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Intellectual Property Law Institute 2014


Speaker(s): Anne Hiaring Hocking, Charan J. Sandhu, David Bender, Douglas (Chip) A. Rettew, Dr. Justin Watts, Jean I. Liu, Joseph P. Lavelle, Karen Frank, Katherine C. Spelman, Katherine M. Basile, Kenneth B. Germain, Lateef Mtima, Marc A. Cohn, Mark S. Holmes, Marta Beckwith, Merri A. Baldwin, Michael Okada, Michelle E. Park, Robert P. Taylor, Ron Laurie, Victoria A. Cundiff, William Sloan Coats
Recorded on: Oct. 16, 2014
PLI Program #: 50356

Position/Title: Patent Counsel

Firm or Place of Business: Google Inc.

Primary Areas of Practice: Patent

Law School/Graduate School: Boston University School of Law


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


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. 


Joseph Lavelle is an experienced patent lawyer, focusing primarily on the preparation and trial of patent infringement cases.

Joseph also has handled a number of successful appeals to the Court of Appeals for the Federal Circuit.

Joseph has more than 25 years of experience litigating patent cases, including many bench and jury trials. He has litigated in most areas of technology, including semiconductors, computers, computer software, telephony, Digital Signal Processing, telematics, waveform encoding, automotive technology, financial services, biotechnology and many others.

In addition to federal district court proceedings, Joseph has tried a number of Section 337 proceedings before the US International Trade Commission (ITC), as well as handled cases before the US Court of Federal Claims and appeals to the Court of Appeals for the Federal Circuit. He also is licensed to practice before the USPTO and has successfully handled interference proceedings

Joseph has vast experience handling litigation and counseling matters at the intersection of competition laws and antitrust laws. He has participated in many of the leading matters in the area of standard setting. Also, he has represented clients in patent-antitrust matters before the FTC and the Antitrust Division of the Department of Justice.


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).


Primary Areas of Practice:  Licensing

Law School/Graduate School:  University of Southern California

Work History: 

Associate and Partner
Wilson Sonsini Goodrich & Rosati
November 1994 – April 2006

Associate
Whitman Breed Abbot & Morgan
1993 – 1994

Legal Advisor
Yamashita & Ohshima
1991 – 1993

Associate
Whitman & Ransom
1989 – 1991 (2 years)

Professional Memberships:  California Bar


Ron Laurie has worked in Silicon Valley since before it had that name, initially as a missile systems engineer at Lockheed-Sunnyvale, and then as an intellectual property lawyer and patent strategist. In 2004 he launched Inflexion Point Strategy, the first IP investment bank.  With offices in Silicon Valley, Taiwan and Singapore, Inflexion Point advises technology companies and institutional investors around the world in acquiring, divesting and investing in IP-rich companies, businesses units and technologies, and IP assets in the form of patent portfolios, exclusive field-of-use rights and related know-how.  Inflexion Point’s mission is to extract the unrealized value of strategic IP by increasing corporate valuation in M&A transactions, by building a defensive shield against litigious competitors and by generating top-line revenue via creative exclusive field-of-use licensing programs. 

Ron is also a director at Wi-LAN, Inc., one of the oldest and most successful publicly-traded patent licensing companies. He has been named as one of the World’s Leading IP Strategists by Intellectual Asset Management (IAM) Magazine and is on the advisory boards of the Silicon Valley Chapter of the Licensing Executives Society, and the Certified Patent Valuation Analyst accreditation program.

Prior to launching Inflexion Point, Ron was a founding partner of Skadden Arps' Silicon Valley office, where he chaired the firm's IP Strategy and Transactions Practice Group for six years and led IP teams in some of the largest high-tech and life sciences M&A, spin-out and joint venture deals ever done, worth over $50 billion in the aggregate.  He was also a founding partner of the Silicon Valley offices of Weil, Gotshal and Irell & Manella.

As a lawyer, Ron advised clients in the semiconductor, computer, software, communications, media and financial services industries on IP strategy -- a subject he has taught at both Stanford and Boalt (UC Berkeley) law schools.

Ron was an IP litigator for ten years, handling high-visibility patent, copyright, trade secret and trademark infringement cases in federal and state courts, including representation of Hewlett-Packard in its successful defense of the 'look and feel' copyright infringement suit filed by Apple Computer against HP and Microsoft over the Macintosh graphical user interface.

Ron is a registered patent attorney, and a substantial part of his prior law practice involved strategic planning, competitive analysis and commercial exploitation of patents on leading-edge software-based technologies such as encryption, biometrics and internet telephony. He wrote the Priceline reverse-auction patent, which was the first Internet business method patent to attract national attention.

Ron has been an advisor to the U.S. Patent & Trademark Office, the U.S. Copyright Office, the Office of Technology Assessment of the U.S. Congress, the National Research Council, the National Academy of Science and the World Intellectual Property Organization (WIPO). He is on the Executive Council of the Berkeley Center for Law & Technology and the editorial board of The Journal of Internet Law and co-edited a two-volume treatise titled International Intellectual Property.


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.


With over a billion dollars in patent deals under his belt, Mark Holmes is the founder and CEO of PatentBridge LLC, a privately held technology development firm in Silicon Valley that specializes in bringing to market select patented technologies covering extraordinary software and Internet-related breakthroughs. 

Mr. Holmes is the CEO and Co-Founder of RavenWhite Cybersecurity, Inc. which was selected as one of the top 10 security startups worldwide at the RSA Conference. He is also the Executive of Business Development for the DeCaf Co. which is creating the world’s first consumer instant decaffeination product.

Mr. Holmes has advised such technology savvy entities as Visa, Sony, Applied Materials, University of California at Berkeley as well as many startups and has been named every year to the IAM Strategy 300 – The World’s Leading IP Strategists.  He served as co-chair of the Silicon Valley Chapter of the Licensing Executives Society (LES) from 2006 to 2011.

He was the co-founder of a successful telecommunications startup which was sold in the late 1990s to a portfolio company of the Alabama state retirement fund (Retirement Systems of Alabama).

He lectures nationally on the pressing issues facing tech startups. In the past few years, he has spoken nationally over 50 times for such bodies as Renaissance Weekend, International Society for Optical Engineering (SPIE), PLI and other organizations.

He holds an engineering degree from Brown, is a member of the Institute of Electrical and Electronics Engineers (IEEE), IEEE Software Society and wrote the book PATENT LICENSING AND SELLING: STRATEGY, NEGOTIATION & FORMS.


PROFESSIONAL POSITIONS

Of Counsel: Wood Herron & Evans LLP (Cincinnati, OH) (2010- )
Of Counsel: Greenebaum Doll & McDonald PLLC (Cincinnati, OH) (2008-10)
Partner/Of Counsel: Thompson Hine LLP (Cincinnati, OH) (2002-08)
Partner/Member: Frost Brown Todd LLC [formerly Frost & Jacobs LLP] (Cincinnati, OH) (1988-2002)
Of Counsel: Banner & Witcoff [formerly Banner, Birch, McKie & Beckett] (Washington, DC) (1987-88)
Counsel: King & Schickli (Lexington, KY) (1982-87)
Distinguished Senior Fellow: NKU Chase College of Law (Highland Heights, KY) (2013-2014)
Distinguished Professorial Practitioner in Residence: University of Dayton School of Law (Dayton, OH) (2007-2013)
Adjunct Professor: University of Cincinnati College of Law (1988-2006)
Adjunct Professor: American University College of Law (Washington, DC) (1987-88)
Visiting Professor: George Washington University National Law Center (Washington, DC) (1986-87)
Professor of Law: University of Kentucky College of Law (Lexington, KY) (1971-86)
Instructor in Law: Indiana University School of Law (Bloomington, IN) (1969-71)

LEGAL AFFILIATIONS/RECOGNITIONS

State Bar of California (1970- ) [inactive]
Ohio State Bar (1989 - )
Board of Advisors, Restatement (Third) of Unfair Competition (1987-92)
Advisory Board, Patent, Trademark and Copyright Journal (1987- )
Founder/Program Chair, All Ohio Annual Institute on Intellectual Property (1990-2013; Program Chair Emeritus 2014- )
Member, Board of Directors, United States Trademark Assn. (1990-92)
Member, Cincinnati Intellectual Property Law Association (1988- )
The Best Lawyers in America (1991-92 and later editions)
Marquis’ Who’s Who in American Law and Who’s Who in the World
Guide to the World’s Leading Experts in Trade Mark Law (1996 and later)
Who’s Who Legal, The International Who’s Who of Trademark Lawyers (2001- )
Chambers USAA, America’s Leading Lawyers for Business (2004- )
Ohio Super Lawyers 2005, 2006, 2007, 2008, 2009, 2010, 2011, 2012, 2013
World Trademark Review, The World’s Leading Trademark Professionals (2014- )
Member, INTA Panel of Neutrals (2000-2011)
Best Lawyers “Lawyer of the Year 2011” (Intellectual Property Law - Cincinnati, OH)
Best Lawyers “Lawyer of the Year 2012” (Trademark Law – Cincinnati, OH)
Best Lawyers “Lawyer of the Year 2014” (Litigation, IP and Trademark Law)

FORMAL EDUCATION
New York University School of Law, J.D., 1969; N.Y.U. Law Review, Associate Editor
Rutgers College, A.B., 1966 (Magna Cum Laude); Elected to Phi Beta Kappa (1966)

PRESENTATIONS/PUBLICATIONS

Over 240 public lectures; over 10 in-house presentations; over 20 publications


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.


Douglas (Chip) Rettew is a partner in the Washington, DC office of Finnegan Henderson. He has been recognized in World Trademark Review WTR 1000 as ”[o]ne of the best litigators in the country with an unbelievable success rate,” and “a go-to litigation lead for world-famous consumer brands.” He focuses his practice on trademark, false advertising, and unfair competition litigation and disputes.

Doug litigates cases involving a broad range of issues, including traditional trademarks, false advertising, product disparagement, rights of publicity, unfair competition, trade dress, design patents, and domain names. Doug is also involved in advertising issues and counseling, right-of-publicity matters, and trademark and copyright prosecution and licensing. Clients include Under Armour, Bridgestone, the NFL Players Association, Capital One, Subaru, the Association of Tennis Professionals (ATP), and PNC Bank. 

Doug has first-chair jury and bench trial and appellate experience and has argued appeals before the U.S. Courts of Appeals for the Federal, Fourth, and Eighth Circuits. He also litigates oppositions, cancellations, and ex parte appeals before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO). Doug has significant experience in obtaining (and defeating) temporary restraining orders (TROs) and preliminary injunctions, including those involving counterfeiting and ex parte seizures. He previously served as leader of the firm’s trademark and copyright practice and is currently serving on the firm’s compensation committee.

 


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.


Justin Watts joined our London IP/IT practice as a partner in March 2003, having previously been a partner at specialist intellectual property firm Bristows. Justin is dual qualified as a lawyer and chartered engineer, and holds a PhD in optoelectronics from Cambridge University. He worked in satellite communications engineering before qualifying as a lawyer.

Justin has extensive experience in the UK courts and in co-ordinating international IP litigation, including patent disputes and licensing enforcement. 

He has acted for clients in disputes across the EU, the US, and Asia. His patent experience covers semiconductors, computers and computer architectures, software, data storage and communications structures and standards, telecommunications and networks, electronic and optoelectronic devices and systems, electrical components and systems, biotechnology, medical appliances, imaging and printing, and mechanical patents.

Justin has advised a number of major companies on patent litigation and patent-related regulatory matters, including Philips, Sony Computer Entertainment, Abbott Laboratories, Hewlett-Packard, Johnson & Johnson, Schlumberger and Rolls-Royce.

His experience includes advising:

  • McDermott in patent litigation over oil pipelaying systems, including a claim to settle the terms of a licence of right, and a dispute over payment of stamp duty;
  • Philips in relation to enforcement of its licensing programmes in CD, CD-R and DVD discs and players;
  • a DRAM memory manufacturer in various multi-jurisdictional litigation arising out of cross-licence renewal negotiations, concerning questions of patent infringement and licence termination;
  • a microprocessor manufacturer in several multi-national patent litigation cases over microprocessor architectures and fabrication technology, involving patent infringement, licence and anti-trust issues;
  • Thomson Multimedia in litigation over MPEG digital television technology, involving patent infringement claims and counterclaims for licenses on reasonable and non-discriminatory terms;
  • a computer manufacturer in litigation over claims brought under allegedly essential patents for standard computer interfaces, including patent infringement, supplier indemnities, antitrust reasonable and non-discriminatory license obligations;
  • Schlumberger in patent litigation against EMGS over its portfolio of patents for electrical methods of oil exploration;
  • Various clients on the IP aspects of renewables, including wind turbine and carbon capture and storage technologies;
  • Rolls-Royce in its dispute on fan blade technology with Pratt & Whitney;
  • Sisvel, Philips, France Telecom, TDF and IRT in patent/antitrust litigation against Sandisk over MP3 players; and
  • An international technology company and mobile phone operator in multi-national patent litigation regarding mobile phones.


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.

 


Katherine Basile has a unique combination of private practice and in-house counsel experience.  Ms. Basile continues in her long-standing role as primary outside counsel responsible for famous brands worldwide and for key brand protection and brand defense in TTAB, civil court, and multijurisdictional disputes.  Ms. Basile’s ability to combine strategic ownership analysis with her experience in administrative and civil court proceedings allows her clients to develop trademark and brand strategies that support their business objectives and to rely upon Ms. Basile to implement those strategies and enforce their rights – in the United States and worldwide.

Ms. Basile is past National Chair for INTA’s Saul Lefkowitz Moot Court Competition, 2012-2013; was a member of the INTA’s US Sessions Planning Subcommittee for the INTA Annual meeting in 2014; a member of the INTA President’s Task Force; and a member of the European Communities Trademark Association (ECTA) Law Committee). Ms. Basile has been recognized as a top professional in her field by a number of well-respected organizations including the World Trademark Review (WTR) 1000; Guide to the World’s Leading Trademark Law Practitioners; "Who's Who Legal;" "Legal 500 US;" "Who's Who Legal: California;" Who's Who of Trademark Lawyers;" and the "International Who's Who of Trademark Lawyers." Ms. Basile has presented at INTA, ECTA, MARQUES, AIPLA, ABA and ACCA conferences.

Educational Background:

UCLA Law,  JD 1987
UCI, 1980 BS Biology; 1984 BA German


Marc A. Cohn
Counsel

Marc Cohn is Counsel in the firm's intellectual property practice group. He concentrates his practice on medical device litigation and arbitration, including patent infringement, contract, license, and business tort cases. He has litigated throughout the US, including in New York, California, Maryland, Massachusetts, Delaware, Wisconsin, Minnesota, Illinois, Indiana, Texas, Washington, and Nebraska. Mr. Cohn also has experience filing patent review proceedings in the U.S. Patent Office, including proceedings co-pending with related litigations.

With nearly 15 years of experience in medical device practice, Mr. Cohn has become deeply familiar with the unique market dynamics and regulatory schemes affecting medical device manufacturers and distributors, including the role of reimbursement and the Food and Drug Administration in bringing medical devices to market.

Mr. Cohn's medical device experience includes cardiac stents, drug-eluting stents, and catheters, women's health, including oncology treatment catheters, uterine fibroid removal devices, and diagnostic kits, electronic tissue stimulators, magnetic resonance imaging and medical ultrasound.

He also has experience in other technologies, including: business methods via website portals, temperature sensing equipment, telecommunications equipment and systems, commercial lawn mowers, and diapers.

Representative Matters

  • Inflow v. Boston Scientific. Complete defense victory against a claim for US$105 million for patent infringement relating to coronary stents.
  • GE Healthcare v. ABI. Complete plaintiff's victory in an arbitration involving the interpretation of a license agreement.
  • Boston Scientific v. Cook/Guidant. The court granted Boston Scientific's motion for summary judgment and entered a permanent injunction barring Cook and Guidant from collaborating to exploit licensed technology in the multi-billion dollar drug-eluting stent market.
  • Boston Scientific v. Medtronic. Won judgment for Boston Scientific in excess of US$160 million and secured permanent injunction against future infringing sales of coronary stent systems.
  • Kimberly-Clark v. Procter & Gamble. Represented Procter & Gamble in the "diaper wars" arbitration in defense of a patent infringement claim against Pampers diapers. The arbitration panel found the patent-at-issue invalid, and the panel's opinion was upheld on appeal.
  • Freedom Wireless, Inc. v. Verizon Wireless. In multi-defendant suit re telecommunications systems, represented only victorious defendant.

Practice Areas

Intellectual Property

Education

JD, University of Virginia School of Law, 2000
BS in Applied and Engineering Physics, cum laude, Cornell University, 1997

Admissions

District of Columbia
US Court of Appeals for the First Circuit
US Court of Appeals for the Seventh Circuit


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.