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Advanced Licensing Agreements 2021


Speaker(s): David G. Rickerby, Gillian M. Lusins, Jessica L. Rothstein, Joseph Yang, Kenneth M. Kaufman, Laura Berton, Lily Wound, Lindsie Goss, PhD, Marcelo Halpern, Mark G. Tratos, Mark S. Holmes, Marta Belcher, Marya Postner, Peter J. Kinsella, Raymond R. Ferrell, Robert J. Ranucci, Sari W. Montgomery, Stephen J. Rosenfeld, Themi Anagnos
Recorded on: May. 3, 2021
PLI Program #: 306710

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.


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.


Marta Belcher is the General Counsel and Head of Policy at Protocol Labs and the Board Chair of the Filecoin Foundation and the Filecoin Foundation for the Decentralized Web. She also serves as special counsel to the Electronic Frontier Foundation. Marta is a pioneer in cryptocurrency law and has spoken on the topic around the world, including in U.S. Congress, European Parliament, the New York Senate, the OECD, and in Davos during the World Economic Forum. Marta has drafted amicus briefs in the U.S. Supreme Court and U.S. appellate courts for high-profile public interest organizations, including EFF, the Center for Democracy & Technology, Public Knowledge, the Cato Institute, the National Consumers' League, Project Gutenberg, and the Blockchain Association. Marta has been recognized twice by the Financial Times Innovative Lawyer awards and was named to Law360's list of Top Attorneys Under 40.


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.


Ray Ferrell is CEO and General Counsel of June Six Ventures, LLC, a legal and business consulting firm focused on providing high impact solutions to the unique issues facing private equity portfolio companies and startups in the SaaS, technology and disruptive industry spaces. Ray was formerly the Executive Vice President General Counsel and Corporate Secretary of Thryv, Inc, formerly DexYP, for 6 years where, among other things, he provided legal services and advice regarding SaaS and digital/I.P. transactional matters, sales/marketing, securities, general corporate, board-related matters, M&A, employment, compliance, litigation, and public policy. He maintained particular focus on digital issues and worked with his business partners to enhance and create high-performance digital products and services for advertisers and consumers.  He was Associate GC at Thryv for over 5 years prior to his promotion to General Counsel. Prior to Thryv, he was Senior Counsel – Vice President in the American Express General Counsel’s office for more than eight years. Prior to joining Amex, he worked in private practice in New York City and New Jersey, specializing in corporate securities, technology law, and financial services work. Ray is a graduate of Yale University and Columbia Law School.


Sari Montgomery is a partner in the Chicago firm of Robinson, Stewart, Montgomery and Doppke, LLC. After more than a decade as Litigation and Senior Litigation Counsel at the Illinois Attorney Registration and Disciplinary Commission of the Supreme Court of Illinois (ARDC), where she conducted hundreds of investigations and prosecuted dozens of cases before the ARDC Hearing Board, Sari Montgomery now applies her extensive knowledge of the ARDC and legal ethics to helping lawyers facing disciplinary proceedings or who otherwise need guidance on ethics matters. She has successfully represented lawyers at every stage of the disciplinary process, judges before the Judicial Inquiry Board and bar applicants in the Character and Fitness process.

Sari also provides legal advice to lawyers regarding ethical and practice management issues. She has issued opinion letters on behalf of lawyers, law firms, government agencies, and law-related businesses to assist in clarifying their ethical obligations and to ensure their business models are consistent with the Rules of Professional Conduct. Sari also serves as an expert witness in legal malpractice and fee litigation.

Sari was appointed to serve as a member of the ABA Committee on Professional Regulation and is on the Board of the Association of Professional Responsibility Lawyers (APRL). For more than a decade, Sari has served on the Illinois State Bar Association’s (ISBA) Committee on Professional Conduct (Past Chair). She was also appointed to serve on the ISBA President’s Special Committee on Alternative Business Structures, Special Committee on ARDC Matching Services Study, and the Special Committee on Collaborative Law. Sari is also a member of the Chicago Bar Association.

Sari frequently presents at national, state, and local CLE programs. She has taught as an Adjunct Professor at Loyola University Chicago School of Law and is an accomplished author on legal ethics issues.

Sari is a graduate of the University of Chicago and Loyola University Chicago School of Law.


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.


Over the past 20 years as an international commercial IP and IT lawyer, Laura Berton 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 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. She regularly lectures on English contract law, European Digital legislation, Data Protection, Brexit, Licensing etc.


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.


Gillian Lusins is a Senior Vice President, Marketing and Promotions in the Law Department at NBCUniversal. As part of the Content, Production & Risk corporate legal group she leads a team focused on the development, production and review of marketing and promotional content, including live events and other promotional activity, for NBCUniversal’s film and television properties. She is also part of NBCUniversal’s Intellectual Property group, providing support to NBC Entertainment’s legal affairs team for NBC’s late-night programming and NBC News as well as the television music services group.   

Gillian graduated from Columbia Law School in 1990. She clerked for Gary L. Taylor in the Central District of California. After working in private practice for six years, she joined the NBC law department in 1997 as media and intellectual property counsel.    


Ken Kaufman is Senior Counsel at Springut Law PC.  Previously, he was a Partner and Senior Counsel at Manatt, Phelps & Phillips; a Partner at Skadden, Arps, Slate, Meagher & Flom; and General Counsel of Showtime Networks, PolyGram Records, and the Kennedy Center for the Performing Arts.  In addition, he was recently an Advanced Leadership Fellow at Harvard University and has been a Visiting Lecturer at Yale Law School.  Ken has been listed in The Best Lawyers in America for many years in the fields of copyright law, IP litigation and entertainment law, and was named the Washington, DC "Copyright Lawyer of the Year" in 2014.  His clients have included digital media and technology companies, television networks, music publishers, photographers, private equity firms, international media companies, Broadway theatre producers, authors, composers and recording artists.


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. 


Robert Ranucci brings over 25 years of experience to his role as Executive Vice President and General Counsel, Christie Digital Systems Group Companies. In this role, Robert is responsible for all legal matters affecting the Christie family of Companies, and oversees Christie’s team of attorneys and legal specialists.

Before joining Christie, Robert gained more than 15 years of experience in the lighting and display industry, with tenure as the Vice President, General Counsel at ViewSonic, VIZIO, General Displays & Technologies (a GE joint venture), as well as Sr. Director of Licensing and Business Development for the LED lighting and display technology division of Rambus. In addition to his corporate and litigation background, Robert is experienced in leveraging innovative supply chain, customer channel and licensing agreements to solve complex challenges and drive successful outcomes.


David Rickerby is based in Boston, Massachusetts. He has been working in software licensing for over 20 years. David’s practice has a significant focus on issues that arise in the use of open source software and he was involved in the drafting of Version 3 of the GNU Public License.   
 
David was named in The Legal 500 for technology transactions and has been listed as a Massachusetts Super Lawyer. In May of 2014, after almost 20 years in large law firms, David Rickerby left a position as an equity partner overseeing the Technology Transfer and Licensing Group for Choate, Hall and Stewart in Boston to establish Boston Technology Law, PLLC a boutique technology licensing law firm.


Practice Areas:
Intellectual Property Transactions and Strategies, Trademark and Copyright

Work History: 
Jessica L. Rothstein is a partner in the firm’s Business Law Department and a member of its Intellectual Property Group. She concentrates her practice in the counseling, protection and licensing of intellectual property rights, with an emphasis on the worldwide protection of trademarks. Ms. Rothstein also advises clients as to a broad range of transactions relating to intellectual property rights, including research and development agreements, noncompete, confidentiality and non-disclosure agreements.

Prior to joining Goodwin Procter, Ms. Rothstein worked for the intellectual property firms Darby & Darby and Merchant & Gould.

Education: 
J.D. Benjamin N. Cardozo, 1998
M.A. University of Kent at Canterbury, 1993 

Professional Memberships:
Ms. Rothstein is a member of the New York Bar Association, Colorado Bar Association, and International Trademark Association.


Themi Anagnos is the Director of Intellectual Property for the Americas at Continental Automotive Systems.  He manages patent litigation, patent licensing and a team of patent portfolio managers. Themi is a graduate of John Marshall Law School (JD) and Purdue University (Master of Science in Engineering).