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Advanced Licensing Agreements 2021


Speaker(s): Ako S. Williams, Brian S. Kelly, Christian H. Nadan, David Rabinowitz, David W. Tollen, Erik Oliver, Hsinya Shen, Ira Jay Levy, Joseph Yang, Kevin Yung, Laura Berton, Laura M. Franco, Lily Wound, Lindsie Goss, PhD, Marc P. Schuyler, Marcelo Halpern, Mark G. Tratos, Mark S. Holmes, Marya Postner, Peter J. Kinsella, Stephen J. Rosenfeld
Recorded on: Jan. 25, 2021
PLI Program #: 306702

Ako Williams is Vice President, General Counsel and Corporate Secretary of Ushio America, Inc., in Cypress, California. Ushio America is a leading provider of light sources and solutions for a variety of applications including scientific, medical, semiconductor, entertainment, horticulture, and architectural applications.  Ushio America is a subsidiary of Ushio Inc., a publicly traded global manufacturer in Tokyo, Japan.  In her role as General Counsel and Corporate Secretary, Ms. Williams oversees all of the company’s legal, compliance, risk management, and corporate governance matters.  As a native of Japan, Ms. Williams uses her language skills and deep understanding of both Japanese and U.S. business cultures in providing effective legal and strategic advice to Ushio America and other group companies.  Ms. Williams also serves on the board of directors of KA Imaging Inc. in Kitchener, Canada, a developer of portable multi-energy x-ray detectors and micro-CT scanners for a wide variety of applications in healthcare, veterinary, security, automotive, non-destructive testing, food inspection, and other areas.

Previously, Ms. Williams was an Assistant General Counsel and Compliance Officer of Christie Digital Systems USA, Inc. (an affiliate of Ushio America), and an Assistant General Counsel of Apria Healthcare and also practiced commercial and IP litigation and corporate transactions at major law firms. 

Ms. Williams currently serves as a Council Leader for the U.S.-Japan Council and Program Chair for the International Legal Affairs Network of the Association of Corporate Counsel.  She has previously served on the Board of Governors of the Japanese American Bar Association of Greater Los Angeles and the Board of Directors of the Women In Technology – Orange County. 

Ms. Williams received her B.S., highest distinction, from Northwestern University and J.D. from Loyola University Chicago School of Law where she was on the school’s law review and Editor-in-Chief of the Loyola Forum of International Law.

 


Brian Kelly is a partner in the firm’s Los Angeles office.  He has extensive experience counseling clients at all stages of growth in the commercialization of intellectual property. He focuses his practice on structuring, negotiating and documenting technology-based transactions. These transactions, many of them with international dimensions, have involved clients in a variety of industries, including health IT, financial services, retail, distribution and telecommunications.  He also advises clients on open source technologies, data security and privacy issues, and intellectual property aspects of mergers, acquisitions, development and distribution relationships, and strategic alliances.


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

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

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

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

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


Erik Oliver is a partner in at Richardson Oliver Law Group LLP specializing in patent and business matters, including licensing, buying, selling, valuation, prosecution and business processes.

He provides data driven advice using his firm’s proprietary database of patent market information covering more than 115,000 patents and over $12B worth of deals. He has patent portfolio licensing and marketing experience resulting in millions worth of patent license bookings.

Prior to founding the ROL Group, Erik was a Vice President at ThinkFire Services USA, Ltd’s Silicon Valley office. Erik has held various senior positions with a range of responsibilities at Rambus Inc., Synopsys, Inc., and a number of Silicon Valley startups. He was also previously an associate at Wilson Sonsini Goodrich and Rosati.

Erik has over 40 published articles and lectures on patent strategy, intellectual property, and related business issues at Stanford, Santa Clara, and the Center for Intellectual Property at Chalmers.

Erik is a member of the California and District of Columbia Bar and a United States Patent and Trademark Office registered patent attorney.

Erik has a B.S. in Computer Science/Mathematics from Haverford College, an M.S.E. in Computer Information Science from University of Pennsylvania, and a JD from the University of Pennsylvania.


Hsinya Shen is Deputy General Counsel for Contentful, Inc., covering product, privacy, IP, and compliance. Hsinya began her career as a corporate attorney at Orrick, Herrington & Sutcliffe LLP. She started her in-house career at Yahoo! Inc. She has been supporting product development for over 10 years, first as Head of Legal at Sony Ericsson Silicon Valley, then as division general counsel for Akamai’s emerging product groups. Hsinya is versed in corporate and intellectual property law. Hsinya obtained her BA at Wellesley College and her law degree from Georgetown.


Joseph Yang is an IP transactions partner at PatentEsque Law Group, LLP.

Joe specializes in structuring & negotiating tech/IP-centric deals (technology transactions, strategic alliances, patent licensing/sales, standards body issues, IP aspects of M&A) and in using IP as strategic business assets. He has led hundreds of deals involving billions of dollars in and across the information technology, electronics, entertainment, consumer goods, healthcare, energy, chemical & manufacturing industries. Reflecting these diverse experiences, Joe is often retained to “bridge the gap” in cross-industry deals (e.g., joint ventures, IoT, SaaS & “big data” deals) between companies whose industries historically didn’t interact with each other.

Joe is also an expert witness for high stakes tech & patent licensing disputes.

Joe teaches the "Technology and Patent Licensing" course at Stanford Law School, and has taught the “Patent Law and Policy” course at U.C. Berkeley School of Law. Joe is a long-time chair of the “Advanced Licensing,” “Advanced Patent Licensing” and “Understanding the IP License” courses at the Practising Law Institute in NYC, SF and Chicago. He has written for journals & books, and been cited by courts & treatises, on licensing & patent law.

Joe previously served as VP & General Counsel of Cryptography Research, Inc. (CRI), negotiating deals under which 10+ billion devices/year are made by its licensees in the smart card/phone, semiconductor, pay TV, printer & other fields. He also developed, enforced & defended CRI’s patent portfolio, and played a key role in CRI’s successful sale in a series of M&A deals (with Macrovision & Rambus) valued at $400+ million.

Before that, Joe co-founded and later led the “IP Strategy & Transactions” practice based in the Silicon Valley office of the world’s largest law firm (Skadden, Arps). He has also practiced at other large multinational law firms, and served as an arbitrator.

Joe has been named one of the “World’s Leading IP Strategists,” “World’s Leading Patent Professionals” and “World’s Leading IP & Technology Licensing Lawyers” by Intellectual Asset Management (IAM) publications. IAM named Joe as 1 of only 10 "highly recommended" IP transactional attorneys in California -- the only one from a boutique (non-AmLaw 100) firm:

“Joseph Yang is a major-league deal maker and licensing authority” as well as “a transactional mastermind” with arbitration and litigation skills that make him a formidable negotiator.” “He … is a creative problem solver who can clearly articulate legal risks and provide effective advice to guide business decision making.”

Joe is “one of the best expert witnesses you could hope to deal with. He considers all the issues before committing to an opinion, and his positions are always rock solid”.

He is also profiled in “Marquis Who’s Who in American Law”, “Marquis Who’s Who in America” and “Marquis Who’s Who in the World”, and named to the California SuperLawyers list.

Joe also serves on the advisory board of the Licensing Executives Society - Silicon Valley chapter, and is a board member of the Asian Pacific American Bar Association of Silicon Valley.

Joe was originally a research engineer in the aerospace & energy fields. He holds a J.D. from Stanford Law School and a Ph.D. (engineering) from the California Institute of Technology, where he has been a board member of the Caltech Associates & Caltech Alumni Association.


Kevin Yung is an Associate General Counsel of Twitch Interactive, Inc., an Amazon subsidiary. Twitch is a global community where people come together to create multiplayer entertainment: unique, live, unpredictable experiences created by the interactions of millions. At Twitch, he is responsible for negotiating and supporting the various legal aspects of Twitch’s content initiatives, including talent agreements, production matters, and marketing efforts. Kevin graduated from Cornell University Law School in 2008. After graduation, he began his career at Weil, Gotshal & Manges in New York, and Morrison & Foerster in San Francisco. 


Laura Franco is of counsel in the firm’s San Francisco and Silicon Valley offices and focuses her practice on intellectual property counseling and litigation, including trademark, copyright, and brand enforcement and protection. Laura is a “popular choice among brands of all stripes” (WTR 1000), including start-up and Fortune 500 companies in diverse industries, from consumer products to financial institutions. Laura’s trademark practice includes thoughtful and strategic counseling to ensure a brand’s integrity, and developing and applying practical branding strategies to coincide with clients’ business goals. She has extensive experience representing global companies in trademark, copyright, unfair competition, false advertising and domain name litigation, in federal and state courts, before the TTAB and in private arbitration. Laura also works with clients to develop and execute registration and enforcement strategies for global portfolios; negotiating and drafting IP licenses; and handling domain name portfolio management and enforcement. Laura’s client-base is focused in the automotive, financial services, fin-tech, food and beverage and technology sectors.  Laura is Co-Chair of LLAW, Winston’s Latinx lawyer affinity group.

Experience

  • Manages the global trademark portfolios for numerous brands in the FinTech, Food and Beverage and Consumer Goods spaces, including CITADEL, CHARLES SCHWAB (previously), DRISCOLL’S, FAGE, QUEST and PAN AM.
  • Represents clients in the hospitality, retail, food and automotive industries in acquisition, divestment and licensing of strategic trademark portfolios.
  • Represents Brake Parts, Inc. in connection with domain name portfolio management and enforcement.
  • Represents several investment companies in connection with brand protection and portfolio management.
  • Representation of numerous private equity groups in their acquisition of high-profile brands in the clothing and food and beverage industries.
  • Counsels and prepares commercial agreements for clients in the food and beverage industry.

Activities

Laura’s professional affiliations include: International Trademark Association; California Bar Association – Intellectual Property Section (past Vice-Chair International Interest Group); Women’s Intellectual Property Lawyers Association (past Secretary). Hispanic National Bar Association; San Francisco La Raza Lawyers Association; Co-Chair of LLAW, Latinx Lawyers at Winston; Board Vice-Chair, Puente de la Costa Sur.

Credentials

Laura received her B.A., cum laude, in Economics and Latin American Studies from University of California, Berkeley in 1991 and she received her M.P.P. in Public Policy from Harvard in 1994. She received her J.D., from the University of California, Berkeley in 1995 where she was a member of the La Raza Law Journal.


Lily Wound, a partner in Goodwin’s Technology and Life Sciences group, has extensive experience representing pharmaceutical, biotechnology, and other life sciences companies in a wide range of complex commercial, corporate, and licensing transactions, including those involving gene therapy, gene editing, engineered cell therapy, and genomic testing.  With broad knowledge of licensing and collaboration matters, Ms. Wound has worked on some of the most complex life sciences collaborations in the industry and has handled transactions at every stage of the life cycle of a life sciences product.  In addition, her roster of domestic and international clients extends to the healthcare, healthcare information and technology, cosmetics, publishing, media, internet, software, and technology industries.

Ms. Wound joined Goodwin in 2019 from WilmerHale, where she served as counsel. She has also served as in-house counsel at Hearst Corporation, where she advised on all aspects of Hearst's businesses relating to healthcare information and technology, traditional media, new media, and digital media.  Her responsibilities at Hearst included serving as general counsel for an evidence-based medical information and technology company and leading all complex transactions in the newspapers division.

Ms. Wound also serves on the National Committee for Women in Bio, a networking organization for professional women in the life sciences and serves as the National Chair for Young Women in Bio, leading an organization that encourages young girls from elementary school to high school to study and pursue careers in STEM.  She has also served on the Steering Committee of the Women in Bio-Metro New York Chapter.  In addition, she serves as a Venture Advisor to ELabNYC, an accelerator program for life sciences startups in New York City.


Lindsie Goss, PhD is a Senior Technology Manager in the Business Development office at Fred Hutchinson Cancer Research Center, a private non-profit research institute in Seattle, WA. Lindsie’s primary focus is intellectual property capture and licensing of cell and gene therapy technologies. Her deals often couple patent licenses with preclinical and clinical sponsored research agreements to provide the necessary co-development and financing to bring these therapies into Phase 1 studies at Fred Hutch and its clinical affiliates. Lindsie also co-manages the Fellows program that provides Fred Hutch staff, graduate students, and post-docs exposure to technology transfer and early stage technology commercialization.     

Lindsie received a Bachelor of Arts degrees from the University of California, Berkeley in Molecular and Cellular Biology- Genetics and Scandinavian Studies in 2006. After her undergraduate training, Lindsie joined the Microbiology and Immunology Department in the Graduate School of Arts and Sciences at Columbia University where she earned a Master of Arts in 2009, Master of Philosophy in 2012, and a Doctorate in Philosophy in 2013. Prior to joining Fred Hutch, Lindsie worked as an Innovation Development Manager at UW CoMotion, the technology transfer office for the University of Washington, and as the Director of the Allied Minds Fellows Program for Allied Minds plc, an IP commercialization company focused on technology and life sciences based in Boston.


Marcelo Halpern is the firmwide co-chair of Perkins Coie’s Technology Transactions and Privacy practice group.  His practice focuses on complex commercial transactions involving the development, deployment and distribution of technology in a wide variety of industries.

Marcelo counsels multinational FORTUNE 100 companies, startups, emerging growth companies, governments and nonprofits on structuring and negotiating collaboration, development, distribution, license and service agreements.  He provides practical counsel in connection with emerging technologies, including those related to big data analytics, artificial intelligence, fintech and blockchain, internet of things, smart cities, mobile, cloud computing and “as a service” platforms, hardware and e-commerce, as well as the overall interplay of interoperability, industry standards and IP licensing approaches.  He has a strong focus on complex strategic alliances and licensing transactions, outsourcing and ERP implementation, digital strategies—including open source licensing, data security, data use and privacy issues—and other marketing and distribution strategies.

He regularly works with clients in the blockchain industry, advising on technology and platform issues, structuring token offerings, digital currency issues, tokenization of assets, and the development and operation of blockchain based collaborative platforms.  He also has advised on the formation of various blockchain consortiums, including the Enterprise Ethereum Alliance, that develop blockchain platforms in specific industries and create industry standards.

Marcelo was honored by U.S. News - Best Lawyers as the Chicago “Lawyer of the Year” in the technology law category and has been listed since 2004 as one of “America’s Best Lawyers” for technology law by Chambers USA in its annual guide of leading business lawyers.

Outside of his legal practice, Marcelo serves on the board of directors for Youth Guidance, an organization offering school-based programs that empower youth in Chicago to succeed in school and in life.  He also serves on the board of directors for the Lawyers Trust Fund of Illinois supporting civil legal aid services to the underserved.  Marcelo previously served as president of the board of directors for Illinois Legal Aid Online, a trailblazing platform connecting people to the resources they need to resolve their legal problems and interact with the legal system when they cannot find or afford a lawyer.


Mark G. Tratos is the Founding Shareholder of Greenberg Traurig’s Las Vegas office and a long-time member of the University of Nevada and the Boyd School of Law Adjunct Facility.

Mark’s practice of the past four decades has focused upon the creative protection of artists, entertainers, athletes, producers and venues.  He has represented clients in federal court actions and appeals across the country, negotiates talent licenses and entertainment contracts for both celebrities and their estates. 

Since 1990, he has authored the Nevada chapter of INTA State Law Handbook.  Since 2003, he has been the author of the New York Bar Association Entertainment Treatise chapter: Entertainment on the Internet: The Evolution of Entertainment Production, Distribution, Ownership and Control in the Digital Age.  Since 2010, he has authored that treatise chapter Exhibitions: Art and Artifact Exhibits as an Expansion of the Entertainment Industry.

Mark has been AV rated for more than three decades; has been recognized by Legal Elite, Super Lawyers, and Best Lawyers in America which has included him since 2003.  His peers have voted him Lawyer of the Year eight times in his fields of practice.  Mark is the Past Board Chair of the National Judicial College.  He is Co-Founder and Past Chairman of the Discovery Children’s Museum in Las Vegas; and serves as Secretary of and outside counsel for the Board for the Smith Center for Performing Arts.


Peter Kinsella is a partner in the firm's Technology Transactions & Privacy and Intellectual Property practices. His practice is focused on advising start-up, emerging and large companies on technology, licensing and intellectual property transaction matters. He is a frequent lecturer on licensing and technology issues. Prior to joining the firm in 2010, Pete was a partner with Faegre & Benson. Prior to that, he worked in various legal capacities with Qwest Communications International, Inc. (formerly U S WEST, Inc.) in Denver and Honeywell, Inc. in Minneapolis. 

Pete offers extensive experience structuring and negotiating domestic and international agreements in a wide variety of areas, including: cloud services, outsourcing, product development, technology transfer, telecommunications, data sharing, complex procurement, product distribution and sales, contract manufacturing, and a wide variety of patent, trademark and copyright licenses. He offers significant international experience, including, intellectual property holding companies, export control and international intellectual property issues. Pete also regularly handles intellectual property issues in connection with public and private company mergers and acquisitions, including due diligence and licensing issues. The value of several of these transactions has exceeded one billion dollars.

Pete has been materially involved in a number of high profile intellectual property disputes in a variety of industries, including the semiconductor, telecommunications, computer networking, automotive, clean- tech and health sciences industries. In 2005, he wrote significant portions of the appeal brief filed on behalf of AWH Corporation in the United States Court of Appeals for the Federal Circuit en banc proceedings, Phillips v. AWH Corporation, concerning the procedures that should be used to determine patent claim construction. Most recently, Pete successfully represented a third party semiconductor tooling manufacturer in connection with a government ITC investigation seeking to ban the importation of hard drives into the United States.

As a registered patent attorney, Pete counsels clients on patent matters, including, infringement, validity, and pre-litigation issues. While at U S WEST, Inc. he was responsible for managing over 1500 trademark applications and registrations in 62 countries and all trademark opposition and litigation proceedings.


Stephen Rosenfeld serves as Co-Chair of the Business Litigation Practice Group and is a member of the Litigation Department of McDonald Hopkins’ Chicago office. He has extensive experience in complex commercial litigation involving, among other matters, information technology and intellectual property disputes. Through his established national client base, Steve’s practice expands McDonald Hopkins’ litigation footprint in the Chicago market and beyond. His cases in state and federal courts and before arbitration panels have involved commercial contract disputes, patent litigation, trademark infringement claims, copyright claims, misappropriation of trade secret claims, claims of violations of restrictive covenants, claims involving alleged violations of the federal securities laws, and defamation claims. Steve earned his J.D. in 1993 from the University of Illinois, graduating cum laude. He completed a B.A. from the University of Michigan in 1990. Prior to beginning his law practice, Steve founded a computer consulting firm concentrating on the development and implementation of custom software designed to manage mid-sized distribution and services companies.


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.


Marya Postner is a partner in the Palo Alto, CA office of Cooley LLP specializing in life sciences licensing and partnering transactions.  She is the head of Cooley’s life sciences partnering practice group.

Marya has been working at Cooley since her graduation from the University of California, Berkeley School of Law in 1996.  Prior to law school, Marya earned a Ph.D. in Molecular Biology from Princeton University where she studied development genetics and cell biology in Drosophila melanogaster embryos. 

Marya is recognized by Chambers USA as a leading life sciences attorney and by LMG Life Sciences as a Finance & Transactional “star”. She has been listed in the Best Lawyers in America for Biotechnology Law since 2008 and in the IAM Patent 1000 since 2012. 


David Rabinowitz is co-head of the Litigation Department and a member of the Intellectual Property Department and Legal Ethics and Law Firm Practice Department at Moses & Singer, where he has been a partner since 1985.  He handles civil commercial cases of all kinds and in particular both litigates and advises clients on financial industry and intellectual property matters.  He is a frequent speaker on ethical issues concerning negotiations.  Mr. Rabinowitz has appeared in state and federal courts and in arbitrations throughout the United States.

Mr. Rabinowitz has lectured and participated on panels before the Bar Association of the City of New York, the American Bar Association, the Practicing Law Institute, the Institute of International Banking Law, the Copyright Society of the United States, the New Jersey Intellectual Property Law Association, the National Association of Recording Manufacturers, the Licensing International annual convention, the Professional Education Broadcast Network and the Massachusetts Software Council.  He has taught Copyright Law at Seton Hall Law School.  He is a member and former trustee of the Copyright Society of the United States.  Mr. Rabinowitz has published numerous articles which have appeared in Advertising Age, Entertainment Law Reporter, The Entertainment Publishing and the Arts Handbook, The Bulletin of the Copyright Society of the United States American Lawyer's Corporate Counsel Magazine and The Practical Lawyer.

Education

  • Columbia University School of Law, J.D., 1976, Harlan Fiske Stone Scholar, 1973-1976
  • Massachusetts Institute of Technology, S.B., 1972

Articles

  • "New York Resolves In-House Counsel Bar Admission Problem"
  • "Up Close and Professional with New York’s Engagement Letter Rules"
  • "Communications Decency Act"
  • "Non-Traditional Fee Arrangements and Doing Business with Clients"
  • "Everything You Ever Wanted To Know About the Copyright Act Before 1909"
  • "Web Site Story 6-Breakaway Employees Beware"
  • "Web Site Story 5-Emerging Limits to Out-of-State Jurisdiction over Web Sites"
  • "Web Site Story 4-Nationwide Internet Jurisdiction is not Ended by Blue Note"
  • "Web Site Story 3-The Emerging Tort of Domain Name Infringement"
  • "Web Site Story 2-Finding Yourself Subject to Jurisdiction Far, Far Away"
  • "Web Site Story-A Legal Primer for Web Site Owners and Designers"
  • "Copyright Preemption: New York State's Erroneous Interpretation"
  • "Copyright and Trademark Infringement: Current Techniques for Plaintiffs and Defendants"

Presentations – (last 10 years - most recent year for series)

  • 2017 Practicing Law Institute program, "Ethics for the Negotiating Lawyer"
  • 2017 Practicing Law Institute program, "Advanced Licensing Agreements"
  • 2016 Institute of International Banking Law Standby and Guaranty Forum and Law Summit, “Recent Letter of Credit Cases”
  • 2016 Practicing Law Institute program, "Understanding The Intellectual Property License"
  • 2016 New Jersey Intellectual Property Law Association, “Cases in Negotiation Ethics”
  • 2015 Practicing Law Institute program, “Outsourcing 2015: Sourcing Critical Services”
  • 2014, 2012, 2007 Copyright Society of the U.S.A., “Show Me the Money: The Essentials of Valuation of Copyrights in Transactions and Litigation,” "Basic Ethics for the Negotiating Lawyer," "Non-Traditional Fee Arrangements and Doing Business with Clients"
  • 2013 National Association of Recording Manufacturers, “Negotiation Ethics”
  • 2010 Professional Education Broadcast Network, “Ethics in Negotiations”
  • 2008 Licensing International - "Winning Ethics in Licensing"
  • 2007 Practicing Law Institute program, "Internet Law Institute"
  • 2007 CMJ Music Marathon and Film Festival, “Games Without Frontiers”
  • 2001-2004 Adjunct Professor, Copyright Law, Seton Hall Law School


David Tollen is an attorney, trainer, author, and expert witness. He is the founder of Tech Contracts Academy™, which provides training on IT contracts, for both lawyers and businesspeople—including contract managers, procurement officers, and IT staff. He’s also the author of the American Bar Association’s bestselling manual on IT agreements, The Tech Contracts Handbook: Cloud Computing Agreements, Software Licenses, and Other IT Contracts for Lawyers and Businesspeople.

David practices law with Sycamore Legal, P.C.® in San Francisco. He represents buyers and sellers in technology transactions, including IT outsourcing contracts and other large-scale agreements. He also provides advice and assistance related to e-commerce, social media, and intellectual property.

Finally, David serves as an expert witness in litigation related to IT contracts. He addresses industry custom and practice surrounding software licenses, software-as-a-service (SaaS) agreements, other cloud computing transactions, and IT professional services contracts.

David graduated with honors from Harvard Law School and has degrees from Cambridge University in England and U.C. Berkeley. In addition to his legal work, he’s the author of an award-winning novel that uses fantasy to teach history, called The Jericho River.


Marc P. Schuyler has been practicing law since 1989 and is a principal of the Law Office Of Marc P. Schuyler in Saratoga, California.  Marc began his career as a litigator at the LA-based firm of Pretty, Schroeder, Brueggemann and Clark, and subsequently moved in-house to Hewlett-Packard Company in 1995, where he assumed the role of managing counsel.  Marc is versed in all aspects of intellectual property (IP) law practice, especially including licensing and patent development and strategy for purposes of licensing, acquisition and litigation. Marc obtained his BS with honors at Caltech and his law degree from UCLA.


Over the past 15 years as an international commercial IP and IT lawyer, 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.

Laura has experience of working closely with commercial teams as well as in-house legal departments on projects requiring "hands on" legal advice, industry knowledge and parallel negotiations.

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 is also the transatlantic "Brexit" lead for Fieldfisher advising clients on the commercial and legal consequences of the exit of the United Kingdom from the European Union.

Laura grew up between Brussels and Luxembourg and has travelled extensively for leisure and whilst working with clients. 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 in 2013. She is also a guest lecturer in European Contract Law classes for MBA students for ESCP Europe.