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Understanding the Intellectual Property License 2013


Speaker(s): A. Clifford Allen, Alan Stern, Bryan Thompson, Cydney A. Tune, Daniel Burns, David S. Bloch, James G. McEwen, Jose A. Esteves, Joseph Yang, Karen Y. Spencer, Kristina Dinerman Cooper, Lillian Stenfeldt, Matthew K. Miller, Merri A. Baldwin, Robert Stankey, Sally M. Abel, Valerie Alabanza-Cary
Recorded on: Dec. 9, 2013
PLI Program #: 42638

Alan Stern is Senior Corporate Counsel at Cisco Systems, where he supports Corporate Development and M&A, and leads Open Source due diligence for Cisco's numerous acquisitions. As a member of Cisco's Open Source Review Board, Alan has led a number of initiatives to develop policies and processes for bringing Open Source software into the company. Last year, he was the recipient of Cisco's Pioneer Award, recognizing the development of IP Central, an innovative tool for vetting Open Source technology.  

Prior to joining Cisco, Alan spent six years at Sun Microsystems, where he helped develop the company's open source tools and advised on the company's release of the Java Virtual Machine under the GPL. Before going in-house, he spent several years as an intellectual property and first amendment litigator with the firm of Holland & Hart in Denver.

In his pre-law life, Alan was a film and theater critic for the Boston Phoenix and the Denver Post.


James McEwen is a Senior IP Attorney at Sikorsky Aircraft. Until recently, he was a partner at Stein McEwen, LLP in Washington D.C. Mr. McEwen has worked on intellectual property licensing with private parties and the Federal government. During his career, he has also worked in the Office of Counsel for Naval Surface Warfare Center, Carderock Division; and the Office of Counsel for Naval Air Systems Command.

Mr. McEwen is an author and lecturer of numerous articles on various intellectual property and licensing topics, and is most recently a coauthor of INTELLECTUAL PROPERTY IN GOVERNMENT CONTRACTS: PROTECTING AND ENFORCING IP AT THE STATE AND FEDERAL LEVEL.


Robert F. Stankey

Primary Areas of Practice: Technology Licensing; Data Protection & Electronic Communications Regulatory Law

Graduate School

  • University of Virginia School of Law
  • Darden School of Business


Work History

  • Deputy General Counsel, AOL Europe
  • Reed Smith Richards Butler LLP (London)
  • Covington & Burling LLP (London)


Professional Memberships
: Law Society of England & Wales
 


Valerie S. Alabanza-Cary
IP & Patent Counsel Director

Primary Areas of Practice:

  • Technology Transactions, IP Licensing, Open Source


Graduate School

  • Bachelor of Arts, Political Science, 1995, cum laude, Boston College (Minor, Russian & Eastern European Studies)
  • JD/MBA , 2000, Santa Clara University School of Law, Santa Clara University Leavey School of Business (Concentration in Marketing Management)

Work History:

  • 2010-present, IP Patent & Counsel Director, Juniper Networks, Inc.
  • 2009-2010, IP Transactions Counsel, SAP
  • 2007-2009, Assistant General Counsel, Sun Microsystems, Inc.
  • 2004-2007, Senior Counsel, Sun Microsystems, Inc.
  • 2003-2004, Counsel, Sun Microsystems, Inc.
  • 2002-2003, Sr. Contracts Manager, Synopsys
  • 1997-2001, Contractor, Intern, Sun Microsystems, Inc.


Professional Memberships
:

  • State Bar of California
  • U.S. District for the Northern District of California
  • Asian Pacific American Bar Association of Silicon Valley (APABA-SV), Board Member & In-House Committee Co-chair, 2010-2012


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


Bryan Thompson is special counsel-corporate and entertainment in Barnes & Thornburg’s Los Angeles office. With a particular focus on television and digital matters, Mr. Thompson advises clients on transactional matters.

Prior to joining Barnes & Thornburg, Bryan was senior vice president of business and legal affairs for Fox Networks Group, where he served as the head of business affairs for The Jackal Group, a Fox studio. Bryan also has previous in-house experience with Yahoo! Inc., where he was counsel for the sports, entertainment, video game, and marketing departments.

Bryan is a graduate of the University of Texas and the University of North Carolina School of Law.  He lives in Los Angeles but desperately holds on to his Louisiana roots.


Cliff Allen is a Senior Attorney at Microsoft. 

He is a lead attorney in developing Microsoft's open source policy and compliance processes. He provided the legal workflow for Microsoft’s Open Source Tool which registers over 150,000 uses of Open Source per month and automatically processes 99.7% of those registrations.

Cliff has provided guidance on open source issues for over 20 years.

He is the recipient of numerous awards, including Microsoft’s Growth Mindset –Digital Transformation award, as well as the Excellence in Innovation and Excellence in Collaboration awards.


Cydney Tune is Senior Counsel at Pillsbury's San Francisco office, and leads the firm's Copyrights practice and Media & Entertainment industry team.  Her practice includes a wide variety of intellectual property issues, including copyrights and trademarks, as well as a broad array of entertainment, licensing, E-Commerce and rights enforcement matters.  She represents a variety of clients—large and small, domestic and foreign, and in many different industries.

The Daily Journal named Ms. Tune one of 2008's Top 10 Copyright Lawyers in California and listed her among California's top "25 licensing specialists" in 2010.  She is regularly voted by her peers as among the Best Lawyers in America in the Entertainment Law and Media Law categories.  She has also been named a “Super Lawyer” in intellectual property.  She is a frequent speaker and author on topics pertaining to intellectual property, licensing and the convergence of entertainment and technology.

Affiliations
- Past Vice Chair, ABA Forum on the Entertainment and Sports Industries, and Immediate Past Chair of the Licensing, Branding and Merchandise Division for that organization
- Past Chair, Copyright Interest Group, State Bar of California IP Section, former Executive Committee member
- Editorial Board, International Entertainment Law Journal
- Advisory Board, Copyright World 
- Advisory Board, Internet Law & Strategy
- Executive Committee and Northern California Chapter Chair, Emeritus, Copyright Society of the U.S.A.


David S. Bloch is an intellectual property litigator focused on helping clients understand the complex technical and legal issues that their businesses face. David litigates patent infringement, trademark, and trade secrets cases for clients in the financial services, technology (networking), health care, and pharmaceutical industries. A prolific writer, David is the author of IP and Technology in Government Contracts (now in its fourth edition) and many articles on IP-related issues.


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.


Kristina Dinerman Cooper is a Founder, Vice-President and General Counsel of Taap Development Inc., a technology company which is soon to launch the TaapMe app which allows users to location lock and time lock compelling content experiences, dynamic offers and more.  She is a former Vice-President of Business Development and Associate General Counsel at Yahoo, where she oversaw the international business development team and the media and technology legal team responsible for consumer media products.  She has extensive experience in licensing, entertainment, and technology.   Kristina holds a patent in the video content area, “Method and System of Unauthorized Content Detection and Reporting.”  Kristina has been a member of the Practicing Law Institute Faculty since 2012 and teaches “Rights of Publicity and Entertainment Licensing.”  Prior to Yahoo, she was part of the business development team at Alta Vista Company, a Director of Business and Legal Affairs at Fox Entertainment Company, and an Associate at Paul, Hastings, Janofsky and Walker in Los Angeles.  She is also currently a consultant in business development, strategy and legal for clients with digital and consumer offerings, including Discovery and Mattel.


Primary Areas of Practice:  patent licensing, strategic intellectual property acquisitions, technology transactions

Education:

Boston University School of Law, 2000
Univ. of Pennsylvania, 1995, B.S. Chem. Eng.

Work History:                   

Samsung Electronics, 2014-present
Morgan, Lewis & Bockius LLP, 2012-2014
Rambus Inc., 2010-2012
Morgan, Lewis & Bockius LLP, 2003-2010
Brobeck, Phleger & Harrison LLP, 2000-2003


Primary Areas of Practice: Ms. Stenfeldt is a Partner in the Bankruptcy Department at Rimon. She works on complex intellectual property issues in bankruptcy cases and represents international technology and other clients on the various aspects of licensing and bankruptcy law.  She assists clients in purchasing intellectual property assets from financially challenged companies, both in and out of bankruptcy cases. She also assists companies in efficiently structuring business transactions and licenses to prevent losses and protect assets due to potential future insolvencies of others.

She was named “Best Bankruptcy Lawyer,” “Best Bankruptcy Litigator” and a “Super Lawyer” again this year. She was recognized as one of 40 “Women Leaders in the Law” in California by The Recorder. She frequently lectures on a wide variety of bankruptcy related topics, including selected topics at the Stanford University Graduate School of Business. Lillian also represents clients throughout the country in all aspects of insolvency and bankruptcy proceedings and strategy. Her clients include secured creditors, hedge funds, creditor’s committees, trustees and receivers. Her clients range from International Fortune 100 companies to start ups.

Lillian earned her BA in Economics, as well as her Master’s Degree in Organizational Behavior, from Stanford University. She received her J.D. from the University of Detroit Mercy Law School, magna cum laude.

Work History:

• Rimon, January 1, 2018-Present

• Sedgwick LLP, 2003-2017

• Gray Cary, formerly known as Ware & Freidenrich, now known as DLA Piper, 1994-2003

• Bronson, Bronson & McKinnon, 1982-1994

• General Motors Legal Staff, 1980-1982

Professional Memberships:

• Director, Bay Area Bankruptcy Form

• Past Board of Director, International Turnaround Management Association;

• American Bankruptcy Institute

• International Association of Insolvency Professionals

• International Women’s Insolvency Association


Sally Abel is Chair of Fenwick & West’s Trademark Group, focusing her practice on international trademark and trade name counseling, including the development and management of international trademark portfolios and trademark rights online.

Sally is ranked the top trademark lawyer in the United States in Who’s Who Legal Trademarks 2015. She has repeatedly won other international, national, state and Silicon Valley accolades including:  

  • Managing Intellectual Property IP STAR and The Top 250 Women in IP (2014-2017)
  • The National Law Journal: Intellectual Property Trailblazers & Pioneers (2014)
  • World Trademark Review 1000: One of the top 7 trademark practitioners in the US (Gold ranking 2012-2017)
  • Chambers USA and Chambers Global: Band 1 (2007, 2009-2017)
  • Euromoney’s Best of the Best Expert Guide 2017: One of the Top 30 Trademarks Practitioners Worldwide and top 3 in the U.S.
  • The International Who’s Who of Trademark Lawyers: Among the world’s leading trademark lawyers.(2002-2017)Currently ranked among North America’s top 10 trademark thought leaders
  • Chambers USA Women in Law Awards: One of the top 12 women IP lawyers in the US (2012)
  • Legal Media Group’s Guide to the World’s Leading Women in Business Law (2010-2012. 2015-2016)
  • The Recorder: Women Leaders in Tech Law (2013-2015)
  • San Francisco Business Times: Most Influential Women in Business (2013)

Sally was a pioneer in the international debate over trademark rights on the Internet, including serving as INTA’s representative on the 11-member International Ad Hoc Committee (IAHC), the international body organized by the Internet Society, to restructure the domain name system. At the invitation of the World Intellectual Property Organization (WIPO), Sally also participated in WIPO’s First Meeting of Consultants on Trademarks and Internet Domain Names held in Geneva in February, 1997. Through WIPO and the National Arbitration Forum, she has served as a neutral panelist in over 60 domain name disputes brought under ICANN’s UDRP system.

Sally was a member of the INTA Board of Directors from 1998 to 2000. She chaired INTA’s Internet Subcommittee for two years, developed and chaired INTA’s Enforcement Committee, and currently serves on INTA’s Amicus Committee. She teaches trademark law annually at an IP conference for federal court judges and teaches international trademark law at Boalt Hall School of Law (Berkeley Law).


Karen has over 25 years of experience counseling clients on patent strategy, patent portfolio management, trade secrets and litigation issues. Karen currently consults and is on the board start-up companies. Previously, Karen formed and led Nike, Inc’s Intellectual Property Transactions & Licensing function.  Additionally, Karen was Nike Golf’s counsel for 9 years, advising on a gamut of global general counseling and intellectual property matters. Karen also served as Nike’s Global Patents Counsel, leading Nike’s utility and design patent prosecution teams. She led patent, trade dress, and trade secrets litigation for Nike and the strategic planning efforts for Nike Golf, Nike Legal and the Nike Patents team. Prior to joining Nike in 2000, Karen was a partner in the Silicon Valley office of Brobeck, Phleger & Harrison and an associate at Heller, Ehrman, White & McAuliffe in San Francisco, focusing on IP litigation and counseling.

Karen is a 2011 recipient of the Portland Business Journal’s Orchid Award, their highest honor of achievement for Women of Influence.  Karen received her Master of Science in Management from Stanford University’s Graduate School of Business and her J.D. from Harvard Law School. Karen is a registered patent attorney, receiving her B.S. from Massachusetts Institute of Technology in Chemical Engineering. She is a member of the California and Oregon state bars and the Patent bar.


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.


Jose A. Esteves focuses on assisting clients in maximizing the value of their intellectual property and technology assets, including through strategic stand-alone transactions such as collaborations, joint ventures, cloud/outsourcing arrangements and other complex technology transactions; stand-alone and mergers-and-acquisitions-related development, licensing, supply, marketing and support arrangements; and IP monetization and financing transactions. Mr. Esteves also counsels clients on IP, technology and data legal and commercial issues, including with respect to privacy, cybersecurity and emerging issues in big data, artificial intelligence/analytics, internet of things and other key technologies, including in fintech, health care and autonomous vehicles. Mr. Esteves advises a diverse group of clients from the U.S. and abroad, including Europe, Asia and South America. Mr. Esteves also handles intellectual property and technology aspects of traditional mergers and acquisitions, financings, public offerings and commercial transactions. Intellectual Asset Management magazine, the leading trade publication focused on IP monetization, includes Mr. Esteves on its list of the “IAM Strategy 300 — The World’s Leading IP Strategists.”