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IP Issues in Business Transactions 2015


Speaker(s): Bruce Perens, Christian H. Nadan, David S. Almeling, Debra A. Dandeneau, Dr. Lothar Determann, E. Lynn Perry, Eric A. Prager, Eric Kurtycz, Esq., J. Scott Evans, Jae Kim, Jeffrey D. Osterman, Karen N. Ballack, Marjorie M. Goux, Mark A. Valetti, Mary A. Fuller, Michael S. Rabson, Nate Garhart, Susan Lyon-Hintze, Tessa J. Schwartz, Thomas F. Villeneuve
Recorded on: Feb. 26, 2015
PLI Program #: 59203

Mark A. Valetti

Position/Title:                       
Senior Patent Counsel

Firm or Place of Business:   
Texas Instruments Incorporated

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

Phone:                                   
(214) 479-1265

E-Mail:                                  

m-valetti@ti.com

Primary Areas of Practice:  Mergers and Acquisitions

Law School:                          
Southern Methodist University

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

Professional Memberships:  IEEE, AIPLA and Texas Bar


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

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

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

 


Bruce Perens                        

Position/Title: Co-Founder, Open Source Movement                   

Firm or Place of Business:    Algoram, Inc.

E-Mail:           bruce@perens.com                          

Bruce Perens is an American computer programmer and advocate in the open source community. He created the Open Source Definition and published the first formal announcement and manifesto of open source. He co-founded the Open Source Initiative (OSI) with Eric S. Raymond.

In 2005, Perens represented Open Source at the United Nations World Summit on the Information Society, at the invitation of the United Nations Development Program. He has appeared before national legislatures and is often quoted in the press, advocating for open source and the reform of national and international technology policy.


Debra A. Dandeneau is co-chair of Baker McKenzie's Global Restructuring and Insolvency Group and chair of its North America Restructuring and Insolvency Group. Her practice focuses on business reorganizations and debtor and creditors’ rights.

Ms. Dandeneau has been ranked by The Best Lawyers in America 2011-2018 in the practice areas of Bankruptcy and Creditor-Debtor Rights/Insolvency and Reorganization Law, and Litigation-Bankruptcy. She has also been recognized by Legal 500 US for Municipal Bankruptcy and Super Lawyers 2006-2017 for Bankruptcy. Super Lawyers has also named Debra among the 2017 Top Women for Bankruptcy Business in New York.

Ms. Dandeneau has dealt with a variety of entities experiencing financial distress, as well as a range of industries. Over the course of her career, her work has included representations in the real estate, manufacturing, power generation, healthcare, municipal, retail, and service sectors.

Ms. Dandeneau's professional honors include:

  • "Top Women" for Bankruptcy: Business in New York, Super Lawyers, 2017
  • "Super Lawyer" in Bankruptcy, Super Lawyers, 2006-2017
  • Pro Bono Publico Award, The Legal Aid Society, 2008
  • Recommended Lawyer in Municipal Bankruptcy in the US, Legal 500 US, 2015
  • "Best Lawyer" in Bankruptcy and Creditor-Debtor Rights/Insolvency and Reorganization Law and Litigation, Best Lawyers in America, 2011-2018


Eric A. Prager, a partner in the firm’s intellectual property practice group, assists clients with all types of intellectual property issues. His practice involves contentious and non-contentious work, including strategic counseling, due diligence of IP assets, sophisticated licensing and agreement work, and litigation. He has litigated copyright, false advertising, patent, trademark and trade secret cases in courts around the country.

 With significant experience in the area of digital content distribution and protection, Eric represents one of the Big Three record companies and a major online subscription music service in their digital content matters. 

 Eric assisted in drafting several “digital agenda” copyright treaties for the World Intellectual Property Organization, including the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.  He has also served on the U.S. Patent and Trademark Office Public Advisory Committee for Trademark Affairs.

 Eric serves as an adjunct professor at Fordham Law School in New York co-chairs the New York version of this PLI program.


J. Scott received his undergraduate degree from Baylor University and his Juris Doctor cum laude in 1992 from the Louis D. Brandeis School of Law at The University of Louisville. He first served as Corporate Counsel for Fruit of the Loom where he was responsible for managing the international intellectual property portfolios for Fruit of the Loom and its associate companies The B.V.D. Licensing Corporation, Gitano, Pro Player and Salem Sportswear, Inc. In November 1996, Mr. Evans joined Adams Evans P.A. where he continued to concentrate his practice in the areas of trademark, copyright, unfair competition and Internet law. In November 2007, he joined the legal team at Yahoo! Inc., where he served as a Senior Legal Director – Global Brands, Domains & Copyright.  In October 2013, J.Scott joined Adobe Systems as Associate General Counsel responsible for global trademarks, copyright, domains and marketing.

On three separate occasions, Managing Intellectual Property magazine voted J. Scott one of the 50 Most Influential People in IP (2009, 2011, 2013).  J. Scott is also President-Elect of the International Trademark Association, where he serves on the Executive Committee and chairs the Planning Committee.


Jae Kim is Rambus’ senior vice president and general counsel. Jae joined Rambus in July 2010, and assumed the role of general counsel in 2013. Before he came to Rambus, Jae was a senior legal counsel at both private and public companies, where he was responsible for compliance, intellectual property, commercial transactions, and litigation. Jae also has experience in private practice with the law firm of Wilson Sonsini Goodrich & Rosati, advising high tech and emerging growth companies on mergers and acquisitions, private financings, public offerings, securities compliance, public company reporting and corporate governance. Jae began his legal career as an attorney with the US Securities and Exchange Commission, Division of Corporation Finance, in Washington, DC.

Jae is a member of both the California State Bar and New York State Bar, received a JD from the American University, Washington College of Law, and his bachelor's degree from Boston University.


Jeffrey Osterman is a partner in Weil’s Technology & IP Transactions practice and concentrates on matters with deep commercial or technical complexity. He has had extensive experience with pure patent licensing, technology transfer, outsourcing, technology integration, content licensing and merchandising.

Mr. Osterman recently advised Sanofi in its worldwide exclusive licensing agreement with MannKind Corporation to develop and commercialize Afrezza (insulin human) Inhalation Powder; Verizon in connection with the acquisition of cloud TV technology from Intel; Lenovo in connection with the acquisition of Motorola Mobility from Google; and Mubadala and Sony/ATV in connection with the proposed $2.2 billion acquisition of EMI Music Publishing. Mr. Osterman also regularly represents Panasonic in connection with a wide variety of transactional matters involving consumer electronics and GE in connection with the IP aspects of numerous corporate transactions. He also counsels clients with respect to their rights under existing agreements and the development of new technologies.

Mr. Osterman lived in Japan from May 1997 to May 1998 where he worked in-house on loan to the headquarters of Panasonic Corporation.

Mr. Osterman is a member of the State Bar of New York and is admitted to practice before the United States Patent and Trademark Office. He has appeared on national television and lectured on intellectual property, electronic privacy and e-commerce throughout the United States and on U.S. intellectual property and contract law in Japan. He is also the Vice Chair of the IP Licensing Committee of the Intellectual Property Owners’ Association and is active in the open source legal community.

Mr. Osterman has received a number of awards for his expertise including being ranked by Chambers USA and Chambers Global as a national and global leader in the technology and outsourcing fields and by Legal 500 as a leading lawyer in the field of intellectual property. He is also recognized as an “IP Star” by Managing Intellectual Property’s IP Stars for Copyright, Counselling and Licensing, by Best Lawyers in America for Information Technology Law and in IAM Patent 2014.

Education

Harvard Law School (J.D., cum laude, 1995)

Cornell University (B.A., cum laude, 1992)


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

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

Experience

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

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

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

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

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


Susan Lyon-Hintze, founder of the Law Office of Susan Lyon-Hintze, has provided legal counsel to tech and e-commerce clients for over 15 years over a decade of which has been focused exclusively on the area of privacy and security.  She advises clients from small start-ups to major Internet, technology, advertising, and mobile companies on a wide range of U.S. and international privacy and data security issues. Representative areas of expertise include CAN-SPAM, FTC Act, Children's Online Privacy Protections Act (COPPA), telemarketing laws, data security and data breach notice obligations, behavioral targeting and advertising, online and mobile tracking and monitoring using automatic tracking technology, facial recognition and biometrics, cloud computing strategy, and legislative and regulatory policy and outreach.

Ms. Lyon-Hintze formerly served as co-chair of Cooley LLP's privacy group and co-lead of Perkins Coie's privacy group.  She also gained valuable in-house experience as privacy counsel with Microsoft Corp., where she was the lead attorney responsible for global privacy law compliance for all sales and marketing activities and legislative policy in the area of privacy, data security, and online safety.  Prior to Microsoft she served as lead privacy counsel at Dell, Inc


Dr. Michael Rabson is Senior Of Counsel in the Palo Alto office of Wilson Sonsini Goodrich & Rosati, where his practice focuses on counseling biotechnology companies, including those in the biopharmaceutical, diagnostics, clean technology, and agricultural biology industries. Michael has more than 20 years of experience working with clients in the life sciences, both as external counsel and in-house counsel. He often serves as external general counsel to such  companies, providing advice regarding the full range of business and legal issues, including the negotiation and structuring of complex technology transactions, intellectual property counseling, and corporate matters, including mergers and acquisitions, both in the U.S. and abroad.

Prior to rejoining the firm in 2010, Michael served as senior vice president, business development and legal affairs, and general counsel at Cytokinetics, Inc., a clinical-stage biopharmaceutical company focused on the development of small-molecule therapeutics. Before that he spent eight years as senior vice president of legal affairs and general counsel at Maxygen, Inc., an international biotechnology company focused on the development of improved protein drugs. His in-house operational experience and deep familiarity with the business issues associated with growing and public companies allow him to be practical and pragmatic in providing advice.

Before he joined Maxygen in 1999, Michael was a member of the Wilson Sonsini Goodrich & Rosati technology transactions group, where his practice focused on clients in the life sciences, including therapeutics, agriculture, medical devices, and material sciences. Earlier in his career, Michael was a patent examiner focused on biotechnology and genetic engineering at the U.S. Patent and Trademark Office. He is a member of the patent bar and an author of scientific publications in Science, Nature, Proceedings of the National Academy of Sciences, and other journals.

EDUCATION:
J.D., Yale Law School
Ph.D., Infectious Disease Epidemiology, Yale University
Postdoctoral fellow at the National Cancer Institute, National Institutes of Health
B.S., Biological Sciences, Cornell University

ADMISSIONS:
State Bar of California


Eric Kurtycz, Esq.
IP Counsel
Olympus Surgical Technologies America

As the IP Counsel for Olympus Surgical Technologies America, Eric Kurtycz is the sole Patent Attorney charged with establishing the OSTA IP Legal Department and primary patent expert for handling all intellectual property matters for the company.  Mr. Kurtycz’s activities include monitoring and assisting in the preparation & prosecution of patent applications; managing outside counsel; revising patent clearance studies; management of the company's IP portfolio; IP licensing; client counseling; patent litigation; and supervising staff. He Works with Research & Development, Patent Agents & Senior Management to define and implement the IP strategy for the company.

Education:

Juris Doctor, Michigan State University – College of Law                           

Master of Business Administration – Finance, Oakland University                                                               

Master of Science – Manufacturing Engineering, Wayne State University                                                       

Bachelor of Science – Management Information Systems, Oakland University                                                                     


Bar Admissions and Accomplishments:

Attorney - Admitted to Practice, State of Michigan; In-house exemption State of Massachusetts

Registered Patent Attorney - United States Patent and Trademark Office

Certified Six Sigma Black Belt – Dow Chemical

Co-inventor on 9 issued US patents

Author and Presenter -  API Polyurethanes Expo 2001 (non-fabric seating)

Author and Presenter -  SAE International 2001 (All Thermoplastic Lightweight Structural Rear-Seat-Back)


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

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

Select Prior Positions 

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

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

Maxim Integrated Products, Inc.: Chief IP Counsel 

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

Bingham McCutchen: Counsel 

Pennie & Edmonds: Associate 

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


Nate Garhart understands that his role is to help his clients get the job done. Whether he’s registering trademarks that represent the business, protecting copyright assets of the business, or negotiating any of various agreements that are necessary for the business, he knows that his job is to enable the client to do its job – not hold things up.

Nate also works with clients on their advertising, marketing, and other promotional activity transaction needs, similarly helping ensure that all necessary rights have been considered and the risks associated with any given activity have been explored, understood, and minimized.

Whether he’s working with a high-tech startup, a public company, or a nonprofit entity, Nate’s expertise helps his clients ensure that they are protecting and securing their intellectual property and other rights as intended.

Nate is a member of the California and New York State Bars, as well as the American Bar Association. He served as Chair of the Intellectual Property Section of the Barristers Club for the San Francisco Bar Association. He is also a member of the International Trademark Association and the Copyright Society of the USA and is a frequent speaker on trademark and copyright issues for groups such as the Practicing Law Institute and the American Bar Association. Recently, he also presented on intellectual property issues in social media. During law school, Nate was Research Editor for the Duke Journal of Comparative and International Law.

Nate has served on the boards of various nonprofit organizations, including the California Autism Society and the Tel-Hi Neighborhood Center, which provides cultural and educational activities for the community in the North Beach, Chinatown, and Fisherman’s Wharf neighborhoods in San Francisco.

Nate also volunteers with the National Ski Patrol and is currently on the patrol at the Northstar California resort in the Lake Tahoe area.

Special Expertise

  • Trademark prosecution and disputes;
  • Licensing;
  • Copyright registration and enforcement;
  • Contract drafting and negotiation.

Education

  • University of Pittsburgh: Bachelor of Arts, English, with honors, 1993;
  • Duke University: Juris Doctor, cum laude, 1996.


Chris Nadan is SVP & General Counsel of Actian Corporation, a leader in Data Management, Integration and Big Data Analytics software offered both in the cloud and on-premise. He heads the legal department and is responsible for all legal affairs for Actian (formerly Ingres Corp.).

Mr. Nadan was formerly Senior Director and Deputy General Counsel for Sun Microsystems, Inc., heading the legal group responsible for supporting Sun software.

In addition, Mr. Nadan has been an adjunct professor of law at the U.C. Berkeley Boalt Hall School of Law for 17 years teaching a course on intellectual property transactions.

Mr. Nadan is also a co-author of the Common Development & Distribution License (CDDL), an open source license certified by the Open Source Initiative.

Before joining Sun, Mr. Nadan was an attorney at Farella, Braun & Martel in San Francisco where his practice included IP litigation and client counseling for high technology companies. Mr. Nadan received his undergraduate degree from Stanford University and his J.D. from U.C. Berkeley Boalt Hall School of Law.


David Almeling is a partner of O’Melveny & Myers LLP, where focuses his practice on both patent and trade secret litigation. He is also a leader in those fields. David was profiled in The National Law Journal’s inaugural list of “Intellectual Property Trailblazers & Pioneers,” which highlights 50 of the top intellectual property lawyers across the country “who are raising the bar in intellectual property law.” David is recognized as a leading attorney in the IAM Patent 1000, which describes him as an “up-and-coming star” who “gets great results,” and a “trade secret authority.” Legal 500 identifies David as one of the “key figures in the trade secrets space.” David is currently working on the third edition of his book, Trade Secret Law and Corporate Strategy, which will be published by Lexis/Nexis in 2018.

David has been successful in every stage of litigation, from securing fast and favorable results through early motion practice to winning jury trials (in both patent and trade secret cases) to preserving victories on appeal. Clients also entrust David with a wide variety of non-litigation tasks, from conducting pre-filing patent analysis to investigating alleged trade secret theft to advising companies regarding employee mobility issues. He has also represented clients at the U.S. Patent & Trademark Office (“PTO”), including serving as first chair at several Inter Partes Review hearings.


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


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

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

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


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

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


Tessa Schwartz has an active practice counseling companies on intellectual property issues, and negotiating complex intellectual property and commercial agreements. She advises on a range of strategic transactions, including key patent licenses and acquisitions, technology procurement agreements, and complex development, collaboration, joint-venture and distribution deals. Ms. Schwartz also regularly advises companies on the IP aspects of their M&A transactions.

In addition to maintaining an active practice and working with clients on a daily basis, Ms. Schwartz currently serves as a firmwide managing partner.

Ms. Schwartz advises clients primarily in technology and data intensive sectors, representing software, SaaS, cloud computing, hardware, consumer electronics and products, social media, Internet, mobility and wireless, e-commerce, advertising, healthcare, fintech, transportation, semiconductor, and other companies. Ms. Schwartz’s M&A experience includes advising companies on the IP aspects of strategic transactions. She also focuses on matters related to energy-efficiency, renewable-energy, and sustainability. 

Ms. Schwartz provides clients with prelitigation and litigation advice. She frequently advises executives and senior management on strategic business, legal and commercial issues, including the structuring of transactions, risk management and contract compliance. She also counsels clients with respect to a wide variety of IP issues, including patent exhaustion and implied licenses, standing and standards, the protection of data and other trade secrets and the development and distribution of open-source software.

In addition to her transactional expertise, Ms. Schwartz’s litigation background includes representing clients in arbitration, as well as in state and federal courts in such areas as antitrust, false advertising, unfair competition, breach of contract, securities, trademark, copyright and trade secret law. Her litigation experience includes complex, multidistrict and class action litigation, as well as appellate advocacy.

Ms. Schwartz’s pro bono efforts have included work for The Biomimicry Institute, Goodwill, Common Sense Media, Business for Social Responsibility, The World Wildlife Fund, Build Change and the Sustainability Accounting Standards Board (SASB). She also provides IP advice to a variety of cultural, media and arts organizations; and other assistance for nonprofits. She recently received the Wiley W. Manuel Award for Pro Bono Legal Services from the State Bar of California.

Ms. Schwartz received her B.A. magna cum laude from Harvard College in 1991. In 1996, she earned her J.D. from the University of California at Los Angeles, where she was elected to the Order of the Coif.