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Intellectual Property Law Institute 2013


Speaker(s): Amy L. Toro, Andrew P. Bridges, Anne Hiaring Hocking, Charan J. Sandhu, Dana W. Hayter, Daryl W. Fairbairn, David Bender, Helen Hill Minsker, I. Neel Chatterjee, Jean I. Liu, Jennifer Sklenar, Jon E. Wright, Karen Frank, Lateef Mtima, Marta Beckwith, Merri A. Baldwin, Niklas Ostman, Philip S. Warden, Robert Greene Sterne, Robert P. Taylor, Steve Bené, Victoria A. Cundiff, William Sloan Coats
Recorded on: Oct. 7, 2013
PLI Program #: 42610

Mr. Wright chairs the firm’s appellate practice, and co-chairs its PTO litigation practice. He focuses primarily on contested proceedings before the USPTO’s Patent Trial and Appeal Board, and on appeals of those cases to the United States Court of Appeals for the Federal Circuit. He is a recognized leader in inter partes review practice where there is co- pending district court litigation or a USITC investigation. He is familiar with the challenges faced by both patent owners and petitioners in these complex proceedings, often working closely with trial counsel as part of an inter-disciplinary team.

Mr. Wright has been lead or back-up counsel in over sixty inter partes review (IPR) proceedings, mostly on behalf of patent owners. In one of the earliest success stories for patent owners, Mr. Wright successfully defended a set of four IPRs, securing confirmation of all challenged  claims in the digital rights management space. More recently, Mr. Wright secured key non-institution decisions in four IPRs on two patents for a Fortune 500 IT company, and in two IPRs on one patent for an innovator medical device company.

The involved technologies in Mr. Wright's IPR cases include semiconductor design and fabrication, digital rights management, RFID, computer networking, optical switches, medical devices, and stray voltage detection technologies. Prior to the new AIA proceedings, Mr. Wright represented patent owners in over fifty inter partes and ex parte reexaminations involving concurrent district court or USITC proceedings.

Mr. Wright also has extensive appellate experience at the U.S. Court of Appeals for the Federal Circuit. Prior to joining Sterne Kessler, Mr. Wright clerked at the Federal Circuit for the Honorable Alvin A. Schall. He has been either lead counsel or second chair in over a dozen appeals to the Federal Circuit. Mr. Wright recently secured affirmance of a PTAB decision for a Fortune 500 global communications company.

Mr. Wright is also an editor of Patent Office Litigation, a two-volume set focused on the new contested proceedings under the America Invents Act published in 2012 by Thomson Reuters Westlaw. This book examines how the proceedings interact with other aspects of patent procurement and enforcement, and delivers practical analysis and advice.

Prior to focusing on contested proceedings, Mr. Wright had extensive experience in the preparation and prosecution of patent applications before the USPTO in technologies ranging from software, hardware (analog and digital), communications, wireless devices and systems, networking, database management, computer memory devices, semiconductor manufacturing, computer graphics and electrical power systems including nuclear technology.

While at George Mason University School of Law, Mr. Wright was the Managing Editor of the George Mason Law Review. Before law school,  Mr. Wright was a Lieutenant in the U.S. Navy Submarine Force. His tour included three years on the nuclear powered fast attack submarine USS TAUTOG (SSN 639), and two years with COMSUBGRU 7 in Yokosuka, Japan. In addition to being a qualified Naval Nuclear Engineer, Mr. Wright also has private industry experience where he worked in semiconductor manufacturing for industry leader International Business Machines.

Representative Matters

Inter Partes Reviews

Inter partes review of U.S. Patent No. 7,225,160 (IPR2013-00134) – secured confirmation of asserted claims at trial initiation phase.

Inter partes review of U.S. Patent No. 6,058,045 (IPR2014-00113) – secured non-institution decision.

Inter partes review of U.S. Patent No. 8,359,102 (IPR2015-01203, -01204) – secured non-institution decisions for innovator medical device company.

Inter partes review of U.S. Patent Nos. 6,377, 577 (IPR2015-00973) – secured non-institution decisions for Fortune 500 IT company.

Inter partes review of U.S. Patent No. 7,724,879 (IPR2013-00296) – secured cancellation of all challenged claims for Fortune 500 global communications company.

Federal Circuit Appellate Litigation

AIP Acquisition LLC v. Level 3 Communications: Appeal from the Patent Trial and Appeal Board.

K/S HIMPP v. Hear-Wear Techs., LLC: Appeal from the Patent Trial and Appeal Board

In re Jung: Appeal from the Board of Patent Appeals and Interferences dealing with prima facie anticipation.

Taurus IP, LLC v. DaimlerChrysler Corp. et al: Patent enforcement action on behalf of Taurus IP, LLC. Orion IP, LLC v. Hyundai Motor America: Patent enforcement action on behalf of Orion IP.

Medtronic Inc. v. Guidant Corp.: Patent infringement defense for Medtronic in an appeal related to cardiac pacemakers.

Floyd M. Minks v. Polaris Indus. Inc.: Patent infringement defense for Polaris in an appeal related to speed limiting circuits for All Terrain Vehicles.

District Court Litigation

Fresenius Medical Care Holdings, Inc. (FMC) v. Paddock Laboratories, Inc.: ANDA litigation. (District of Massachusetts)

JuxtaComm Technologies, Inc. v. Ascential Software Corp.: Patent infringement defense for Sybase Inc., relating to software for transforming and exchanging data between distributed, heterogeneous computer systems. (Eastern District of Texas)

FuzzySharp Technologies Inc. v. ATI Inc.: Patent infringement defense for ATI relating to advanced computer graphics processing methods and procedures. (Northern District of California)

Stream Theory v. Exent Technologies Inc.: Patent infringement defense for Exent relating to streaming applications over the internet. (Central District of California)

Reexamination

Reexam of U.S. Patent No. 6,470,405 entitled “Protocol for Communication with Dynamic Memory” on behalf of patent owner. (Control No. 95/001,178)

Reexam of U.S. Patent No. 7,360,050 entitled “Integrated Circuit Memory Device Having Delayed Write Capability” on behalf of patent owner. (Control No. 95/001,201)

Reexam of U.S. Patent No. U.S. Patent No. 90/009,403 entitled "Discrete-Time Sampling of Data for Use in Switching Regulators" on behalf of patent owner. (Control No. 90/009,403)

Reexam of U.S. Patent No. 5,774,670 entitled "Persistent Client State in a Hypertext Transfer Protocol Based Client-Server System" on behalf of third party requester. (Control No. 90/011,106)

Reexam of U.S. Patent No. 5,490,216 entitled "System for Software Registration" on behalf of patent owner. (Control No. 90/010,831)

Admissions

District of Columbia

United States Patent and Trademark Office

Virginia

Court of Appeals for the Federal Circuit

Federal District Court for the District of Columbia

Education

J.D., George Mason University magna cum laude

B.S., Electrical Engineering, University of Vermont


 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.


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)


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. 


Dana Hayter has been responsible for various aspects of Intel's Intellectual Property work since 2004. As part of these duties, he has personally handled or directed the conduct of numerous patent licensing, cross-licensing, litigation settlement and acquisition matters, including Intel's 2009 settlement agreements with Advanced Micro Devices, Inc., Intel's participation in Nortel's bankruptcy auction and Intel's 2012 acquisition of patents from InterDigital, Inc.

Mr. Hayter has extensive experience in all legal and business aspects of mission-critical, high-visibility IP licensing and other complex transactions (including related financial and econometric analysis), billions of dollars in closed deals and a consistent record of direct client counseling at the highest levels of public and private clients.

Before joining Intel, Dana was Of Counsel and Senior Counsel at two Bay Area-based, national law firms focused on advising technology industry clients and served as a Trial Attorney at the US Department of Justice's Antitrust Division.


Daryl Fairbairn

Primary Areas of Practice: Intellectual property, M&A/corporate

Work History: 2000-present, Clifford Chance offices in New York, Dusseldorf and Silicon Valley

Daryl is a counsel in the Corporate Group of the New York office of Clifford Chance where he recently returned from practicing in the firm's global healthcare and life sciences group in Düsseldorf Germany for five years. He advises life sciences and technology companies in cross-border intellectual property-driven transactions, including strategic M&A, joint ventures, complex licensing and collaborative arrangements, and other commercial transactions dealing with product R&D, supply, manufacturing and development.

Prior to graduating from Columbia Law School, Daryl joined the firm as a scientific consultant after earning a Ph.D. in microbiology from Brigham Young University and conducting postdoctoral research in immunogenetics at the University of Illinois at Champaign-Urbana.

Daryl is admitted to practice in New York, California and before the US Patent and Trademark Office.


Lateef Mtima is a Professor of Law at the Howard University School of Law. After graduating with honors from Amherst College, Professor Mtima received his J.D. degree from Harvard Law School, where he was the co-founder and later editor-in-chief of the Harvard BlackLetter Journal. He is admitted to the New York and Pennsylvania bars and has practiced intellectual property, bankruptcy, and commercial law, including a decade in private practice with the international law firm of Coudert Brothers. Currently a member of the Advisory Council for the United States Court of Federal Claims and the BNA Patent, Trademark & Copyright Journal Advisory Board, Professor Mtima has held the post of Distinguished Libra Visiting Scholar in Residence at the University of Maine School of Law, is a past President of the Giles S. Rich Inn of Court for the United States Court of Appeals for the Federal Circuit, and was a member of the founding Editorial Board for the American Bar Association intellectual property periodical Landslide. Professor Mtima is the Founder and Director of the Institute for Intellectual Property and Social Justice, an accredited Non-governmental Organization Member of the World Intellectual Property Organization (WIPO).


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. 


Niklas Östman is Senior Director of Licensing at Microsoft Corporation. In 1999, he received a degree corresponding to a US J.D. degree from the University of Helsinki in Finland. He is admitted to the Finnish Bar Association. Before joining Microsoft in 2012, he was the Head of Patent Licensing for Nokia Corporation playing a central role in creating the largest patent licensing program ever by a European company, mainly around standard essential patents. Earlier in his career, he has also been a partner at a top Nordic law firm. Regarding patent licensing specifically, he has negotiated hundreds of patent licenses ranging from multi-billion dollar deals to royalty free ones and from those covering one patent only to those covering up to 460.000 patents globally. As to patent litigation, he has been involved in patent lawsuits in the UK, Germany, France, Italy, the Netherlands, Sweden, Finland, Norway, US (TX, VA, CA, WI, DE and US ITC), South Korea, Taiwan as well as in China (Beijing and Shanghai). He has also acted as a trial counsel in patent cases in Finland obtaining several land mark decisions on issues such as the doctrine of equivalence (non-literal infringement), availability of preliminary injunctions and patents for biochemical synthesis routes. As to standard essential patents in particular, he has participated in 100+ lawsuits globally involving essential patents, dozens of patent pools, several anti-trust efforts involving essential patents and also has extensive experience regarding the licensing thereof while having to balance between, on one hand, being the licensor for one of the strongest portfolios in the industry and, on the other hand, being a licensee having to clear IP rights for the sales of up to 500.000.000 cellular devices annually.


Philip Warden focuses on commercial law, and related litigation, the rights of creditors, and controversies involving allegations of unfair business practices.

Mr. Warden was an associate at Meserve, Mumper & Hughes in Los Angeles from 1972-73 in that firm's business litigation department. Prior to that, he served in the United States Navy from 1965-69 in the Weapons Department aboard the U.S.S. New Jersey and was awarded the Secretary of the Navy Commendation Medal with Combat V and Republic of Viet Nam Cross of Gallantry. Mr. Warden attained the rank of Commander in the U.S. Navy Reserve.

From 1973-83, Mr. Warden worked for Dinkelspiel & Dinkelspiel in San Francisco, beginning as an associate and being promoted to partner in 1979.

Mr. Warden represented the indenture trustees for seven municipal bond issues totaling $1,850,000,000 in litigation with the Insurance Commissioner of the State of California in the Executive Life Insurance Company case. In that case, the Commissioner sought to classify the indenture trustees' claims in such a fashion that they would be paid nothing. Mr. Warden was the lead counsel for a team of Pillsbury attorneys and paralegals that successfully pursued declaratory judgment in the Los Angeles Superior Court, which determined that the claims of the indenture trustees are insurance policies and entitled to share whatever dividend insurance policyholders are paid. In other words, the guaranteed investment contracts were classified as insurance products. Mr. Warden's clients have to date been paid approximately $1,700,000,000. Mr. Warden has also been active in numerous lengthy hearings on the Plan of Reorganization in the Executive Life case and successfully argued to the California Court of Appeal that the state insurance commissioner's Plan should be ruled unlawful (Commercial Nat'l Bank in Shreveport v. Superior Court). This is the first time an insurance commissioner's confirmed plan has been rejected by a court of appeal.

Mr. Warden has been involved in significant financial restructuring and insolvencies around the United States and in Asia including Storage Technology Corporations, Daon Corporation, MiniScribe Inc., System Integrators, Inc., Cumberland Farms, Inc., El Paso Refinery, Harbor Bay Isle Associates, CHS Electronics, Inc, MicroAge, Inc., Priam Corporation, First Lenders Indemnity Corp, Pacific Gas and Electric Company, and California Power Exchange, Inc.

Mr. Warden has been involved in significant CPR and AAA arbitration matters. He was lead petitioners' counsel in a CPR arbitration arising out of the acquisition of the manufacturing division of a New York Stock Exchange company. The Honorable Robert Bork was the lead arbitrator in that case.

Mr. Warden was selected to be on the Peer Assistance Panel for the Northern District of California to provide litigation advice to inexperienced lawyers. Mr. Warden has also offered his legal experience to the San Francisco Neighborhood Legal Assistance and helped obtain zoning variances for a drug treatment center. He was previously a trustee of the San Francisco Mental Health Association and president of the Management Center. Mr. Warden was the Chairman of the American Bar Association Bankruptcy Litigation Subcommittee.

Mr. Warden has regularly participated in Practicing Law Institute and California CEB panels, including PLI's Annual Institute for Intellectual Property Law, for the last several years.

Mr. Warden was one of just 90 lawyers in the country identified as a member of the BTI Consulting "Client Service All-Star Team." BTI Consulting recently interviewed over 200 corporate counsel at Fortune 1000 companies throughout the U.S. and requested the names of individual lawyers at law firms who stand out for providing "superior client service."

Honors & Awards

  Best Lawyers in America, Bankruptcy and Creditor Debtor Rights / Insolvency and Reorganization Law, Litigation - Bankruptcy (for 25+ years)

  PLC Which Lawyer?, Bankruptcy & Corporate Reorganization-San Francisco & Silicon Valley (2011-2012)

  BTI Client Service All-Star (2004)

  Super Lawyers (2004-2011)

Education

J.D., University of California, Hastings College of the Law, 1972, Order of the Coif, Thurston Honor Society
A.B., Dickinson College, 1965


Robert Greene Sterne is a founding director of Sterne, Kessler, Goldstein & Fox P.L.L.C. in Washington, D.C.  He has extensive expertise in AIA post issuance proceedings and concurrent patent litigation, USITC 337 investigations, Federal Circuit appeals, EU and China enforcement, reexamination, patent monetization and licensing, and corporate intellectual property best practices (CIPO and Board of Directors).  He is a registered U.S. patent attorney, has spoken and written extensively on these topics, was named in 2015 by the Financial Times as one of the "Top Ten Legal Innovators in North America," was named in 2015 by Law360 as one of  “The Top 25 Icons of IP,” and was named in 2014 by The National Law Journal as an “Intellectual Property Trailblazer and Pioneer.” He is editor in chief of Patent Office Litigation (2012), and Patent Office Litigation 2nd Edition (2017)(Thomson Reuters). He is counsel in more than 200 PTAB contested proceedings and has played a key role in precedent-setting U.S. case law, including: In re Beauregard, (Fed. Cir. 1995), KSR (SCT. 2007), i4i (SCT. 2011), In re Jung (Fed. Cir. 2011), ETG (Fed Cir. 2012), and Hear Wear (Fed. Cir. 2014). Among many honors, he is the recipient of the Sedona Conference Award for Excellence in Advanced Legal Education (2004), the Sedona Lifetime Achievement Award (2012),  and the 2012 Attorney of the Year “Good Scout” Award for his leadership in community service. He has been at the forefront of software patent protection, having represented IBM in the precedent setting In re Beauregard case that produced the 1996 USPTO software patent guidelines and having delivered in 1985 the seminal AI and Expert System Legal Protection presentation before the AIPLA. Sterne Kessler is ranked in 2018 as the 5th largest US IP specialty firm and 337th largest US law firm.


Steve Bené

Primary Areas of Practice
 IP, Corporate, Litigation, Compliance

Law School/Graduate School   Stanford Law School

Work History

1991-92: Judicial Clerk, 5th Circuit Court of Appeals (Austin, TX)
1992-95: Corporate and Licensing Associate, Fenwick & West, LLP (Palo Alto, CA)
1995-Present: Electronic Arts

Professional Memberships  CA Bar Association


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.


Helen Hill Minsker provides assistance to clients concerning a broad range of issues arising under trademark and unfair competition laws, as well as copyright law. Her experience in these fields of law includes counseling, prosecution and registration of applications before the U.S. Patent and Trademark Office and the U.S. Copyright Office, internet, licensing, enforcement, oppositions and cancellations, and litigation in the courts. Helen also counsels clients in protecting their trademark portfolios internationally.

Helen is active in a number of professional organizations. She has held leadership roles with national and international IP associations, including serving on both the INTA Board of Directors and the AIPLA Board of Directors (as a Board member and as Treasurer). From 2006 – 2009, Helen served on the Editorial Board of the INTA publication The Trademark Reporter. Over the years, Helen has chaired various committees for these associations and others, such as the ABA IP Law Section’s 
Committee on Franchising, and she served as co-Chair of INTA’s Annual Meeting in Amsterdam in 2003. Helen also was chair of the Bar Association of DC’s Patent, Trademark & Copyright Law Section.

Helen received her undergraduate degree (A.B.) in political science from Vassar College, and her J.D. from George Washington University. She also spent a year studying at the London School of Economics and Political Science. She is admitted to the Bar of the District of Columbia Court of Appeals and the Bar of the Supreme Court of Illinois, as well as several courts, including the United States Supreme Court and the Court of Appeals for the Federal Circuit.

From 2001-2011, Helen served as an adjunct professor of law at Georgetown University, where she co- authored and taught a course on intellectual property pretrial litigation skills. She also is a frequent lecturer in continuing legal education programs, and is a former Contributing Editor/Trademarks for the Federal Circuit Bar Journal. Helen has been recognized in Managing Intellectual Property’s “IP Stars” list of “Top 250 Women in IP” since 2013, and recognized in World Trademark Review 1000’s list of “World’s Leading Trademark Professionals” since 2012.

Helen practices in the Chicago office of Banner & Witcoff, Ltd.

 


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


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.    


Ms. Beckwith is a member of the PacTech Law firm where she focuses on intellectual property matters including RAND and other IP disputes and licensing, patent analysis and IP policy.  Prior to joining PacTech Law, Ms. Beckwith was Vice President, Legal at Aruba Networks, Inc. where she was chief intellectual property and chief litigation counsel.  She also managed certain regulatory, compliance and licensing areas, participated on Aruba’s SEC disclosure committee and oversaw the legal side of Aruba’s participation in various standard setting organizations.   Prior to joining Aruba, Ms. Beckwith spent over eight years at Cisco Systems, Inc., supervising Cisco’s worldwide intellectual property litigation. Before that, Ms. Beckwith was Senior Director, IP Litigation and Litigation for Applied Materials, Inc. 

Ms. Beckwith began her legal career at what was then known as Pillsbury Madison & Sutro and also practiced law at Limbach & Limbach and Fenwick & West.  Ms. Beckwith received her law degree from UC Berkeley’s Boalt Hall School of Law.  She also has an M.A. in Mathematics from UCLA and a B.A. in Mathematics with Honors from UC Santa Cruz.