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Intellectual Property Law Institute 2012


Speaker(s): Amy L. Toro, Andrew P. Bridges, Anne Hiaring Hocking, Charan J. Sandhu, Cheryl Milone, B.S.E.E., Christopher E. Chalsen, David Bender, Dieter Paemen, Eric J. Olsen, G. Gervaise Davis, III, Heather J. McDonald, I. Neel Chatterjee, Jennifer Sklenar, Jill Phillips, CIPP, CIPP/C, Karen Frank, Katherine C. Spelman, Kelly M. Klaus, Merri A. Baldwin, Richard L. Kirkpatrick, Robert P. Taylor, T. Maria Lam, Victoria A. Cundiff, William Sloan Coats
Recorded on: Oct. 15, 2012
PLI Program #: 35669

Cheryl Milone is a co-founder and chief executive officer of Article One Partners (AOP), the world's largest patent validation community.  Article One is a global online community reaching over one million that researches the validity of patents. Ms. Milone created the community to add a crucial level of review to the US patent system - strengthening legitimate patents and reducing unjust patent monopolies.  AOP's successes include 18 of the top 25 targets of NPEs, 16 Fortune 100 clients, 52 of the Forbes Global Fortune 2000 and premier law firms among 150+ clients and 100% community growth in each of 2010 and 2011 with $2.8 million paid in compensation to the community.  Article One now has offices in New York (headquarters), Boston, Palo Alto, Colorado, Chicago and London.

Ms. Milone's early success with Article One led to an invitation in January 2010 to the White House as one of the top 50 most innovative CEOs in the nation to participate in a forum on Modernizing Government. Article One also was recognized as the 2009 Startup of the Year by Business Insider - chosen by an elite judging panel of venture capitalists and top technology industry leaders.  In December 2009, Ms. Milone was included in the Silicon Alley 100 list of New York's digital business community leaders who are driving the most interesting and important work.

Article One presents research requests on behalf of its clients on its website as well as the platforms of international affiliate websites and provides compensation to its community for responding with high quality prior art. AOP has been described as the social media for patents. AOP researchers are from 188 countries and projects are translated into 9 languages to trigger foreign language research in key geographies. The success of the company led Marshall Phelps (former head of IP and licensing at IBM and Microsoft) to join Article One's Board of Directors and resulted in client feedback that in 57% of research projects, AOP provided new and valuable evidence compared to traditional research.

Prior to founding Article One Partners, Ms. Milone practiced as a patent attorney and advocated before the US Patent and Trademark Office with Darby & Darby (until 2006), Clifford Chance and Kenyon & Kenyon.  Ms. Milone is an inventor and patent holder. Her patents include a medical device and, for Article One, an issued patent and numerous pending patent applications. She earned her JD in 1992 from Georgetown University Law Center and holds a bachelor's degree in electrical engineering.


Chris Chalsen is a partner with the law firm Milbank, Tweed, Hadley & McCloy, LLP, where he is head of the Firm's Intellectual Property Practice Group. Mr. Chalsen received his undergraduate and masters degrees in computer science from Boston University and his law degree from George Washington Law School. Mr. Chalsen is a member of the federal and state bars of New York and the U.S. Court of Appeals for the Federal Circuit, and is registered to practice before the United States Patent and Trademark Office. His practice concentrates in litigation and licensing of electronic, semiconductor, telecommunications and computer related patents and includes judge and jury trials, appeals to the Court of Appeals for the Federal Circuit, practice before the U.S. Customs Service and the International Trade Commission, arbitrations and mediations (including AAA and ICC) and all phases of patent, trademark and copyright prosecution practice.

Mr. Chalsen is Vice Chair of Intellectual Property Owners, Inc.'s Asia Practice Committee, a Fellow of the American Intellectual Property Law Association and has served as chairman of the AIPLA's International and Foreign, Japan Practice and European Practice Committees.  He has served on the Advisory Boards of BNA's World Intellectual Property Report and Euromoney's Managing Intellectual Property, as well as a member of the Executive Committee of the U.S. Group of A.I.P.P.I.  He has a Martindale AV Pre-eminent rating and has been recognized as a leading practitioner by such organizations as Chambers & Partners, Euromoney's Guide to Patent Experts, Lawdragon, Who's Who Legal (Patents), Best Lawyers and Super Lawyers. Mr. Chalsen was also awarded The Legal Aid Society (NY) 2010 Pro Bono Publico Award.


Jill Phillips is the Global Privacy Manager for Chevron with responsibility for establishing and maintaining Chevron’s global enterprise-wide data privacy program. Previously, Jill was the consumer marketing and privacy attorney for Dell, Inc., before becoming Dell’s first Global Privacy Officer, a position based in Europe. Jill’s interest in privacy began in the late 1990’s when she was e-commerce senior counsel for Ford Motor Company. In addition to her expertise in data protection, Jill’s legal experience includes product litigation, consumer law, outsourcing, and general commercial law.

Jill is a graduate of Wayne State University and Wayne State University Law School in Detroit, Michigan, where she was Editor in Chief of the Wayne Law Review. She is licensed to practice law in the U.S. states of Ohio, Michigan, Texas, and California. Jill, a member of the International Association of Privacy Professionals, is a Certified Information Privacy Professional, CIPP/C. She also participates in the Ponemon Institute’s Responsible Information Management (RIM) Council and the American Petroleum Institute’s Data Protection Council.


 Jennifer Sklenar is a partner in the Los Angeles office of Arnold & Porter. She focuses her practice on patent litigation, particularly in the medical device, biotech, computer hardware, software, and networking-related fields.  She has significant trial experience both in the district courts and in contested Patent Office proceedings.  Ms. Sklenar also counsels clients on patent prosecution matters and intellectual property issues associated with corporate transactions.

She has an undergraduate degree in biomedical engineering and is a registered patent attorney.  

She has been recognized as a Southern California Super Lawyer and one of the Top 250 Women in IP.
 



 


David Bender is an Adjunct Professor at the University of Houston Law Center, and also at Pace University Law School, where he teaches Privacy Law.  Mr. Bender is a Distinguished Fellow of the Ponemon Institute.  He has had extensive Privacy, Intellectual Property, and Information Technology litigation, counseling, and transactional experience.  He was a founder of the IP practice, and co-founder of the Privacy practice, at White & Case.  Before retiring from White & Case, he headed the firm’s privacy practice.


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.


Bar Admissions: New York; US Patent and Trademark Office

PublicationsBender on Privacy and Data Protection (Rel.12 2018 LexisNexis); 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.

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)

Speaking:

Over 300 presentations across the United States and in 19 other nations at conferences sponsored by numerous organizations.


Heather McDonald focuses her practice on intellectual property enforcement and anti-counterfeiting litigation. She serves as Baker Hostetler’s Deputy Litigation Coordinator for the New York Office, with practice management responsibility for approximately 100 attorneys in the firm’s New York office.

Ms. McDonald coordinates a nationwide network of investigators, attorneys and government agencies on both the federal and state levels pursuing individuals and entities trafficking in counterfeit goods. In a profile article about her, Women’s Wear Daily described the program as, “a ‘benchmark’ project, [bringing] together different brands, which collectively hire McDonald to seize any fakes she identifies while on raids.”
 
Ms. McDonald has been actively involved in drafting and lobbying for new legislation in the State of New York that would substantially strengthen the penalties for those convicted of trafficking in counterfeit goods. She has also worked on similar legislation in many other states and on the federal level. Ms. McDonald trains law enforcement officers throughout the country on both the federal and state levels on issues related to trademark counterfeiting. For her service and commitment to protecting IP rights, Ms. McDonald has received numerous awards from both clients and law enforcement.
 
Ms. McDonald has been a pioneer in the area of third party liability in trademark counterfeiting cases. Using both federal and state laws, Ms. McDonald is the principal architect of a program that holds property owners liable for the illegal subject of counterfeit goods that take place on their premises if they have knowledge that the illegal activity is ongoing and fail to takes appropriate steps to remedy the situation. She is also actively involved in several task forces, including the New York City Taskforce, of which she is a founding member, which serves to unite the public and private sectors in New York City dealing with issues related to counterfeit goods.
 
Ms. McDonald was recently honored when named to the World Trademark Review’s WTR 1000—The Definitive Guide to Trademark Legal Services. She is listed as one of the top attorneys in New York for enforcement and one of the top attorneys nationwide for anticounterfeiting efforts, of which there are few. In the Guide, she is referred to by a client as one whose “…name alone strikes fear in the hearts of counterfeiters.” The WTR 1000 is the first and only standalone ranking publication to focus exclusively on trademark practices and practitioners.

In addition to her work in anti-counterfeiting litigation, Ms. McDonald is a seasoned general litigator. On behalf of the SIPA Trustee for the liquidation of Bernard L. Madoff Investment Securities LLC, she is currently involved in the global investigation of the largest financial fraud in history and leads several litigation teams seeking to recover assets for the Customer Fund.

Ms. McDonald is a member of the New York and Connecticut Bars. She is a member of the Anticounterfeiting Committee of International Trademark Association and chairs their task group on Public Awareness for North America. Additionally, she is a member of the International Anticounterfeiting Coalition and co-chair of their China Taskforce.

Ms. McDonald is actively involved in Courageous Kidz, a not-for-profit organization located in Charleston, South Carolina, that serves the needs of children with cancer and their families. Ms. McDonald currently serves as President of the Board of Directors and has been actively involved in providing support and services to these families for more than 25 years.


T. Maria Lam

Primary Areas of Practice: Complex patent licensing and patent driven transactions


Graduate School
: University of Virginia Law School


Work History
:

After law school, Maria clerked for Justice Victoria Lederberg in the Rhode Island State Supreme Court.  She was in private practice at Foley Hoag LLP in Boston, MA, prior to joining Intel Corporation as Licensing Counsel in 2005.  She recently became the Director of China Patent Strategy at Intel.


Professional Memberships
:

Admitted to practice in Massachusetts and California.


Merri Baldwin is a shareholder at Rogers Joseph O’Donnell in San Francisco, 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 past chair of the State Bar of California Committee on Professional Responsibility and Conduct. 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, where she teaches professional responsibility. Ms. Baldwin co-edited The Law of Lawyers’ Liability (ABA/First Chair Press 2012) and 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


Amy Toro specializes in technology transactions, with particular emphasis on life science arrangements, such as collaboration and license agreements. Her clients include pharmaceutical companies, biotechnology clients and other technology companies. 

Law School:  Berkeley School of Law / University of California


Anne Hiaring Hocking has specialized in trademark and copyright law since 1981.  She  was  Adjunct Professor of Trademark, Copyright, and International Intellectual Property Law at Golden Gate University in San Francisco, California and Bangkok, Thailand.  She has chaired numerous programs on Intellectual Property law topics, and has served as President of the San Francisco Intellectual Property Law Association and Chair of the State Bar of California Intellectual Property Law Section. She has spoken and moderated numerous International Trademark Law Association and Practicing Law Institute programs.  She has written for AmJur on copyright and trademark law topics, as well as presented numerous papers.

After working at two large firms, she was the IP rights attorney for Pacific Telesis for five years, where she was responsible for all aspects of domestic and international trademark filing and enforcement, and all copyright and trade secret procedures. In 1990 she founded her own firm, then in 2010, Hiaring + Smith LLP, which merged with Donahue Fitzgerald LLP in 2015.

Selected Publications

  • “Selected Liability Issues: Social Networks and Blogs” The computer & Internet Lawyer, (Vol. 26, January 2009)
  • “Does Information Really Want to be Free?” Gothenburg Film Festival, 2006
  • “What’s New in the Neighborhood – The Export of the DMCA in PostTRIPS FTA’s” Golden Gate University International & Comparative Law Journal (2005)
  • Fair Use And TRIPS: Too Much of a Good Thing?”, Copyright Law Society of the U.S. January Midwinter Meeting 2004

Selected Speaking Engagements

  • PLI, Intellectual Property Law Institute, various years
  • Selected Liability Issues, Social Networks and Blogs (2008)
  • Navigating Trademark Trial and Appeal Board Practice (2000)
  • INTA TTAB Practice for Novices Forum (2000)
  • Insight Information, “Sixth Complete Course on Negotiating and Drafting Licensing Agreements: Maximize the Value of Your Intellectual Property Assets” (2000)
  • PLI, Program Chair, “Trademarks in the Global Marketplace” (1994-2017)


Areas of Practice

Kate Spelman has more than 30 years of experience providing strategic advice, design and implementation counsel for large, mid-sized and startup companies on copyright, trademark, trade secret and patent matters, both nationally and internationally, and has a special focus on media, licensing and mass digitization issues. Kate advises and counsels clients on the development, production, sale and defense of work related to emerging content distribution strategies and challenges, special issues in news reporting including repurposing content, and firewall and paywall configuration in light of changes in the fair use defense.

Kate is a frequent speaker on the progress of emerging copyright and digital publishing issues, and has advised authors, nonprofit and for-profit publishers, and internet service providers on the new language and provisions of the changed, global distribution environment. She has represented large digital publishing companies in international distribution agreements as well as represented developers and designers who are building and launching tools for online transmissions, storytelling, expression and art.

Additionally, Kate has experience assisting clients with Open Source licensing issues, including Open Source integrated licenses, audits, mergers and acquisitions due diligence, and compliance negotiations. Kate also helps clients design independent holding companies in the U.S. and in offshore intellectual property asset management. She has experience with intellectual property asset audits, and has assisted companies in proactive and reactive Sarbanes-Oxley compliance reporting requirements.

Academics

• Pepperdine University (Certificate in Dispute Resolution, 1990)

• University of Wisconsin Law School (J.D., 1980)

• University of Michigan (B.A., Classics and Latin, 1976)


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 also serves as a Venture Advisor to New Enterprise Associates and as a patent law expert for the National Venture Capital Association.

For more than 30 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,  a former chair of the Antitrust Section of American Bar Association, 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 also served as a member of the 1992 Commission on Patent Law Reform.

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. 


Gerry Davis is Of Counsel with Terra Law LLP in its San Jose, California office, where he handles primarily intellectual property and licensing of technology issues.  He was the founding principal of the internationally known Monterey, California law firm of Davis & Schroeder, one of the earliest computer industry-recognized boutique business and intellectual property firms specializing in matters relating to protection, development and licensing software for businesses and non-profits, as well as the complex new legal issues relating to the Internet.  His practice includes copyright law, trademarks, domain names, trade secrets and intellectual property licensing.  He serves as a legal expert witness, U.S. District Court mediator, and is an arbitrator in high tech litigation and disputed matters including arbitration of domain name disputes for WIPO and the National Arbitration Forum. He wrote one of the earliest books on developing and protecting computer software, and has been a frequent speaker on computer and Internet IP matters since the 1980's.  He continues to be a PLI speaker on these subjects covering  various areas of the law. He served as an editor of the Georgetown Law Journal.  He is a graduate of Georgetown University School of Foreign Service (BS in International Relations) and graduated from the Georgetown Law Center with a JD. His first year out of law school, he served as the Law Clerk of Hon. Stanley N. Barnes of the U.S. Ninth Circuit Court of Appeals in Los Angeles.


Kelly Klaus is a litigation partner in the Los Angeles and San Francisco offices of Munger, Tolles & Olson. Mr. Klaus’s practice is focused on copyright and complex commercial litigation. He has represented all of the major motion picture studios and all of the major recorded music companies in some of their highest-profile copyright litigation matters in recent years. The Daily Journal has named him among the 75 leading intellectual property lawyers in California in each of the last five years, and he has been selected for inclusion in Chambers USA.

Most recently, Mr. Klaus represented the four major recorded music companies in their trial against LimeWire and its founder (resulting in a $105 million settlement); the six major motion picture studios in their successful infringement action against the Zediva DVD-streaming service; and the studios in their successful action against RealNetworks for violating the DMCA’s anti-circumvention provisions with its “RealDVD” DVD-copying device.

Mr. Klaus is a member of the Los Angeles Copyright Society and the board of Legal Advisers of the Copyright Alliance. He has taught appellate advocacy at Stanford Law School and has been a member of Stanford Law School’s Board of Visitors. He has also served as a member of the board of governors of the Association of Business Trial Lawyers in Los Angeles and the board of trustees of the Shelburne Museum in Vermont.

Mr. Klaus received his B.A. from UCLA and his J.D. from Stanford Law School. Following law school, and prior to joining Munger Tolles, he was a law clerk to Judge William H. Orrick, Jr., U.S. District Court, Northern District of California; to Judge Pamela Ann Rymer, U.S. Court of Appeals, Ninth Circuit; and to Justice Anthony M. Kennedy, Supreme Court of the United States.

Key Representations

  • Sony Music Entertainment, EMI Group, Warner Music Group and Universal Music Group, in their action against LimeWire and its founder. After obtaining  a permanent injunction against LimeWire, Munger Tolles proceeded to a damages trial in U.S. District Court. Two weeks into trial, the defendants agreed to pay the record companies $105 million.
  • The six motion picture studio members of the Motion Picture Association of America,
    •  in securing an injunction against the operators of Zediva, an unlicensed video-on-demand service that transmits performances of copyrighted motion pictures to Zediva customers through the Internet.
    • in obtaining permanent injunctions against RealNetworks "RealDVD" device for  copying DVDs.
  • Universal Music Group, in claims for secondary copyright liability against Bertelsmann AG and Hummer Winblad Venture Partners arising out of the infringing Napster service.
  • Warner Music Group, in copyright infringement actions against iMeem and SeeqPod.
  • Aftermath Records, in litigation claiming copyright infringement based on the distribution of Eminem downloads through iTunes.
  • Universal Music Corp., in action alleging a knowing material misrepresentation under DMCA Section 512(f).
  • The six motion picture studio members of the Motion Picture Association of America (MPAA), as amicus curiae in cases in the Supreme Court, the 2nd and 9th Circuits, and District Courts, including as amicus in the Viacom v. YouTube case in the 2nd Circuit.
  • Electronic Arts, in ongoing copyright litigation against Zynga in which EA alleges that Zynga's online social game "The Ville" infringes EA's copyrighted game "Sims Social."
  • Playdom (part of the Disney Interactive Media Group) and Vostu (world’s largest maker of online social games in Portuguese) in copyright litigation against Zynga.
  • Green Hills Software, in successfully defending a five-month arbitration that questioned whether application program interfaces for computer programs are copyrightable subject matter.

Practice Areas

  • Litigation
  • Copyright

Industries

Media and Entertainment

Education

  • UCLA  (B.A., 1989)
  • Stanford University (J.D., 1992) Order of the Coif, Stanford Law Review 1990-1992

Clerkships

  • Judge William H. Orrick, Jr., U.S. District Court, Northern District of California, 1992-1993
  • Judge Pamela Ann Rymer, U.S. Court of Appeals, Ninth Circuit, 1993-1994
  • Justice Anthony M. Kennedy, U.S. Supreme Court

Bar Admissions

California


Mr. Kirkpatrick has focused on trademark and unfair competition law since 1980. His practice covers the full range of trademark protection and practice, including counseling; licensing; due diligence and other opinions on trademark aspects of initial public offerings, asset purchases, secured transactions, taxation and intellectual property holding companies; trademark enforcement and defense; litigations before the U.S.
Trademark Trial and Appeal Board and courts; trademark clearance and registration worldwide; and trademark portfolio management. He is the leader of Pillsbury's International Trademark Team.

Mr. Kirkpatrick is the author of the leading treatise: "Likelihood of Confusion in Trademark Law," published by Practicing Law Institute with semi-annual supplements, also available from Lexis and Kindle. He has also published numerous articles on trademark topics, detailed below. This is the 28th supplement to the treatise, which was first published in 1996.

He is also a frequent lecturer at seminars, detailed below, of the Practising Law Institute (PLI), CEB, Intellectual Property Owners' Association (IPO), Thomson & Thomson (T&T), the International Trademark Association (INTA), Insight, San Francisco Intellectual Property Law Association (SFIPLA), Intellectual Property Law Sections of the California, Nevada and Utah State Bars, Bar Association of San Francisco, Golden Gate School of Law IP Institutes, and others.

The World Trademark Review 1000 described Mr. Kirkpatrick as an “outstanding prosecution and strategy authority who serves an eminent clientele, including household names in retail, food and drink and sporting goods.”

Honors & Awards

  • 2013 WTR 1000, Prosecution and Strategy (2012-2013)
  • 2013 Super Lawyers – Northern California
  • 2012 WTR 1000, Intellectual Property: Trademarks—California (2011-2012)
  • 2010 Who's Who Legal, Intellectual Property: Trademarks—San Francisco
  • California's Top IP Lawyers, Daily Journal Intellectual Property Extra

Presentations

Co-chair, Practising Law Institute program “Global Trademark Clearance and
Registration Workshop 2013,” May 2013
Trademark Trial and Appeal Board Update, PLI, October 2012
Trademark: Searching, Clearance, and the Application Process PLI, July 2012
Pillsbury Winthrop Shaw Pittman LLP | www.pillsburylaw.com 1
Trademark Preliminary Injunction and Summary Judgment Motions, Golden Gate IP
Law Institute, November 2010
Foreign Trademark Conflicts, Cal Bar IP Institute, October 2010
Counterfeiting & Cybersquatting Damages, Rocky Mountain IP Law Institute, June 2010
Trademark Damages, PLI, October 2009
Trademark Licenses, PLI, 2007-2009
Navigating USPTO/TTAB, PLI, 2001-2009
Basic Trademark Law, PLI, July 1999-2012
Priority and Tacking, Golden Gate Law, April 2009
New TTAB Rules, PLI, 2008
Trademark Searches, CEB, 2006
New Dilution Law, PLI, October 2006
Trademark Prosecution & Fraud, California IP, April 2006
Advanced Trademarks, PLI, June 2005
Trademark Clearance Utah IP, October 2003
Trademark Clearance Nevada IP, September 2003
Trademark Searching, BASF, July 2003
Priority & Third Party Marks, California IP, April 2003
Trade Dress and Patent Law, SFIPLA, April 2001
Trademark Law Developments, PLI, November 2000
Product Configuration Trade Dress, SFIPLA, March 2000
Trademark Licenses, Insight, March 2000
Trademark Dilution Developments, IPO, November 1999
Foreign Trademark Litigation, PLI, October 1999
Trademark Searches and Opinions, T & T, September 1999
Litigating Trademark Cases, PLI, December 1998
TTAB Best Practices, INTA, September 1997
Pillsbury Winthrop Shaw Pittman LLP | www.pillsburylaw.com 2
TTAB Best Practices, INTA, September 1997
Proving Likelihood of Confusion, PLI, June 1996

External Publications

Likelihood of Confusion in Trademark Law, Practising Law Institute, 2012 (28th supplement to the treatise, first published in 1996)
Wine Trademarks, co-author, Trademark World, September 1997 Learned Hand's Trademark Cases, 82 TMR 426
Likelihood of Confusion Issues: The Federal Circuit's Standard of Review, 40 Am. U.L. Rev. 1221
Industrial Protection Design, 2 Intellectual Property in Business 17
Treading with Caution: A View of U.S. Trademark Applications, Trademark World
The Supplemental Register Under the Trademark Law Revision Act, 79 TMR 248
Impact of the Trademark Law Revision Act, 44 Food Drug Cosmetic Law Journal 593
The Supplemental Register, AIPPI (Japanese)
How New Trademark Law Affects Non-U.S. Owners, Trademark World
U.S. Trademark Application Based on Japanese Trademark Applications, AIPPI Japanese
Trademark Law: A Banker’s Primer, Banking Law Journal
Off the Mark: Proper Use of Trademark Symbols, Madison Avenue
Trademark Infringement: How to Avoid It, Restaurant Hospitality
Trademark Law: How It Can Affect Banks and Thrifts, American Banker

Practices / Industries
Intellectual Property
Trademarks
Health Care & Life Sciences

Admissions

State of California
District of Columbia

Education

J.D., University of Maryland School of Law, 1980
B.A., Connecticut College, 1975 I, summa cum laude, Phi Beta Kappa
The Johns Hopkins University


Neel Chatterjee

Primary Areas of Practice
 Patent, Trade Secret, and  Internet Litigation

Law School  J.D., Vanderbilt University
Graduate School  Law School, 1994

Work History  Joined Orrick in 1997

Professional Memberships

State Bar of California; Bar Association of San Francisco, Past Board Member; Intellectual Property Inns of Court; Law Foundation of Silicon Valley, Former President; California Bar Foundation, Past Board Member. 


Primary Areas of Practice: IP Law

 

Law School/Graduate School:

BS in Ecology and Systematic Biology from Polytechnic State University, San Luis Obispo

 

JD from Santa Clara University

 

Work History: Before joining RPX, Mr. Olsen was the Vice President of Business Development, Legal and the Secretary of Aggregate Knowledge, a company developing advertising optimization solutions for Internet advertisers and advertising agencies. Prior to Aggregate Knowledge, Mr. Olsen worked at Intertrust Technologies Corporation in a variety of positions, most recently as Vice President of Intellectual Property and Licensing.

Mr. Olsen has also served as patent counsel for Cardeon Corporation, a medical device start-up company focusing on solutions for the bypass surgery market, and Zexel Innovation, a leader in the development of GPS navigational systems.

 

Professional Memberships: Registered patent attorney before the United States Patent & Trademark Office and member of the state bar of California


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

Ms. Cundiff is a Visiting Lecturer in Law at Yale Law School, where she teaches intellectual property law and at the University of Pennsylvania Law School, where she teaches trade secrets law.  She is listed in The Best Lawyers in America; Chambers; Legal 500 (which has named her a “Leading Lawyer” nationally in Trade Secrets Litigation); and New York Super Lawyers, among other directories. She is the Vice Chair of the IPO’s Committee on Trade Secrets.


Andrew Bridges represents innovators and their companies in a wide variety of important matters 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, and commercial law matters.  He advises entrepreneurs and companies that develop or promote new products, technologies, or business models in the face of potential legal challenges.  In addition, he has advised many important Internet and technology companies on their branding and trademark portfolios as well as litigating their rights.


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.


KAREN FRANK is a partner at Coblentz Patch Duffy & Bass LLP, focusing on copyright, trademark, right of publicity, internet, publishing  and advertising law.  
Prior to joining Coblentz Patch in 2008, Ms. Frank was a partner at Howard Rice Nemerovski Canady Falk & Rabkin, in San Francisco, a shareholder at Legal Strategies Group in Emeryville, California, and at Pillsbury Madison & Sutro in San Francisco.  

Professional Memberships:

Karen has been named a Top 250 Women in IP by Managing Intellectual Property Magazine.  She is listed in The Best Lawyers in America in the Intellectual Property Litigation category and was named Best Lawyers Northern California Copyright Lawyer of 2018.  She is recognized as a Northern California Super Lawyer, and is a Martindale Hubbell AV Rated Attorney.  Karen was selected by her peers for inclusion in 2007 and 2009 Who's Who Legal: California, Trademarks chapter and is listed in Who's Who in America Law, 2009 and 2010 and Who's Who in America, 2007 – 2012.

 


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.