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IP Issues in Business Transactions 2013


Speaker(s): Beth M. Goldman, Christian H. Nadan, David A. Randall, David M. Simon, Denise Vieira, Dr. Lothar Determann, E. Lynn Perry, Felix S. Sterling, Heidi L. Keefe, Jason D. Kipnis, Karen N. Ballack, Linda E. Carlisle, Marjorie M. Goux, Mark A. Valetti, Mary A. Fuller, Philip Strauss, Sean Hanley, Stanton J. Lovenworth, Suzzanne Uhland, Thomas F. Villeneuve, Tsan Abrahamson
Recorded on: Feb. 28, 2013
PLI Program #: 41811

David Randall is a partner in the Intellectual Property Practice Group in the firm's Los Angeles office.

Areas of Practice
Mr. Randall has nearly 20 years of experience representing clients in a wide variety of intellectual property matters. He has successfully represented clients in patent, trademark, and trade secret disputes in courts throughout the United States and has been involved in complex multijurisdictional matters in which aspects of the litigation were pending before tribunals around the world. He has handled patent interferences, appeals, and trademark opposition/cancellation proceedings before the U.S Patent and Trademark Office. Recently he represented Mag Instrument in a landmark Japanese High Court IP case, resulting in the first-ever product configuration trademark recognized by the court.

Mr. Randall routinely advises clients in connection with the development and management of worldwide patent and trademark portfolios, as well as product design and the procurement of product configuration trademarks. He has prosecuted hundreds of patents in the United States and throughout Europe, Latin America, Asia, and Africa and is well-versed in the prosecution of patents to withstand the crucible of litigation. Patents that he has prosecuted have been successfully asserted multiple times, including one of the most frequently litigated patents during 2005 to 2007.

In addition to litigation and prosecution, Mr. Randall's practice includes counseling clients on matters of strategic planning, technology transfer and licensing agreements, litigation avoidance, domain name disputes, and the development, implementation, and maintenance of IP portfolio management programs. Recently, he represented GeoSynFuels in connection with the formation of a joint venture with the Donald Danforth Plant Science Center to commercialize the production of low-cost proteins.

He has also recently worked on the formation of a joint venture in Brazil.

EDUCATION
J.D., Arizona State University, 1991, cum laude
B.S., University of Arizona, 1985, with honors

ADMISSIONS
California
U.S. District Court for the Central District of California
U.S. District Court for the Eastern District of California
U.S. District Court for the Northern District of California
U.S. District Court for the Southern District of California
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Northern District of Florida
U.S. Patent and Trademark Office


Heidi Keefe is a partner in the Cooley Litigation department and member of the Intellectual Property Litigation practice group. She joined the Firm in 2009 and is resident in the Palo Alto office.

Ms. Keefe represents clients in high-stakes patent trials before juries and judges. A former astrophysicist and registered patent attorney, she easily understands a variety of technical disciplines, from software to medical devices.

Ms. Keefe has frequently been recognized as a leading lawyer, including being named one of the "Top 45 Women Attorneys in the U.S. under 45" by The American Lawyer, one of the "Top Women Litigators of 2010" by California legal newspaper The Daily Journal, and one of Northern California's Super Lawyers in 2010. In 2009, she was recognized as one of the "Top 20 Lawyers in California Under the Age of 40" by the San Francisco Daily Journal and the Los Angeles Daily Journal. She was also recognized as one of "The Bay Area's Best Lawyers" by Bay Area Lawyer magazine.

Ms. Keefe is a frequent lecturer on all aspects of Intellectual Property Protection. She has taught classes at Santa Clara University on IP Litigation and has conducted lectures at Boalt School of Law and Stanford Law School. Ms. Keefe speaks throughout the country for Law Seminars International, the ABA and the Practising Law Institute.

Ms. Keefe received a JD from Santa Clara University School of Law, graduating cum laude. She received her BA from Wellesley College, graduating cum laude.
Ms. Keefe is a member of the California State Bar, and is admitted to the U.S. Court of Appeals for the Federal Circuit and Ninth Circuit, U.S. Patent and Trademark Office, U.S. District Court for the Central and Northern Districts of California and the Eastern District of Texas. Ms. Keefe is a member of the American Bar Association, Silicon Valley Intellectual Property Law Association and the Chair of the ABA Section of Science and Technology Law's Special Committee on Space Law.

Education
JD, 1995, Santa Clara University School of Law
BA, Wellesley College

Bar Admissions
California
Registered to practice before the United States Patent & Trademark Office (USPTO)

Court Admissions
  U.S. Court of Appeals, Federal Circuit
  U.S. Court of Appeals, Ninth Circuit
  U.S. District Court, Central District of California
  U.S. District Court, Eastern District of Texas
  U.S. District Court, Northern District of California


Mark A. Valetti

Position/Title:                       
Senior Patent Counsel

Firm or Place of Business:   
Texas Instruments Incorporated

Address:                                
13588 N. Central Expressway
MS 3999
Dallas, TX 75243

Phone:                                   
(214) 479-1265

E-Mail:                                  

m-valetti@ti.com

Primary Areas of Practice:  Mergers and Acquisitions

Law School:                          
Southern Methodist University

Work History:          
As a member of TI’s legal department I have prosecuted patents, participated in our cross-licensing program, written/negotiated commercial contracts, provided litigation support, and support our M&A activities.

Professional Memberships:  IEEE, AIPLA and Texas Bar


Stanton J. Lovenworth is a Senior Counsel in O’Melveny’s New York office and a member of the Health Care and Life Sciences Practice.  Stan has more than three decades of experience representing leading and emerging companies in intellectual property transactions, particularly in the biopharmaceutical sector, including:  mergers and acquisitions; joint ventures, collaborations and strategic alliances; divestitures, and technology licensing; research, development, clinical trial, co-development, co-promotion, and supply and manufacturing agreements; “spin-outs” and investment transactions.

Stan has been repeatedly recognized by The Legal 500 US as a leading practitioner in the areas of life sciences, trademark, advertising and marketing, and was a winner of a 2013 Distinguished Legal Writing Award from the Burton Awards for Legal Achievement.  He was the Global Chair of the Life Sciences Practice and Global Co-Chair of the IP Transactions practice at his former AmLaw 50 firm.

Illustrative Licensing and Collaboration Experience

  • Aaron Diamond AIDS Research Center - Licensing and research arrangement for AIDS vaccines with International AIDS Vaccine Initiative
  • Aptalis Pharmaceuticals - License, commercialization and supply arrangements with ProStrakan for ProStrakan’s Rectiv®
  • GenVec - Termination of development alliance with Pfizer
  • Illumina - Strategic collaboration with Invitrogen, Inc.
  • Intermune - Termination of clinical research and supply arrangements with Boehringer Ingelheim Austria
  • MedImmune - Sale to MGI Pharma of intellectual property assets related to Hexalen® and related arrangements
  • MedImmune - Purchase of preferred stock of Genaera Corporation and related research, development and commercialization collaboration
  • Novartis - Research, development, commercialization, and manufacturing collaboration with Idenix relating to HBV, HCV and HIV compounds
  • Novartis - Licensing and supply arrangements with GlaxoSmithKline in connection with Famvir®
  • Novartis - Licensing arrangement with Alnylam Pharmaceuticals in connection with siRNA technology
  • Novartis - Licensing arrangements with Alnylam in connection with siRNA compounds to fight pandemic influenza, including bird flu
  • Novartis - Out-licensing arrangements related to various discontinued research programs of gene therapy and related equity arrangements
  • Progenics Pharmaceuticals - Acquisition of an international portfolio of patent rights
  • Progenics Pharmaceuticals - Worldwide co-development and co-promotion agreement with Wyeth in connection with Progenics’ methylnaltrexone (Relistor®) technology
  • Progenics Pharmaceuticals - Termination of Co-development agreement with Wyeth
  • Progenics Pharmaceuticals - Co-development and co-promotion agreement with Ono Pharmaceuticals in connection with Relistor® in Japan
  • Progenics Pharmaceuticals - Worldwide (ex-Japan) co-development and commercialization agreement with Salix Pharmaceuticals in connection with Relistor®
  • Progenics Pharmaceuticals - Licensing and joint venture arrangements with EUSA Pharma (formerly Cytogen Corporation)
  • Wyeth - Co-promotion and supply arrangements with King Pharmaceuticals
  • Wyeth - License and sublicense agreement to and supply agreement with Barr Laboratories in connection with progestin, and sale to Barr Laboratories of Aygestin®, Diamox®, Zebeta® and Ziac® product lines
  • Other clients - Schering-Plough, Gilead Sciences, Eli Lilly, Fougera, King Pharmaceuticals, Actavis, Errant Gene Therapy, Mitsubishi Tanabe, Middlebrook Pharmaceuticals, StemPar Sciences

Education

Columbia Law School, J.D. 1977: Harlan Fiske Stone Scholar
University of Paris, associated with Ecole Normale Supérieure, M.A., French Political History, 1974:  with High Honors
Haverford College, B.A., 1971:  magna cum laude; Phi Beta Kappa; History prize
New York University School of Law, additional studies in Intellectual Property L.L.M. program, 1993-1994
Cambridge University, additional studies in History Ph.D. program 1971-1974

Professional Activities

Admitted,  New York

Member,  American Bar Association, Intellectual Property Section; International Trademark Association; Licensing Executives’ Society

Author, “The New Biosimilar Era:  The Basics, the Landscape and the Future,” Bloomberg Life Sciences Report (September 2012), winner of a 2013 Distinguished Legal Writing Award from the Burton Awards for Legal Achievement.

Co-Author,  “The High Court’s Dangerous Reset on Gene Patent,” Law 360 (July 2013); “U.S. Supreme Court Hears Arguments in Bayh-Dole Act Case Pitting Rights of Individual Inventors Against Universities,” Bloomberg Law Reports (April 2011); “Patent Licensees: Beware Impact of Licensor Bankruptcy,” New York Law Journal (June 2010); American Origin Products (AOP): Protecting a Legacy (2010); “Update for Small Biotech and Pharmaceutical Companies,” Practical U.S./Domestic Tax Strategies (May 2010); “Protect Your IP Licensing Agreement,” Executive Counsel (November 2009); “Protecting Geographically Unique Products,” New York Law Journal (January 22, 2008); “Exit via the Pipeline: M&A Activity in the Pharmabiotech Sector,” Daily Deal (November 28, 2006); “Welcome to the World of Wiki and Linux: Enforcement of Copyright in Collaborative Works,” TMCnet (September 27, 2006); “The Research Tool Conundrum,” New York Law Journal (October 17, 2005); “Merck v. Integra: Its effect on Innovative Drug Discovery,” Bio-IT World (August 2, 2005); “The Third Thing: Defining Trade Dress After Wal-Mart v. Samara Brothers,” Legal Times (March 4, 2002); “Exploring the Boundaries of Co-Existing Trademarks,” New York Law Journal (January 15, 1999); “Planning For A New Age: Employee Ownership of Intellectual Property,” The Corporate Counselor (March 1996); “Protection of Well Known Trademarks in China,” New York Law Journal (August 21, 1995); “China Trade Accord May Protect Software Vendors,” The National Law Journal (June 5, 1995)

Speaker,  “Treatment of Intellectual Property Licenses in Bankruptcy, PLI Advanced Licensing-2013 (March 2013); “Patents in the Pharma World,” Global IP Conference (New Delhi, India, January 2012); “Protecting Geographical Indications in the United States,” AIPPI (Hyderabad, India, October 2011); “GI Challenges in the U.S.,” OriGIn (Washington, D.C., June 2010); “GI Challenges in the U.S.,” OriGIn (Geneva, Switzerland, February 2010); “GI Challenges in the U.S.,” OriGIn General Assembly (Teruel, Spain, June 2009); “Protecting Geographically Distinctive Products in the United States,” ABA IP Law Section (Washington, D.C., April 3, 2009); “Innovative Financing Techniques for Pharmas and Biotechs,” New York Biotechnology Association (New York, February 24, 2009); “Using Due Diligence to Identify and Minimize Risks,” ACI (New York, November 14, 2006); “Creative New Deal Structures,” BioNetwork 2006 (Laguna Beach, October 4, 2006); “Commercial and Ethical Issues in Pandemic Flu Collaboration” Licensing Executives Society (New York, September 13, 2006); “Biotech-Pharma Collaborations: The Fiduciary Duties You Owe to Your Collaboration Partners and How to Handle Them,” New York Biotechnology Association (New York, April 18, 2006); “Life Sciences IP Due Diligence,” ACI (New York, January 31 and June 27, 2006); “What You Should Know About Your Fiduciary Duties to Your Partners,” New York Biotechnology Association (New York, May 25, 2005); “When Equity Enters the Equation: Examining the Key Governance and Alliance Issues in Pharma/Biotech Deals,” BioBusiness 2004 (Geneva, January 28, 2004)

Honors,  The Legal 500 leading lawyer in trademark law (2007-2012); The Legal 500 leading lawyer in advertising and marketing (2010-11); The Legal 500 leading lawyer in life sciences (2011-12); named a “Super Lawyer” in a survey conducted by Law Politics Media Inc. and published in New York Magazine (2006-09; 2012); winner, 2013 Distinguished Legal Writing Award from the Burton Awards for Legal Achievement


Lothar Determann practices and teaches international technology, commercial and intellectual property law.

At Baker & McKenzie LLP in San Francisco and Palo Alto, he has been counseling companies since 1998 on data privacy law compli-ance and taking products, business models, intellectual property and contracts international. He is admitted to practice in California and Germany. He has been recognized as one of the top 10 Copyright At-torneys and Top 25 Intellectual Property Attorneys in California by the San Francisco & Los Angeles Daily Journal and as a leading law-yer by Chambers, Legal 500, IAM and others. For more information see www.bakermckenzie.com.

Prof. Dr. Determann has been a member of the Association of German Public Law Professors since 1999 and teaches Data Privacy Law, Computer Law and Internet Law at Freie Universität Berlin (since 1994), UC Berkeley School of Law (Boalt Hall, annually since 2004), Hastings College of the Law (since 2010), Stanford Law School (2011) and University of San Francisco School of Law (2000-2005). He has authored more than 120 articles and treatise contributions as well as 5 books, including Determann’s Field Guide to Data Privacy Law (3d Edition, 2017) and California Privacy Law - Practical Guide and Commentary (2nd Ed. 2017).

 


David Simon is currently the Associate General Counsel for IP Policy of Intel Corporation and has been involved over the last fourteen years in running the Intellectual Property matters for Intel Corporation.  Prior to joining Intel in 1997, David was in private practice in Los Angeles for fifteen years, specializing in intellectual property matters, licensing and high technology law.  He has been a featured speaker in a number of intellectual property seminars including seminars at Stanford, Berkeley and University of Texas law schools and in China, Germany, Japan and Korea.  Mr. Simon holds a BSEE from Massachusetts Institute of Technology and a JD from Georgetown University. Mr. Simon has testified before both the House and Senate IP subcommittees on the need for patent reform and has been an active participant in the industry and bar groups negotiations to arrive at a compromise bill. He currently is a member of the Board of Directors of the Intellectual Property Owners Association and the Coalition for Patent Fairness and is also a member of the IP Advisory Board for George Washington University Law School. 


Denise Vieira is a Commercial Counsel for Zynga, Inc., and is responsible for a wide range of business transactions and advises on licensing, intellectual property and privacy matters for the social gaming company. Prior to joining Zynga, Denise was Commercial Counsel at VMware Inc., a virtualization and cloud infrastructure solutions company, where she handled all aspects of strategic partnership, product, and licensing matters. Prior to VMware, Denise was in private practice in Palo Alto, CA. Denise was also an adjunct professor at the University of San Francisco School of Law. Denise received her J.D. from University of San Francisco School of Law and her B.S. from Santa Clara University.

 

 


Felix Sterling
 

As senior vice president and general counsel of Trend Micro's global legal department, Felix leads a team with legal oversight responsibility for corporate governance, compliance, product development, channels, sales, human resources, business operations, and all other legal matters for Trend Micro and its global subsidiaries. In addition, he serves as Chairman of Trend's Global Policy Committee, and as Site Executive for Trend's North America headquarters. Felix also enjoys working on strategic and operational challenges, and leads various cross-functional initiatives to optimize business processes and support the SaaS business model.   

Prior to joining Trend Micro, Felix was a vice president and AGC at VeriSign.  He had previously been a member of the Yahoo! legal team, after starting his legal career in the litigation and technology transaction groups of Wilson, Sonsini, Goodrich & Rosati, a premier technology law firm.  Before law school, he studied cognitive science and human factors engineering in graduate school and worked in the Flight Human Factors Division at the NASA-Ames Research Center.
 
Felix holds a juris doctor degree from the University of California at Davis, where he was Editor-in-Chief of the King Hall Advocate and the Western U.S. A.B.A. moot court champion. He also holds a bachelor's degree (with honors) from the University of California at Santa Cruz.


Beth M. Goldman is a partner in the Intellectual Property group at Orrick, Herrington & Sutcliffe.  Her practice focuses on trademark and copyright law, licensing and Internet law. She has been assisting clients in the selection and creation of brands, as well as their protection, for more than 20 years. Her experience includes worldwide prosecution and policing of trademarks, dispute resolution, UDRP proceedings and litigation before the Trademark Trial and Appeal Board.  Her clients cover a broad variety of industries, including alternative energy, apparel, biotechnology, cloud computing, computer services, consumer products, credit card services, food and beverages, medical equipment, pharmaceuticals, software, telecommunications and travel.  She has spoken on a wide variety of topics including TTAB practice, trade dress, injunctive remedies for trademark infringement and keynote advertising, for the Practicing Law Institute, the California State Bar, the International Trademark Association and other organizations.


Karen Ballack is an intellectual property transactional attorney with emphasis on representing technology companies, particularly in the computer (hardware and software), Internet, semiconductor, biotechnology, pharmaceutical and medical device industries.

Ms. Ballack has extensive experience in a wide variety of complex technology and intellectual property alliances and transactions. Representative matters include: licensing arrangements; research and development collaborations; joint ventures; strategic alliances and corporate partnering transactions; intellectual property acquisitions and divestitures; manufacture and supply arrangements; distribution and reseller arrangements; co-marketing alliances; consulting and professional services agreements; and other arrangements involving the commercial exploitation of technology and intellectual property. Ms. Ballack’s practice also includes providing intellectual property assistance in connection with private equity, M&A and other corporate transactions. Ms. Ballack is frequently engaged as a guest speaker on topics relating to technology and intellectual property transactions.

Experience

Yahoo! in connection with a variety of Yahoo’s strategic technology and intellectual property collaborations, arrangements, acquisitions and divestitures and all technology and intellectual property aspects of over 30 of Yahoo’s M&A deals.  Most recently, Ms. Ballack served as Yahoo’s lead intellectual property counsel on Yahoo’s highly publicized reverse spin-off of its operating business, auction sale of that business, and ~ $4.48 billion acquisition of that business by Verizon, as well as Yahoo’s transfer of approximately 4,000 patent assets to a new Yahoo subsidiary, Excalibur, for monetization purposes.

Technology and intellectual property alliances, transactions, acquisitions and divestitures on behalf of Advanced Technology Investment Company, Apple, Applied Materials, ArthroCare, Cardinal Health, Getty Images, GLOBALFOUNDRIES, HCL Technologies, Illumina, Intel, Maxim Integrated, Micron Technology, Orix USA, Panasonic, PDL Biopharma, Pioneer Hi-Bred International (a DuPont company), Sumeru Equity Partners, Texas Instruments, The Progeria Research Foundation, TPG, Trimble Navigation, United Way, Vonage, and Wind River Systems.

Research and development collaborations involving technology companies, universities (such as California Institute of Technology, Carnegie Mellon University, Harvard, MIT, Stanford, Texas A&M and University of California), and research institutions (such as National Institutes of Health).

Ms. Ballack is actively involved with the Firm’s diversity and pro bono efforts. She is also a member of the Board of Directors of The Progeria Research Foundation.

Ms. Ballack is widely recognized in the industry. Among her recent accolades, she was named among “The World’s Leading IP Strategists 2018” by IAM Strategy 300 and among the “Top 250 Women in IP 2017” by Managing Intellectual Property. The Recorder named Ms. Ballack a “Trusted Advisor” for technology transactions in 2016 and 2017. She was named by The Silicon Valley Business Journal as one of Silicon Valley’s 2015 Women of Influence. Ms. Ballack was named to the Daily Journal’s 2017 list of “Top 100 Lawyers in California.” She was also named to the Daily Journal’s 2014 - 2016 lists of Top Women Lawyers in California, with the publication noting “When Weil represents major technology giants in high-value corporate transactions, the firm calls on Ballack to handle the complex intellectual property aspects of the deals.” She has also been included in The Recorder’s 2013, 2015 – 2017 lists of Women Leaders in Technology Law, which recognizes women lawyers who have demonstrated leadership and expertise in solving the most pressing legal concerns in the technology sector. She has been ranked by Chambers USA 2010-2018 as a leader in California in the field of IT & IT Outsourcing. Sources in Chambers USA 2015 describe Ms. Ballack as having the ability to “cut through and find areas of compromise” in major M&A deals and as being “a superb drafter and negotiator.” She has been recognized by The Legal 500 US 2010-2018 in the field of Intellectual Property, Patent Licensing, and has also been named an “IP Star” by Managing Intellectual Property IP Stars 2013-2018. Ms. Ballack has also been named to the 2017 and 2018 Lawdragon 500 Leading Lawyers list.  In addition, Ms. Ballack is included in IAM Licensing 250’s “World’s Leading Patent & Technology Licensing Lawyers” and IAM Patent 1000’s “World’s Leading Patent Practitioners.”


Linda E. Carlisle is the Chief Operating Officer & General Counsel of Unicom Capital LLC in Denver. She was a member of Miller & Chevalier in Washington, D.C. before joining Unicom where she practiced international and domestic tax law, concentrating on corporate and partnership tax issues and on the taxation of cross-border investments. She also advised clients on legislative, regulatory and administrative tax matters. Before joining Miller & Chevalier Linda was a Tax partner in the Washington, D.C. office of White & Case and was the Special Assistant to the Assistant Secretary (Tax Policy) during the enactment of the 1986 Tax Reform Act.


Phil Strauss has more than 20 years of diverse experience at the intersection of business, technology and law.  Phil is Associate General Counsel at Performance Marketing Brands, Inc., an Internet loyalty shopping company operating under the Ebates brand name.  Phil is also Of Counsel to The Keele Group, a microboutique law firm focused on providing part-time in-house litigation and risk management counsel.

Before that, Phil was Vice President and General Counsel at public enterprise software companies Actuate Corporation and Brio Software (ultimately sold to Hyperion/Oracle), and private venture-backed market-research technology company MarketTools, Inc.  Phil also held a senior counsel position at Adobe Systems Incorporated. 

Phil was also a consultant in the forensic practices at KPMG LLP and H5, specializing in investigations, compliance, information governance and electronic discovery.

Before going in-house, Phil was in private practice as a corporate associate at Shearman & Sterling LLP in New York and San Francisco and as a litigation associate at Jones Day in Chicago, and served a judicial clerkship with the Supreme Court of Alaska.

Phil holds a B.A. in International Relations from Emory University, a J.D. from Duke University, and an M.B.A. from the Haas School of Business at UC Berkeley, where he spent five years on the Adjunct Faculty, teaching business law to M.B.A. students.  He has guest lectured at Stanford Graduate School of Business, Boalt Hall School of Law, and both the business and law schools at University of San Francisco.

Phil has been active locally and nationally in the Association of Corporate Counsel (ACC) and its 2,000-person San Francisco Bay Area Chapter, where he served two terms as President, founded the chapter’s Privacy and eCommerce Committee, founded the national New-To-In-House Committee and Corporate Counsel University training program, and received the ACC National Member of the Year Award (2003).

Phil has served on the board of directors or advisors of private companies in the commercial real estate, medical imaging technology and social networking industries.  Phil also serves on the Haas Alumni Board (where he founded the Haas/JD networking group for Haas business alumni who also have law degrees).

Phil lives in San Francisco with his wife and four children, and is an avid endurance athlete in his spare time.


Suzzanne Uhland is a partner in O’Melveny’s San Francisco and Newport Beach offices and Chair of the US Restructuring Practice. Suzzanne represents parties in Chapter 11 reorganizations and out of court restructurings and buyers and sellers in Bankruptcy Code Section 363(b) sales and other distress transactions. She also practices with the Firm’s Transactions attorneys, both in bankruptcy cases and in structuring transactions to avoid bankruptcy-related risks. Suzzanne has substantial experience in bankruptcy and insolvency-related litigation, frequently working with members of the Litigation Department. She also provides advice in bankruptcy compliance matters. Suzzanne has a significant range of experience in real estate, technology, energy, municipal and international financings and restructurings.

Suzzanne is recognized by Chambers and Partners USA (2008-2015) for her restructuring work, was selected by her peers for inclusion in The Best Lawyers in America, was named by Orange Coast Magazine as one of the Best Lawyers in Orange County, and is listed in Who’s Who Legal Insolvency & Restructuring in California.

Education

Yale University, J.D., 1988: Co-Editor-in-Chief, Yale Journal on Regulation
Stanford University, M.A., Linguistics, 1986
Stanford University, A.B., Economics and Linguistics, 1984: with distinction; Phi Beta Kappa; Greenberg Prize for Outstanding Linguistics Graduate; Member of Council of Presidents


Mary has served in diverse rolls from electrical engineer, to law firm attorney, head of litigation, chief IP counsel, and general counsel.  Drawing on her diverse experiences, Mary partners with clients by understanding their challenges, then working together to solve problems in the way that best fits the client’s legal and business needs.  As an integral and trusted partner, Mary is comfortable doing business as outside counsel or acting as an extension of the in-house team by serving as fractional in-house or general counsel.  Mary serves her tech clients on a variety of business and legal issues, including company-wide training programs, preparing for board meetings, writing board minutes, intellectual property counseling, Standards, litigation strategy and management, pre-litigation analysis, privacy, monetization strategies, licensing strategies and negotiations, M&A, and contract negotiation, drafting and editing.  

In addition to working hard at the Fuller Tech Law Group, Mary serves as an Adjunct Professor and Supervising Attorney in Santa Clara University’s School of Law, Entrepreneur's Clinic, where her students provide pro-bono legal services to high-tech startups.  Mary has a demanding speaking schedule, and regularly speaks to audiences on topics ranging from intellectual property, patent licensing strategies, artificial intelligence, litigation and risk management, and IP ownership issues, to contract law. 

Select Prior Positions 

Kudelski Intellectual Property and Innovation: Vice President, Chief Policy Officer and Head of Legal 

Adaptive Spectrum and Signal Alignment, Inc.: General Counsel and Corporate Secretary 

Maxim Integrated Products, Inc.: Chief IP Counsel 

Marvell Semiconductor, Inc.: Director and Managing Counsel for Litigation and Assistant Corporate Secretary 

Bingham McCutchen: Counsel 

Pennie & Edmonds: Associate 

Hewlett-Packard Company: Design for Manufacturing and Hardware Reliability Engineer


Tsan Abrahamson’s practice focuses on strategic counseling in the areas of social media, sweepstakes, intellectual property, advertising, trademark clearance, trademark and copyright prosecution, licensing, and other business transactions.  She also manages the adverse proceedings practice at the U.S. Patent and Trademark Office Trademark Trial and Appeal Board.  Tsan has an extensive practice in the area of marketing promotions, including social media promotions, gift card and gift certificate marketing, print and online sweepstakes, contests, give-aways, warranties, rebates, and coupon promotions.  Tsan completed her undergraduate work at Dartmouth College, and received both her JD and MBA from the UCLA School of Law and The Anderson Graduate School of Management.


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.).

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 has been 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 where his practice included IP litigation and client counseling for high technology companies. Mr. Nadan received his undergraduate degree from Stanford University and his J.D. from U.C. Berkeley Boalt Hall School of Law.


Jason Kipnis focuses his practice on complex intellectual property matters and advises clients on IP portfolio management, litigation, enforcement and dispute counseling, and audits and due diligence. His experience includes trade secret protection and management, standards counseling, open source matters, international rights management and identification and acquisition of intellectual property of third parties. In addition, he has advised clients at various stages of development in a wide range of technologies, including computer architecture and system design, software, semiconductor design and fabrication, optics, networking and telecommunications, biotechnology and medical devices.

Mr. Kipnis is an adjunct lecturer at Stanford Law School, where he teaches IP Strategy for High Technology Companies. He is also a frequent speaker on intellectual property matters at professional and academic conferences, and he is the President of the Board of the Bay Area Video Coalition.

Prior to beginning his legal career, Mr. Kipnis worked as a consultant for Oracle Corporation, where he designed and implemented database applications.”


Lynn Perry is the founder and principal of Perry IP Group ALC, which specializes in trademark and copyright law.  She was formerly a partner with Thelen Reid & Priest and Townsend and Townsend and Crew (now Kilpatrick Townsend & Stockton). Lynn has practiced trademark and copyright law since 1981 and is an adjunct professor of trademark law at University of San Francisco School of Law, and a former adjunct professor at UC Hastings College of the Law. She was on the Editorial Board of the Trademark Reporter for over 25 years, and judged an annual professional legal writing competition for many years (both for the International Trademark Association). Lynn has been a member of the Executive Committee of the Intellectual Property Section of the California State Bar, and a member of the Governing Committee of the ABA Forum on Franchising, among many other similar activities. Lynn is a frequent speaker on subjects in the intellectual property law area. Her practice consists of searching and clearing proposed trademarks, prosecuting U.S. and foreign trademark registrations, trademark and copyright infringement analysis, intellectual property licensing, and litigation, including proceedings before the Trademark Trial and Appeal Board.


Marjorie Goux is Chief Legal Counsel at the quickly growing Clif Bar & Company in Emeryville, California. She thrives the spaces of growth and change where she finds that new categories and changing directions open important and energizing intervals for business and legal innovation. Working together, Marjorie feels high-impact teams can seize these opportunities and meet the challenges of great things to come.

Previously, she served as The Clorox Company’s Chief Counsel for its global strategic partnerships group and as the general business counsel to the Glad Products Company (a Clorox/P&G JV) and Clorox’s North American Homecare business. She began her in-house journey at Hewlett-Packard Company as the Global Trademark and Anti-Counterfeiting Counsel for the Imaging and Printing Division. Her early career included a wonderful time, well spent, as a member of Baker McKenzie’s award-winning private practice IP team, both in London and Palo Alto.

Outside of business, Marjorie passionately seeks ways to disrupt the poverty cycle in this country, and in particular, she advocates for education reform and improving conditions for women and girls in the workplace, home, and school.
 
Marjorie is a graduate of the University of Washington (BS Chemistry) and University College, London (Honors Law).


Tom F. Villeneuve, a founding partner of the firm, is a nationally recognized authority in the areas of U.S. and international corporate partnering, strategic alliances, joint ventures, and licensing, as well as in intellectual property strategy and commercialization. He has extensive expertise representing start-up/emerging companies and multinational corporations in these areas, and has successfully represented emerging company clients in major corporate partnering/strategic alliance and/or licensing arrangements with a great many of the largest U.S. and international information technology, communications, pharmaceutical and medical device companies, as well as with the major research universities and institutes.
 
Tom was the only licensing/partnering lawyer named among the "Top 25 IP Lawyers" by California's leading legal trade publication. He is also one of only a handful of licensing/partnering attorneys named to Global Counsel's "Most Recommended Lawyers" lists and is recognized as one of California's top corporate transactional lawyers in both "Best Lawyers in America" and the Chambers USA guide to "America's Leading Lawyers for Business," as well as one of the Northern California "Super Lawyers." 

Tom has been a Federal court-appointed expert arbitrator, and has been appointed as an expert negotiator and expert counselor/witness regarding intellectual property issues and licensing/partnering practices in various industries. This includes such notable matters as: amicus counsel to the Software Industry Coalition and the Computer Software Industry Association with respect to the U.S. Supreme Court review of the seminal Lotus v. Borland copyright case; appointment by the California Attorney General as the lead strategist and negotiator in resolving the State's highly-publicized Oracle licensing scandal; and serving as the expert consultant and witness on corporate partnering/strategic alliances in the Beckman Center/City of Hope dispute with Genentech.