Bar of the City of New York. In 2015 Dale was selected as an Adviser for The American Law Institute’s project, Restatement of the Law, Copyright.

Education

Harvard Law School, J.D., 1984

  • Editor-in-Chief, The Harvard Journal on Legislation, 1983–1984

Yale University, B.A., 1981

  • summa cum laude
  • Phi Beta Kappa

Admissions & Qualifications

1985, New York


David Bender has taught Privacy Law as an Adjunct Professor at the University of Houston Law Center, and also at Pace University Law School, and he is a Distinguished Fellow of the Ponemon Institute.  He has had extensive Privacy, Intellectual Property, and Information Technology counseling, litigation, and transactional experience.  He was a founder of the Intellectual Property practice at White & Case.  He was later a co-founder of the firm’s Privacy practice, which he headed at the time of his retirement from the firm.
           Mr. Bender served in-house at AT&T for ten years, during the latter half of which he was responsible for all IP litigation brought by or against any Bell System company.  Before that, he spent five years engaged in antitrust litigation.  And before turning to the law, he served as an engineer with the Ford Motor Company’s aerospace division, and as a mathematician with Hughes Aircraft.

         

Publications:   

  • Bender on Privacy and Data Protection (LexisNexis Release #11 2017);
  • Computer Law published in 1978 and presently in Release #73 (LexisNexis, 6 loose-leaf volumes); and over 100 articles in law reviews and conference proceedings.

 

Bar Admissions:  New York; US Patent and Trademark Office

 

Education: Sc.B. in Applied Mathematics, Brown University

                  LL.B., University of Pennsylvania

                  LL.M. in Patent Law, The George Washington University

                   S.J.D., The George Washington University

 

Memberships:

International Association of Privacy Professionals

International Technology Law Association (President, 1999-2000)

Association of the Bar of the City of New York  

 

Super Lawyers:

New York City Metro Super Lawyer in Information Technology (2006 -- 2011).

One of the 25 best lawyers in the Westchester Co., NY Area (2009 - 2011)


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

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

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

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


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

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

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


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

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

Patent Litigation

Joseph has more than 25 years of experience litigating patent cases, including many bench and jury trials. He has litigated in most areas of technology, including semiconductors, computers, computer software, telephony, Digital Signal Processing, telematics, waveform encoding, automotive technology, financial services, biotechnology and many others.

In addition to federal district court proceedings, Joseph has tried a number of Section 337 proceedings before the US International Trade Commission (ITC), as well as handled cases before the US Court of Federal Claims and appeals to the Court of Appeals for the Federal Circuit. He also is licensed to practice before the USPTO and has successfully handled interference proceedings.

Antitrust

Joseph has vast experience handling litigation and counseling matters at the intersection of competition laws and antitrust laws. He has participated in many of the leading matters in the area of standard setting. Also, he has represented clients in patent-antitrust matters before the FTC and the Antitrust Division of the Department of Justice.


Lateef Mtima is a Professor of Law at the Howard University School of Law. After graduating with honors from Amherst College, Professor Mtima received his J.D. degree from Harvard Law School, where he was the co-founder and later editor-in-chief of the Harvard BlackLetter Journal (today the Harvard Journal on Racial and Ethnic Justice). He is admitted to the New York and Pennsylvania bars and has practiced intellectual property, bankruptcy, and commercial law, including a decade in private practice with the former international law firm of Coudert Brothers. Professor Mtima has served as a member of the Advisory Council for the United States Court of Federal Claims, President of the Giles S. Rich Inn of Court for the United States Court of Appeals for the Federal Circuit, a member of the founding Editorial Board for the American Bar Association intellectual property periodical Landslide, a member of the BNA Patent, Trademark & Copyright Journal Advisory Board and the ALI Practical Lawyer Editorial Board, and a  Distinguished Libra Visiting Scholar in Residence at the University of Maine School of Law. Professor Mtima is the Founder and Director of the Institute for Intellectual Property and Social Justice, an accredited NGO member of the World Intellectual Property Organization (WIPO), and which advocates for core principles of socially equitable access, inclusion, and empowerment in the development and implementation of the IP ecosystem.

Professor Mtima is the editor/contributing author of Intellectual Property, Social Justice, and Entrepreneurship: From Swords to Ploughshares (Edward Elgar 2015) and a co-author of Transnational Intellectual Property Law (West Academic 2016). Some of his other publications include The Idea Exclusions in Intellectual Property Law, 28 Texas Intell. Prop. L. J. 343 (2020); IP Social Justice Theory: Access, Inclusion, and Empowerment, 55 Gonzaga L. Rev. 401 (2019/20); Digital Tools and Copyright Clay: Restoring the Artist/Audience Symbiosis, 38 Whittier Law L. Rev. 104 (2018); Copyright and Social Justice in the Digital Information Society: “Three Steps” Toward Intellectual Property Social Justice, 53 Hous. L. Rev. 459 (2015); A Social Justice Perspective on IP, Innovation, Entrepreneurship, Innovation and Entrepreneurship, in Entrepreneurship and Innovation in Evolving Economies: The Role of Law (Edward Elgar 2012); What’s Mine is Mine but What’s Yours is Ours: IP Imperialism, the Right of Publicity, and Intellectual Property Social Justice in the Digital Information Age, 15 S.M.U. Sci. &Tech. L. Rev. 323 (2012); Fulfilling the Copyright Social Justice Promise: Digitizing Textual Information, 55 N.Y.L. Sch. L. Rev. 77 (2010) (quoted in The Authors Guild v. Google Inc., 770 F. Supp. 2d 666, 679, n. 15, (S.D.N.Y. 2011); Copyright Social Utility and Social Justice Interdependence: A Paradigm for Intellectual Property Empowerment and Digital Entrepreneurship, 112 W. Va. L. Rev. 98 (2009); Whom the Gods Would Destroy; Why Congress Prioritized Copyright Protection Over Internet Free Speech and Privacy in Passing the Digital Millennium Copyright Act, 61 Rutgers L. Rev. 627 (2009); So Dark the CON(TU) of Man: The Quest for a Software Derivative Work Right in Section 117,  70 U. Pitt. L. Rev. 1 (2008); and “Tasini and Its Progeny: The New Exclusive Right or Fair Use on the Electronic Publishing Frontier?” 14 Ford. Intell. Prop., Media & Ent. L. J. 369 (2004) (quoted in Greenberg v. National Geographic Society, 533 F.3d 1244, 1264, 1266 (11th Cir. 2008) (dissenting opinion)).

 


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


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

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

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

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


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

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

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

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

 


 


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

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

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


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

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

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


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

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

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

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

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

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


With over a billion dollars in patent deals under his belt, Mark Holmes is the founder and CEO of PatentBridge LLC, a privately held technology development firm in Silicon Valley that specializes in bringing to market select patented technologies covering extraordinary software and Internet-related breakthroughs. 

Mr. Holmes is the CEO and Co-Founder of RavenWhite Cybersecurity, Inc. which was selected as one of the top 10 security startups worldwide at the RSA Conference. He is also the Executive of Business Development for the DeCaf Co. which is creating the world’s first consumer instant decaffeination product.

Mr. Holmes has advised such technology savvy entities as Visa, Sony, Applied Materials, University of California at Berkeley as well as many startups and has been named every year to the IAM Strategy 300 – The World’s Leading IP Strategists.  He served as co-chair of the Silicon Valley Chapter of the Licensing Executives Society (LES) from 2006 to 2011.

He was the co-founder of a successful telecommunications startup which was sold in the late 1990s to a portfolio company of the Alabama state retirement fund (Retirement Systems of Alabama).

He lectures nationally on the pressing issues facing tech startups. In the past few years, he has spoken nationally over 50 times for such bodies as Renaissance Weekend, International Society for Optical Engineering (SPIE), PLI and other organizations.

He holds an engineering degree from Brown, is a member of the Institute of Electrical and Electronics Engineers (IEEE), IEEE Software Society and wrote the book PATENT LICENSING AND SELLING: STRATEGY, NEGOTIATION & FORMS.


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 is a Counsel at IBM, where she currently supports the IBM Storage Division and advises on intellectual property issues for the IBM Corporate organizations.  She has previously supported the Research and Security Divisions and Regulatory Compliance and has managed diverse teams in the IP Law department.  She has extensive experience with all aspects of developing and creating value from an IP portfolio. 

In addition, Gail serves as a pro bono leader at IBM’s Armonk location, where she has expanded opportunities for IBM lawyers to provide pro bono representation to non-profits and underserved communities.  She is also an Education Leader for the IBM global law department.

Gail is a frequent speaker at PLI conferences.

Before joining IBM, Gail practiced intellectual property law at Pennie & Edmonds LLP in New York. 

 

JD, Pace University School of Law

MSE, University of Pennsylvania

BSE, Princeton University

 


Katie McCarthy is a partner in the New York office of King & Spalding’s IP practice group with more than 30 years of experience in trademark, design, internet, advertising and copyright matters.  Katie graduated from Columbia University School of Law and secured her bachelor’s in psychology from The College of the Holy Cross.

Katie advises clients on global IP, advertising and platform liability issues and litigates cases in the federal courts and the U.S. Patent and Trademark Office Trademark Trial and Appeal Board. 

Katie is actively involved with the New York Intellectual Property Law Association (NYIPLA), having just finished several years on the Board and a term as President. 

Katie also recently finished a two-year term as the Editor-In-Chief of the International Trademark Association’s scholarly journal The Trademark Reporter, having written, solicited and edited articles for the journal for more than 20 years.  Her article on trademark parodies, “Free Ride or Free Speech: Predicting Results and providing Advice for Trademark Disputes involving Parody,” was published in The Trademark Reporter in 2019 and won INTA’s 2020 Ladas Memorial Award in the Professional Category.

Katie speaks frequently for the NYIPLA, INTA and PLI, and serves as the new editor for the PLI one volume treatise, Kane on Trademark Law.  Katie also actively promotes diversity in the profession through her involvement in King & Spalding’s Women in IP and Technology initiatives and her mentorship of young lawyers and law students through various programs including the Leadership Council on Legal Diversity.

Katie lives in Astoria, New York with her husband and two sons.


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

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

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


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

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

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

 


Jonathan E. Moskin is a partner and intellectual property lawyer with Foley & Lardner LLP. He has acted as lead trial counsel and otherwise litigated trademark, copyright and patent cases, as well as contract disputes, privacy matters, false advertising and right of publicity cases in numerous federal, trial and appellate courts. He is a member of the IP Litigation, Security & Information Management Practice groups.

Prior to joining Foley, Mr. Moskin was a partner at White & Case LLP and Pennie & Edmonds, LLP, where he was chair of the Trademark/Copyright Group. He has successfully represented major companies in intellectual property matters, including Acco Products; Aristocrat Technologies; Bacardi & Co.; Booking.com, Cablevision; Calvin Klein; Cannondale Bicycle Corp.; Citigroup; Caesars Entertainment; Diageo; Deutsche Bank Trust Co.; Emjoi, Inc.; Field & Stream Holdings, LLC; Games Workshop; Hasbro; Herman Miller, Inc.; Ingersoll-Rand; Jim Beam Brands; JP Morgan & Chase Co.; Kayak Software Corp.; Novartis; Phillips Van Heusen; Priceline; QVC; Rambus, Inc.; Stiefel Laboratories; Swiss Army Brands, and Valentino.


Judge Michel served for more than 22 years on the Federal Circuit, retiring on May 31, 2010.  From December 25, 2004 until his retirement, he also discharged the duties of Chief Judge of this national court, serving simultaneously on the U.S. Judicial Conference -- the Judiciary's governing body -- and by appointment of the Chief Justice on its seven-judge Executive Committee.

He judged several thousand appeals and authored more than 800 opinions, one third concerning intellectual property law.  Intellectual Asset Management magazine inducted him into its Hall of Fame and he was designated one of the 50 most influential leaders in intellectual property law in the world.  His contributions were also recognized by lifetime achievement and similar awards by the American Intellectual Property Law Association (AIPLA); Intellectual Property Owners Education Foundation (IPO); the American Bar Association's Intellectual Property Section; Managing Intellectual Property magazine; the Sedona Conference; the Patent and Trademark Office Society (PTOS); the New York, Chicago, Philadelphia, and Los Angeles Intellectual Property Law Associations; and the William C. Connor, the Giles S. Rich, and the Richard Linn Intellectual Property American Inns of Court.  In 2010 the Los Angeles IP Inn was renamed in his honor as the Paul R. Michel IP Inn.

Judge Michel received the Jefferson Medal, the Eli Whitney Award, and the Katz-Kiley Prize as well as Honorary Doctor of Law degrees from the Catholic University of America and the John Marshall Law School.  He is a lifetime Member of Honore of FICPI, the international association of private practitioners of intellectual property law.  Williams College granted him the Kellogg Award for "outstanding leadership in law and public service."

Judge Michel has written numerous articles on patent law and advocacy, taught related courses and master classes at George Washington University, the University of Akron, and John Marshall law schools, serving as well on their IP advisory boards and on counterpart boards at the universities of California (Berkley), Washington, and Maryland.  He co-authored a casebook, Patent Litigation and Strategy (West, 1999) and an August 2010 editorial in the New York Times on strengthening the patent system to promote prosperity and create new jobs.

A frequent speaker at conferences and law schools during his judicial tenure and since, he retired from a lifetime appointment to be free to speak out on the national need for better patent policy and protection of intellectual property and the vital, unmet resource needs of the courts, the PTO, the International Trade Commission, and other IP-related agencies.  He was appointed Distinguished Scholar in Residence by IPO, following his retirement.  Judge Michel also consults for law firms and their clients in intellectual property litigations, conducting moot courts, mock trials, case evaluations, editing briefs, advising on strategy and providing mediation and arbitration services.


William Sloan Coats is a veteran intellectual property lawyer in Silicon Valley?.  He has many accolades and triumphs and is AV rated by both lawyers and judges. He was the former Chair of the Science and Technology Section of the ABA and has represented the United States in various international IP treaty negotiations.