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Intellectual Property Law Institute 2015


Speaker(s): Brett Alten, Ph.D, Britt L. Anderson, David Bender, Ethan Andelman, James M. Kennedy, Jean I. Liu, John G. Heller, Joseph E. Mutschelknaus, Joseph P. Lavelle, Kathleen E. McCarthy, Lateef Mtima, Marta Beckwith, Robert P. Taylor, Ron Laurie, Suzanne Harrison, Terri Gillis, Victoria A. Cundiff, William A. Tanenbaum, William Sloan Coats
Recorded on: Oct. 19, 2015
PLI Program #: 59142

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.


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. 


Brett Alten is currently the Deputy General Counsel and Head of Intellectual Property at SolarCity Corporation.  Previously, he served as Head of Intellectual Property at DropBox and Director of Patent Enforcement and Development at Apple. Before that, Dr. Alten was with Morrison & Foerster in Tokyo, and focused primarily on patent litigation, adversarial licensing, strategy, and counseling. Previously, he was with Finnegan, Henderson, Farabow, Garrett, & Dunner in Washington, D.C. and at Fish & Neave in New York City.  Dr. Alten was also a founding board member of the LOT Network, a coalition of technology companies created to reduce the number of NPE patent infringement suits, and currently serves on its board.

Mr. Alten received a Ph.D. in physics and was a Peace Corps Volunteer in Ghana, where he taught physics and started a vocational school.


Britt Anderson is an intellectual property litigator in the Palo Alto office of K&L Gates. He represents clients in trademark, false advertising, copyright, rights of publicity, trade secret, domain name, licensing and related business tort and licensing matters before the U.S. Trademark Trial and Appeal Board and in various state and federal courts. These cases have frequently been at the forefront of Internet-related law, including trademark and copyright infringement arising from online activities, cybersquatting and domain name issues, rights of publicity, anonymously posted content, distribution of mobile content, privacy, and online advertising.

In addition, Mr. Anderson’s counseling practice involves all aspects of trademark, copyright, domain name, advertising and related commercial and intellectual property matters, including developing and implementing strategies for protection of trademarks, copyrights, publicity rights, and designs, and designing and negotiating intellectual property licenses, distribution and service agreements, assignments, work-for-hire, and joint development agreements. He has also assisted numerous clients in initiating or deepening global trademark protection programs in a multitude of non-U.S. jurisdictions.

Professional Background

Prior to joining K&L Gates, Mr. Anderson served as a senior lawyer in the intellectual property groups of two leading national law firms. Before attending law school, Mr. Anderson held several executive positions with international companies. Between 1992 and 1997, he directed the start-up of an international division for a leading U.S. logistics company, opened the company’s first European and Asian offices, and managed contract negotiations and agency relationships in over 40 countries.

Professional/Civic Activities

  • American Bar Association (Copyright and New Technology Committee, Trademarks and the Internet Committee).
  • International Trademark Association (INTA): Government Officials Education and Training Committee, 2014-2017, USPTO Examiner Training; Model State Trademark Bill Subcommittee, 2006-2007, drafting and state legislative support for California’s version of the Model State Trademark Law, Bus. & Prof. Code §§ 14200 et seq.

Education

J.D., Santa Clara University School of Law, 2000 (Managing Editor, Santa Clara Law Review; Honors Moot Court; Dean’s List; Emery Law Scholarship)

M.B.A., Walter A. Haas School of Business, University of California at Berkeley, 1990 (marketing emphasis)

B.A., History and Economics, University of California at Santa Cruz, 1982 (with honors)


John G. Heller is a shareholder at Rogers Joseph O'Donnell specializing in complex business litigation and professional liability.

Areas of Practice
Mr. Heller focuses on trials and appeals of commercial litigation, insurance coverage, professional liability, employment, and real estate matters.  He is co-chair of the firm’s Attorney Liability and Conduct Practice Group, and a member of the Complex Commercial Litigation Practice Group.  Mr. Heller is a California Certified Specialist in Legal Malpractice Law.

Professional Qualifications and Activities
Mr. Heller is an experienced trial attorney.  In over 25 years of practice, he has successfully represented businesses and individuals in jury trials and litigation involving claims of breach of contract and warranty, fraud,  professional negligence, insurance bad faith, and civil rights violations.  Mr. Heller has obtained favorable judicial rulings and settlements for professionals sued for malicious prosecution and breach of fiduciary duty, or threatened with judicial sanctions, and has prevailed on numerous anti-SLAPP motions. He has also served as lead counsel representing parties in international arbitration proceedings arising from commercial contract disputes, and claims of accounting fraud.  

Mr. Heller lectures to attorneys and trade organizations on developments in civil procedure, trial practice, anti-SLAPP jurisprudence, and insurance coverage.  Through the ABA Section of Litigation Legal Services Advocacy Training at Stanford Law School, he has instructed public interest attorneys on trial skills.  He serves on the Executive Committee of the San Francisco Bar Association Litigation Section, and has been named a Northern California Super Lawyer each year since 2005. 

Education
J.D., University of California,
Hastings College of the Law, 1987

B.A., University of California at Berkeley, 1982
Magna cum laude in Political Science


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: Patent and Trademark Litigation

Law School/Graduate School: Georgetown University Law Center, JD 1974

Work History: Terri has 40 years experience in all aspects of intellectual property law. She has first-chaired bench and jury trials and has argued appeals in both the Federal and Second Circuits. Her practice focuses largely on pharmaceuticals, biotechnology and medical devices, although she also has experience in a number of other technologies.

Professional Memberships: She served as President of the New York Intellectual Property Law Association in 2011-12 and has served on its Board for ten years. She is on the Georgetown University Law Center Board of Visitors and served a six-year term on the Georgetown University Board of Regents. She is Secretary of the Legal Advisory Council for Sanctuary for Families, a group dedicated to addressing issues related to domestic and gender violence.


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.


Jim has been Pixar’s Senior Vice President, Business Strategy and Chief Legal Counsel since 2009.  He oversees Pixar’s Legal and Business Affairs matters, and also serves a member of Pixar’s senior leadership team.

Jim’s previous experience includes senior-level legal and business affairs positions at THQ, Electronic Arts, Mindscape, and the Lucasfilm companies.  He began his career as a corporate attorney at Gibson Dunn & Crutcher.  He holds an undergraduate degree from Princeton University, a law degree from Boston College School of Law, and an MBA in Strategic Leadership from Dominican University of California.


Katie McCarthy is a partner in the New York office of King & Spalding’s IP practice group with 31 years of experience in trademark, design, internet, advertising and copyright matters. 

Katie advises clients on global IP issues and litigates IP cases in the federal courts and the U.S. Patent and Trademark Office Trademark Trial and Appeal Board. 

Katie is active on the Board of Directors of the New York Intellectual Property Law Association (NYIPLA) and is currently President-Elect of that organization, slated to take over as President in May. 

Katie recently finished a two-year term as the Editor-In-Chief of the International Trademark Association’s scholarly journal The Trademark Reporter, having written, solicited and edited articles for the journal for more than 20 years. 

Katie speaks frequently for the NYIPLA, INTA and PLI, and serves as one of the editors for the PLI book, Kane on Trademark Law.  Katie also actively promotes diversity in the profession through her involvement in King & Spalding’s Women in IP initiatives.

Katie lives in Astoria, New York where she, her husband and two sons can be found frequently hosting assorted siblings, nieces, nephews, cousins and friends.


William A. Tanenbaum is recognized as one of the Who’s Who Legal “Thought Leaders Global Elite” and is ranked in top tiers by ChambersLegal500Best Lawyers and Who’s Who Legal in technology, outsourcing, IP and data law.  Bill is a shareholder in the 40-lawyer Technology Transactions & Data Privacy Practice at Polsinelli, an AmLaw 100 firm with 850 lawyers in 22 cities.  He is the Practice Co-Chair of the Health Care Technology & Innovation Group, which is the second largest of its kind in the country.  Polsinelli was named as the 2018 Health Care Firm of the Year by US News & World Report, and its Health Care Practice is the largest in the country.  

Bill’s practice includes the Industrial Internet of Things, Body Area Networks, AI, Machine Learning, Natural Language Processing and data analytics, including data generated by networks of sensors and created by machines, as well as technology and IP transactions, and he leads teams that serve as IP counsel and as health care counsel in technology and M&A transactions.  Health Care is an early adopter of IoT and data analytics, and clients call upon Bill to use leading practices from that industry in other industries.  

Bill is a past President of the International Technology Law Association and was previously named as the IT Lawyer of the Year in New York by US News & World Report.  Clients and legal researchers find that “he has expertise in technology transactions that puts him at the very top tier of the market [and] he is a font of knowledge on creating new IT structures,” (Who’s Who Legal) and “that he brings extremely high integrity, a deep intellect, fearlessness and a practical, real-world mindset to every problem,” “provides savvy, zealous representation,” and understands the market and uses his expertise to help [clients] successfully navigate negotiations” (Chambers).  Bill is a graduate of Brown University (Phi Beta Kappa), Cornell Law School and the Bob Bondurant School of High Performance Driving.

 


Ethan Andelman is Senior Counsel and Director of IP Litigation at NXP Semiconductors.  He has 15 years’ experience as a commercial attorney in litigation and licensing matters, both as in-house and outside counsel. 


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.


Suzanne Harrison is the well-known author of the Edison in the Boardroom IP management books. Suzanne is a Director with Inflexion Point Strategy, the first IP investment bank, focused on assisting companies with IP transactions.  Suzanne is also the Principal of Percipience, LLC, a board-level advisory firm focused on intellectual property strategy and management, quantifying and mitigating IP risk. Previously she founded Gathering2.0, which worked with Fortune 500 patent buyers to increase information transparency and efficiency in the patent marketplace, while pricing legal risk.  She is a convenor of the ICM Gathering, a group of twenty global companies that have been meeting since 1995 to define, create, and benchmark best practices around Intellectual Property Management (IPM) and other intangibles (I-stuff).  She holds an undergraduate degree in Economics from the University of California at Davis, and an MBA from the University of Chicago. She has written numerous articles and is a frequent speaker on the subject of how companies can extract value from their innovations.


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.