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Intellectual Property Law Institute 2021


Speaker(s): Alison P. Buchanan, Andrea L. Gothing, Andrew P. Bridges, Annie Huang, Bobby Ghajar, Cara Coburn, Ph.D., Charan J. Sandhu, Christopher J. Wiener, Dan D. Crouse, David Bender, Douglas (Chip) A. Rettew, Earl (Eb) Bright, Evan Elder, Hon. Paul R. Michel (Ret.), James Pooley, Jean Liu, Jonathan E. Moskin, Joseph P. Lavelle, Kathleen E. McCarthy, Lateef Mtima, Laura Berton, Mark S. Holmes, Merri A. Baldwin, Michael S. Borella, Peter Harvey, Richard Guo, Robert Greene Sterne, Robert P. Taylor, William Sloan Coats
Recorded on: Oct. 18, 2021
PLI Program #: 306614

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. 

 


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

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

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


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

Among his major litigation successes are:

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


Annie Huang is a trial attorney with a core belief that the law is a tool to drive business and a passion for protecting intellectual property rights (patents, trademarks, copyrights and trade secrets) through litigation, counseling and licensing. She works with her clients to develop creative and effective solutions for complex legal problems to help them achieve their business objectives.

Through representation of both plaintiffs and defendants in intellectual property and business disputes, Ms. Huang has helped resolve high-stakes disputes facing holders of a variety of intellectual property rights as well as accused infringers. Her experience encompasses matters involving a wide range of industries and markets including consumer electronics, medical devices, variable data printing, window frame technology, and pharmaceuticals. She has served as trial counsel and been a member of several trial teams in district courts and the International Trade Commission (ITC) that resulted in favorable outcomes for her clients, including successful resolutions before trial. She also has experience managing large case teams at every stage of litigation, from pre-suit, case-initiation, and discovery to dispositive motion practice, mediation, and trial.


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

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

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

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


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


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

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

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

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

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


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

         

Publications:   

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

 

Bar Admissions:  New York; US Patent and Trademark Office

 

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

                  LL.B., University of Pennsylvania

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

                   S.J.D., The George Washington University

 

Memberships:

International Association of Privacy Professionals

International Technology Law Association (President, 1999-2000)

Association of the Bar of the City of New York  

 

Super Lawyers:

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

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


Evan Elder is a Senior Licensing Associate at Stanford University's Office of Technology Licensing. He has spent the last 8 years working in the Stanford technology transfer office managing a broad portfolio of inventions from Stanford and SLAC National Accelerator Laboratory. Evan received his B.S. in Chemical Engineering from the University of California Berkeley. Prior to joining Stanford, Evan spent over 10 years in alternative energy and power systems research and development. He is a Certified Licensing Professional.


Jean I. Liu is General Counsel, Executive Vice President, Legal Affairs and Corporate Secretary for Seattle Genetics since November 2014. Prior to that, she served as Vice President and General Counsel of Halozyme Therapeutics, Inc., a publicly-traded biotechnology company, from November 2011 to November 2014. From 1998 to 2011, she was with Durect Corporation, a publicly-traded biotechnology company, where she served in positions of increasing responsibility, including most recently Chief Legal Officer and Corporate Secretary. Prior to Durect, Ms. Liu was with the law firms of Pillsbury, Madison & Sutro (now Pillsbury Winthrop) and Venture Law Group where she focused on broad areas of legal advisory for early stage companies, including technology transfer, licensing, patents, and copyright and trademark litigation. Ms. Liu received her B.S. in Cellular and Molecular Biology with highest distinction from the University of Michigan, her M.S. in Biology from Stanford University and her J.D. from Columbia University where she was a Harlan Fiske Stone Scholar.


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

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

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

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

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

 

 


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

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

Patent Litigation

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

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

Antitrust

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


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

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

 


Merri Baldwin is a shareholder at Rogers Joseph O’Donnell, where her practice focuses on attorney liability and commercial litigation.  She handles claims of legal malpractice and breach of fiduciary duty, as well as motions to disqualify and for sanctions.  She regularly counsels lawyers and law firms on legal ethics and law practice management issues.  She represents attorneys in disciplinary matters before the State Bar of California, and has extensive experience handling attorney-client fee disputes.  Ms. Baldwin is a Vice-Chair of the State Bar of California’s Closing the Justice Gap Working Group.  Ms. Baldwin is a former chair of the State Bar of California Committee on Professional Responsibility and Conduct, and is currently a member of the California Lawyers Association Ethics Committee.  She is a co-chair of the Legal Malpractice subcommittee for the American Bar Association Litigation Section Committee on Professional Services Litigation.  Ms. Baldwin served as the President of the Bar Association of San Francisco for 2017.  Ms. Baldwin frequently lectures to attorneys and professional organizations on issues related to litigation, legal malpractice and ethics issues, and she is a lecturer at the University of California at Berkeley School of Law.  Ms. Baldwin co-edited The Law of Lawyers’ Liability (ABA/First Chair Press 2012) and since 2006 she has served as a consulting editor for the Attorney Fee Agreement Forms Manual, published by Continuing Education of the Bar, California.  Prior to law school, Ms. Baldwin was a Fulbright Scholar at the London School of Economics.

Education

J.D., University of California at Berkeley, School of Law (Boalt Hall)

B.A., Smith College, Magna Cum Laude with high honors


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

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

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

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


Richard Guo is a Principal Counsel with The Walt Disney Company.  As part of his responsibilities, Richard advises Pixar and Lucasfilm on a wide range of technology related legal matters, including patent, open source, product development and technology transactions.  Prior to joining The Walt Disney Company, Richard held associate attorney positions at Fenwick & West LLP and Kilpatrick Townsend & Stockton LLP. 

Richard received a B.S. in Electrical Engineering and Computer Sciences from UC Berkeley.  Richard also received a J.D. from the UC Berkeley School of Law.


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

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

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


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.


President and General Counsel. Eb has many years of technology development, company formation and financing experience. He is an inventor, a founder of several companies, a patent attorney and has served on the executive management teams of many start-up companies (Acclarent, Neotract, Vibrynt, Moximed, Nuelle, Willow). He serves on the Alliance for U.S. Startups & Inventors for Jobs (USIJ) Advisory Committee. Previously, Eb was Director of Intellectual Property West Coast Operations at Guidant Corporation where he directed a 9 member team involved in litigation and the strategic development of over 1300 patent and trademark applications related to the Vascular Intervention, Cardiac Surgery and Endovascular Solutions divisions as well as handling legal issues for Guidant Japan and the Compass Group, the unit responsible for Guidant’s venture capital and merger and acquisition activities. Eb is an inventor on fourteen U.S. issued patents with others currently pending. He holds M.B.A.s from Columbia University and University of California, Berkeley, and Juris Doctorate and B.S. in Mechanical Engineering degrees from the University of Oklahoma.


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

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

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

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

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

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


Alison Buchanan is a shareholder with Hoge, Fenton, Jones & Appel, Inc., in San Jose, California, where she serves as the firm’s General Counsel and chairs the firm’s Business Litigation Practice Group. Alison focuses her practice on business litigation, professional liability, and legal ethics. She has tried business litigation, legal malpractice defense, and employment discrimination cases to verdict.

Alison is a Certified Specialist in Legal Malpractice Law, as certified by the State Bar’s Board of Legal Specialization. She is a founding member of the Ethics Committee for the California Lawyers Association, serving as the Vice Chair of Publications. From 2011 to 2014, Alison served a three-year appointment to the California State Bar’s Committee on Professional Responsibility and Conduct (COPRAC). She previously served a four-year appointment to the State Bar's Legal Malpractice Law Advisory Commission.

Alison is a member of APRL (Association of Professional Responsibility Lawyers). She is also a member of the Santa Clara County Bar Association and previously chaired its Professionalism Committee. For ten years, Alison taught Professional Responsibility at Lincoln Law School in San Jose. Alison regularly speaks throughout the state on issues of attorney ethics and professional liability. She has been named a Northern California Super Lawyer from 2013 through 2020.  Alison earned her law degree from Chicago-Kent College of Law (Illinois Institute of Technology), with honors, in 2001.

In addition to her law-related endeavors, Alison proudly serves on the Board of Directors for the Humane Society Silicon Valley.


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.


Bobby Ghajar
Partner
Pillsbury Winthrop Shaw Pittman LLP

Bobby Ghajar is a trial attorney focusing on intellectual property and business litigation. He is the leader of the law firm’s worldwide trademark practice.

For each of the past two years, Mr. Ghajar was named one of the Top 75 IP Litigators in California by the Daily Journal (2012-2013). In 2014, the World Trademark Review 1000 again recognized him for both his trademark litigation and trademark counseling experience. Also in 2014, Managing Intellectual Property magazine named Mr. Ghajar as an IP Star based on extensive research among IP practitioners. In 2013, he was also recognized as one of Law360’s Rising Stars featuring attorneys under the age of 40 whose legal accomplishments belie their age; he was one of only nine intellectual property attorneys recognized by the publication, and the only one whose practice is focused on trademark and copyright litigation and counseling.

Although he has litigated cases that cover a wide range of complex commercial litigation, Mr. Ghajar's practice is centered around his representation of leading companies in trademark, trade dress, copyright, right of publicity, and false advertising litigation. He has handled dozens of high-stakes litigation and appellate matters for some of the top brand owners in the world. He has successfully tried cases to jury and litigated on behalf of clients in preliminary injunction, summary judgment and appeal proceedings, and before various appellate courts across the country. Mr. Ghajar is also experienced in all aspects of practice before the USPTO and has argued successfully before the Trademark Trial and Appeal Board.

Complementing his litigation practice, Mr. Ghajar has significant experience providing clients with creative and results-oriented counseling – ranging from clearance and prosecution in nearly 200 jurisdictions worldwide, to the creation of brand guidelines and enforcement strategies. He brings unique experience in international trademark matters, having managed some of the largest international trademark portfolios, worked on litigations in dozens of countries, filed hundreds of trademark applications for his clients, and settled numerous multi-jurisdictional disputes.

Mr. Ghajar's Internet practice involves counseling on advertising issues, take downs, enforcement in virtual worlds and social media, counseling on secondary liability, and domain name reclamation.

The World Trademark Review 1000 described Mr. Ghajar as an “agile attorney whose profile continues to rise by earning national acclaim for his superb courtroom performances and a string of recent trial successes” and Legal 500 US as "a very strong advocate with great business acumen", "Bobby Ghajar has also assisted start-up companies, whilst also developing his name in internet-related domain name reclamation".

Mr. Ghajar speaks and writes extensively on intellectual property and internet issues, and has been quoted in numerous entertainment and legal publications in both the U.S. and Canada. He is also a contributor to the firm’s Social Media & Games Law blog.


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.