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Advanced Licensing Agreements 2015


Speaker(s): Brett M. Schuman, Christian H. Nadan, Daniel Burns, Gillian Thackray, Grace L. Pan, Joseph Yang, Kenneth M. Kaufman, Marc P. Schuyler, Marcelo Halpern, Mark S. Holmes, Marya Postner, Nader A. Mousavi, Peter J. Kinsella, Sarah Angela Solomon, Terence N. Church, Tiki Dare
Recorded on: Jan. 28, 2015
PLI Program #: 59089

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.). He recently steered the company through a $330M acquisition by a joint venture comprised of a PE firm and a large strategic buyer.

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 was 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. Mr. Nadan received his undergraduate degree from Stanford University and his J.D. from U.C. Berkeley Boalt Hall School of Law.


Joseph Yang is an IP transactions partner at PatentEsque Law Group, LLP.

Joe specializes in structuring & negotiating tech/IP-centric deals (technology transactions, strategic alliances, patent licensing/sales, standards body issues, IP aspects of M&A) and in using IP as strategic business assets. He has led hundreds of deals involving billions of dollars in and across the information technology, electronics, entertainment, consumer goods, healthcare, energy, chemical & manufacturing industries. Reflecting these diverse experiences, Joe is often retained to “bridge the gap” in cross-industry deals (e.g., joint ventures, IoT, SaaS & “big data” deals) between companies whose industries historically didn’t interact with each other.

Joe is also an expert witness for high stakes tech & patent licensing disputes.

Joe teaches the "Technology and Patent Licensing" course at Stanford Law School, and has taught the “Patent Law and Policy” course at U.C. Berkeley School of Law. Joe is a long-time chair of the “Advanced Licensing,” “Advanced Patent Licensing” and “Understanding the IP License” courses at the Practising Law Institute in NYC, SF and Chicago. He has written for journals & books, and been cited by courts & treatises, on licensing & patent law.

Joe previously served as VP & General Counsel of Cryptography Research, Inc. (CRI), negotiating deals under which 10+ billion devices/year are made by its licensees in the smart card/phone, semiconductor, pay TV, printer & other fields. He also developed, enforced & defended CRI’s patent portfolio, and played a key role in CRI’s successful sale in a series of M&A deals (with Macrovision & Rambus) valued at $400+ million.

Before that, Joe co-founded and later led the “IP Strategy & Transactions” practice based in the Silicon Valley office of the world’s largest law firm (Skadden, Arps). He has also practiced at other large multinational law firms, and served as an arbitrator.

Joe has been named one of the “World’s Leading IP Strategists,” “World’s Leading Patent Professionals” and “World’s Leading IP & Technology Licensing Lawyers” by Intellectual Asset Management (IAM) publications. IAM named Joe as 1 of only 10 "highly recommended" IP transactional attorneys in California -- the only one from a boutique (non-AmLaw 100) firm:

“Joseph Yang is a major-league deal maker and licensing authority” as well as “a transactional mastermind” with arbitration and litigation skills that make him a formidable negotiator.” “He … is a creative problem solver who can clearly articulate legal risks and provide effective advice to guide business decision making.”

Joe is “one of the best expert witnesses you could hope to deal with. He considers all the issues before committing to an opinion, and his positions are always rock solid”.

He is also profiled in “Marquis Who’s Who in American Law”, “Marquis Who’s Who in America” and “Marquis Who’s Who in the World”, and named to the California SuperLawyers list.

Joe also serves on the advisory board of the Licensing Executives Society - Silicon Valley chapter, and is a board member of the Asian Pacific American Bar Association of Silicon Valley.

Joe was originally a research engineer in the aerospace & energy fields. He holds a J.D. from Stanford Law School and a Ph.D. (engineering) from the California Institute of Technology, where he has been a board member of the Caltech Associates & Caltech Alumni Association.


Marcelo Halpern is the firmwide co-chair of Perkins Coie’s Technology Transactions and Privacy practice group.  His practice focuses on complex commercial transactions involving the development, deployment and distribution of technology in a wide variety of industries.

Marcelo counsels multinational FORTUNE 100 companies, startups, emerging growth companies, governments and nonprofits on structuring and negotiating collaboration, development, distribution, license and service agreements.  He provides practical counsel in connection with emerging technologies, including those related to big data analytics, artificial intelligence, fintech and blockchain, internet of things, smart cities, mobile, cloud computing and “as a service” platforms, hardware and e-commerce, as well as the overall interplay of interoperability, industry standards and IP licensing approaches.  He has a strong focus on complex strategic alliances and licensing transactions, outsourcing and ERP implementation, digital strategies—including open source licensing, data security, data use and privacy issues—and other marketing and distribution strategies.

He regularly works with clients in the blockchain industry, advising on technology and platform issues, structuring token offerings, digital currency issues, tokenization of assets, and the development and operation of blockchain based collaborative platforms.  He also has advised on the formation of various blockchain consortiums, including the Enterprise Ethereum Alliance, that develop blockchain platforms in specific industries and create industry standards.

Marcelo was honored by U.S. News - Best Lawyers as the Chicago “Lawyer of the Year” in the technology law category and has been listed since 2004 as one of “America’s Best Lawyers” for technology law by Chambers USA in its annual guide of leading business lawyers.

Outside of his legal practice, Marcelo serves on the board of directors for Youth Guidance, an organization offering school-based programs that empower youth in Chicago to succeed in school and in life.  He also serves on the board of directors for the Lawyers Trust Fund of Illinois supporting civil legal aid services to the underserved.  Marcelo previously served as president of the board of directors for Illinois Legal Aid Online, a trailblazing platform connecting people to the resources they need to resolve their legal problems and interact with the legal system when they cannot find or afford a lawyer.


Nader A. Mousavi is a partner in Sullivan & Cromwell’s Palo Alto office and is co-head of the Firm’s Intellectual Property and Technology Group and the Firm’s Cybersecurity Group.

Widely recognized as one of the top technology deal lawyers in the world, Mr. Mousavi has been described by his clients as “‘an amazing lawyer and trusted legal and business partner…[with] a unique ability to think outside the box and meet company goals. There’s nobody better when you take into account substantive knowledge, composed demeanour and negotiation ability.’”(IAM Patent 1000). Clients praise his “‘legal erudition, superlative drafting and bargaining aptitude’” and note that “‘he is a uniquely talented lawyer. You can put him on pretty much anything…’” (IAM Patent 1000).

He has been named one of the “The World’s Leading IP Strategists” by Intellectual Asset Management (IAM) and was recently named a Law360 2018 MVP in technology, and has also been recognized by The American LawyerChambers USADaily JournalThe Legal 500 United StatesNorthern California Super Lawyers and the National Law Journal, among others.

For over 20 years, Mr. Mousavi has focused his practice on technology-intensive mergers, acquisitions, divestitures, joint ventures and collaborations, as well as the licensing of patents, trademarks, trade secrets, content, pharmaceuticals, data, software and other technology. He has led deals across a wide range of industries, including technology, media, internet, telecommunications, life sciences, agtech, fintech, blockchain, consumer, and sports.  Many of these transactions have been cross-border. Mr. Mousavi also advises on the California Consumer Privacy Act (“CCPA”), as well as the transaction review process administered by the Committee on Foreign Investment in the United States (“CFIUS”). 

He has advised acquirers (such as Amazon, Anheuser-Busch InBev, AT&T, Bayer, Philips), sellers (such as Kite Pharmaceuticals, Pharmasset, Skype, Stemcentrx), investors (such as CPPIB, Goldman Sachs, and Silver Lake), and others (such as DirecTV, Dolby, Fiat, Intel, Kodak, Major League Baseball, VeriFone, Verily, Waymo) on a wide range of strategic transactions involving IP and technology. In aggregate, these transactions represent over $400 billion in M&A deal value and over $5 billion in patent licensing royalties.

A distinguished thought-leader in the field, Mr. Mousavi is a Lecturer in Law at Stanford Law School (2015-2019), where he teaches a course on Patent and Technology Licensing. Mr. Mousavi is a member of the Advisory Board for Stanford Law School’s Program in Law, Science & Technology and is the law school’s National Reunion Chair. He recently received the Stanford University Associates Governors’ Award for exemplary and long-standing volunteer service to Stanford University (2019).

Mr. Mousavi is also a member of the board of directors of PAAIA, the Public Affairs Alliance of Iranian Americans.


Peter Kinsella is a partner in the firm's Technology Transactions & Privacy and Intellectual Property practices. His practice is focused on advising start-up, emerging and large companies on technology, licensing and intellectual property transaction matters. He is a frequent lecturer on licensing and technology issues. Prior to joining the firm in 2010, Pete was a partner with Faegre & Benson. Prior to that, he worked in various legal capacities with Qwest Communications International, Inc. (formerly U S WEST, Inc.) in Denver and Honeywell, Inc. in Minneapolis. 

Pete offers extensive experience structuring and negotiating domestic and international agreements in a wide variety of areas, including: cloud services, outsourcing, product development, technology transfer, telecommunications, data sharing, complex procurement, product distribution and sales, contract manufacturing, and a wide variety of patent, trademark and copyright licenses. He offers significant international experience, including, intellectual property holding companies, export control and international intellectual property issues. Pete also regularly handles intellectual property issues in connection with public and private company mergers and acquisitions, including due diligence and licensing issues. The value of several of these transactions has exceeded one billion dollars.

Pete has been materially involved in a number of high profile intellectual property disputes in a variety of industries, including the semiconductor, telecommunications, computer networking, automotive, clean- tech and health sciences industries. In 2005, he wrote significant portions of the appeal brief filed on behalf of AWH Corporation in the United States Court of Appeals for the Federal Circuit en banc proceedings, Phillips v. AWH Corporation, concerning the procedures that should be used to determine patent claim construction. Most recently, Pete successfully represented a third party semiconductor tooling manufacturer in connection with a government ITC investigation seeking to ban the importation of hard drives into the United States.

As a registered patent attorney, Pete counsels clients on patent matters, including, infringement, validity, and pre-litigation issues. While at U S WEST, Inc. he was responsible for managing over 1500 trademark applications and registrations in 62 countries and all trademark opposition and litigation proceedings.


Primary Areas of Practice:               

Intellectual Property Litigation

Law School:                                       

Northwestern University School of Law, J.D., 1992; Phi Delta Phi and lota Sigma Pi  

Work History:

Holland & Knight LLP; Orrick, Herrington & Sutcliffe LLP; Kaye Scholer LLP; Frommer Lawrence & Haug LLP                                      

Professional Memberships:             


American Bar Association 

New York State Bar Association

District of Columbia Bar  

New Jersey State Bar Association

Committee on Patent, Trademark and Copyright Law and Intellectual Property Section

Japan Federation of Bar Associations

Daini Bengoshi Kai

Taipei Bar Association  

Los Angeles Intellectual Property Law Association

New York Intellectual Property Law Association

American Intellectual Property Law Association

Southern California Chinese Lawyers Association

American Chemical Society

National Asian Pacific American Bar Association


Sarah A. Solomon is a partner in the firm’s Technology & Life Sciences Group.

Ms. Solomon represents biotechnology, pharmaceutical, medical device, diagnostic and other life sciences companies in connection with their intellectual property, commercial and M&A transactions. She regularly advises private and public companies on complex strategic collaboration and partnering transactions (such as co-development, joint research and development agreements, patent licenses, strategic alliances and joint ventures); research, development and commercial relationships (such as manufacturing, distribution, supply, clinical trial, university licenses and services arrangements); and mergers and acquisitions (such as product acquisitions, spin-outs and patent portfolio acquisitions). Ms. Solomon also counsels clients in connection with international transactions and relationships in North America, South America, Europe and Asia.

Education

  • J.D., University of California Hastings College Law, 2001
  • B.S., Biology, University of California, San Diego, 1996

Bar and Court Admissions

Ms. Solomon is admitted to practice in California.


Brett Schuman, a partner in Goodwin Procter's IP Litigation Group, focuses his practice on patent and other IP litigation in all of the federal and state courts in California, the Eastern District of Texas, the Eastern District of Virginia and the District of Delaware.

Mr. Schuman focuses his practice on patent cases on behalf of both plaintiffs and defendants across the technology industry in the district courts and at the Federal Circuit. He serves as lead partner and lead trial counsel in patent infringement litigation matters involving mobile phone technology, broadband communications technology, semiconductor fabrication and circuitry, wearables and pharmaceuticals. He has also served as lead counsel in several litigations involving patent license agreements.


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.


Dan Burns, a partner in Goodwin Procter's Business Law Department and a member of its Patent Prosecution and Technology Transactions Practices, focuses his practice on domestic and international patent prosecution in the areas of software, Internet, information retrieval, cloud computing, renewable energy, machine learning, image processing, 3-D graphics, web technologies and bioinformatics, among others. His work includes performing invention harvests with client engineering teams and serving as a liaison between the teams and in-house counsel, as well as reviewing and revising intellectual property agreements, preparing clients for licensing negotiations and performing open source investigations. Mr. Burns also has experience investigating patent holdings and providing recommendations for design-around and licensing opportunities. He joined Goodwin Procter in 2013.

PROFESSIONAL ACTIVITIES

Mr. Burns is a member of the Association for Computing Machinery of the Institute of Electrical and Electronics Engineers.

PROFESSIONAL EXPERIENCE

Prior to joining Goodwin Procter, Mr. Burns was a partner at Fish & Richardson in Silicon Valley. Before beginning his legal career, he worked as a software engineer and manager for 10 years and is fluent in Java, C++, MS-Windows and various flavors of Unix. His previous technical experience also includes work as an engineer in the Space Physics Group at the Jet Propulsion Laboratory in Pasadena, California.

BAR AND COURT ADMISSIONS

Mr. Burns is admitted to practice in California, as well as before the U.S. Court of Appeals for the Federal Circuit and the U.S. Patent and Trademark Office.

RECOGNITION

In law school, Mr. Burns was on the editorial board of the Loyola Law Review.


Gillian Thackray is Vice President, Associate General Counsel and Chief IP Counsel at The Clorox Company, a consumer products company headquartered in Oakland, Ca with a diversified portfolio of products that, in addition to their iconic bleach and cleaning products also includes such leading brands as Kingsford Charcoal, Brita water filtration products, Glad bags, wraps and containers, and Burt’s Bees natural personal care products. In this role, Ms. Thackray oversees IP strategy, enforcement and licensing. She also advises the Company regarding IP in M&A activity, and counsels the business on complex IP transactions, partnerships, and business opportunities.

Prior to joining Clorox, Ms. Thackray was a partner with the AmLaw 100 firms of Quinn Emanuel and Covington and Burling, providing clients with strategic guidance regarding patent assets, including advice regarding IP in M&A and joint ventures, as well as litigating patent cases. Prior to moving in-house, she was named a ‘Rising Star’ by Super Lawyers for three consecutive years. Ms. Thackray is also a fellow of Litigation Counsel of America, an invitation-only trial lawyer’s honorary society.


Kenneth M. Kaufman was Senior Counsel in the Washington, D.C. office of Manatt, Phelps & Phillips, LLP.  His practice focuses on copyright, entertainment and media law, content and music licensing, digital media, and sports law.  He represents a wide range of clients including international media and publishing companies, television networks and distributors, music publishers, digital media and technology companies, telecommunications companies, photographers, visual artists, copyright licensing companies, software publishers, Broadway theatre producers, private equity firms, foundations, composers, recording artists and authors.

Ken is a recognized authority in the fields of copyright and entertainment law.  He was named the Washington, D.C. Copyright Law “Lawyer of the Year” in 2014 by The Best Lawyers in America (where he is currently listed in the practice areas of copyright law, intellectual property litigation, entertainment law-music, and entertainment law-motion pictures and television).  He has also been recognized by Chambers USA: America’s Leading Lawyers for Business, Washington, D.C. Super Lawyers, Washingtonian Magazine’s Best Lawyers, and Legal Times.  For several years he was a Visiting Lecturer at Yale Law School, teaching a course on copyright, entertainment and Internet law, and has taught a course on copyright law at George Washington University Law School.  In 2016 and 2017 he was an Advanced Leadership Initiative Fellow at Harvard University, where he has spoken on coalition building in education for gender equality.

Ken has extensive experience as both in-house and outside counsel in the entertainment and communications industries.  Immediately prior to joining Manatt, he was a partner at Skadden, Arps, Slate, Meagher & Flom LLP.  Previously, he served as Senior Vice President, General Counsel of Showtime Networks Inc. in New York; as Senior Vice President, Corporate Affairs and General Counsel of PolyGram Records, Inc. in New York; and as General Counsel of The John F. Kennedy Center for the Performing Arts in Washington, D.C.  In two of those positions, he was the first in-house attorney and organized the in-house legal department.  Previously, he served as Assistant Counsel of a U.S. Senate Judiciary Subcommittee.

Ken co-chairs the annual PLI conference on Counseling Clients in the Entertainment Industry and serves on the Governing Committee of the ABA’s Forum on the Entertainment and Sports Industries and on the Planning Committee for the annual Stanford Digital Economy Best Practices Conference.  He teaches an annual course on “Copyright Law and Litigation” for the D.C. Bar, is a member of the Board of Directors of Washington Area Lawyers for the Arts, and has served as a Trustee and Chair of the Washington, D.C. Chapter of the Copyright Society of the U.S.A.  He is a graduate of Harvard College (magna cum laude) and Yale Law School (where he was an Editor of the Yale Law Journal), and is admitted to practice in New York, California and the District of Columbia.

 


Marc P. Schuyler has been practicing law since 1989 and is a principal of the Law Office Of Marc P. Schuyler in Saratoga, California.  Marc began his career as a litigator at the LA-based firm of Pretty, Schroeder, Brueggemann and Clark, and subsequently moved in-house to Hewlett-Packard Company in 1995, where he assumed the role of managing counsel.  Marc is versed in all aspects of intellectual property (IP) law practice, especially including licensing and patent development and strategy for purposes of licensing, acquisition and litigation. Marc obtained his BS with honors at Caltech and his law degree from UCLA.


Primary Areas of Practice: Technology Transactions, including Technology Related M&A, Licensing, Joint Development, Strategic Alliances; Corporation & Entity Support, including Organization, Maintenance & Private Funding; Trademark & Copyright Registration & Protection

Work History: Terry Church is an experienced transaction attorney specializing in technology licensing and IP related transactions. His extensive corporate, business transaction and licensing experience includes over 15 years at major technology companies in Silicon Valley, including PeopleSoft, Cisco Systems, and LSI Logic. While he was at Cisco, the company was closing up to 25 acquisitions a year. Terry served as VP and Assistant General Counsel at PeopleSoft through Oracle’s hostile takeover, responsible for 20 professionals covering licensing, strategic alliances, IP management, and M&A. His experience includes strategizing, drafting and negotiating complex transactions, including deals with companies in Europe and Asia.

After obtaining his law degree from Hastings Law School in San Francisco, Terry served as law clerk for the Chief Judge of the US District Court for the Eastern District of Tennessee, practiced as a litigation associate at Cooley, LLP, and worked in London as Senior Legal Advisor for British Gas, Ltd. where he negotiated sophisticated gas transportation agreements with major energy companies in Europe.

Terry currently operates out of the Law Offices of Terence N. Church & Associates, a growing practice in the San Francisco Bay Area. Terry’s clients include both publicly traded and privately held semiconductor and software companies in California and elsewhere, for whom he has served as both corporate and transaction counsel. Terry has 2 sons and lives with his wife in Danville, CA. 

Law School: Hastings College of the Law, San Francisco CA 

Professional Memberships:

  • ProVisors Group; Member, Executive Committee Walnut Creek I; Host for East Bay M&A Affinity Group
  • San Ramon Chamber of Commerce, Board of Directors 2012 to Present; Board Chairman 2010
  • San Ramon Valley Unified School District, Facilities Oversight and Advisory Committee, 2013 to Present
  • Rotary Club, Danville Sycamore Valley Chapter
  • Past President, Association of Corporate Counsel – San Francisco Bay Area Chapter
  • Member State Bar of California


Primary Areas of Practice: Life Sciences Licensing and Commercial Transactions

Law School/Graduate School:
J.D., University of California, Berkeley School of Law (Boalt Hall)
MA & Ph.D. in Molecular Biology, Princeton University

Work History: Cooley LLP, 1996 to present


Tiki Dare is Assistant General Counsel at Oracle, where she specializes in trademark and copyright law.  Her areas of practice also include anti-counterfeiting, advertising, intellectual property, and competition.  She previously led the trademark group at Sun Microsystems, Inc.  Before joining Sun, Tiki specialized in trademark law at Fenwick & West in Palo Alto, California.  She started her legal career in the Federal Practice group at Arent Fox in Washington, D.C., where she litigated issues including trademark and patent infringement and false advertising.  Tiki is a graduate of Dartmouth College (cum laude) and the Duke University School of Law.