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Intellectual Property Law Institute 2013


Speaker(s): Amy L. Toro, Andrew P. Bridges, Anne Hiaring Hocking, Charan J. Sandhu, Dana W. Hayter, Daryl W. Fairbairn, David Bender, Helen Hill Minsker, I. Neel Chatterjee, Jean I. Liu, Jennifer Sklenar, Jon E. Wright, Karen Frank, Lateef Mtima, Marta Y. Beckwith, Merri A. Baldwin, Niklas Ostman, Philip S. Warden, Raymond T. Nimmer, Robert Greene Sterne, Robert P. Taylor, Steve Bené, Victoria A. Cundiff, William Sloan Coats
Recorded on: Oct. 7, 2013
PLI Program #: 42610

Merri Baldwin is a shareholder at Rogers Joseph O’Donnell, 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 the 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 is the President-Elect of the Bar Association of San Francisco for 2016.  Ms. Baldwin frequently lectures to attorneys and professional organizations on issues related to litigation, legal malpractice and ethics issues, and she is an adjunct professor at the University of California at Berkeley School of Law.  Ms. Baldwin co-edited The Law of Lawyers’ Liability (ABA/First Chair Press 2012) and since 2006 she 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


Mr. Wright chairs the firm’s appellate practice, and co-chairs its PTO litigation practice. He focuses primarily on contested proceedings before the USPTO’s Patent Trial and Appeal Board, and on appeals of those cases to the United States Court of Appeals for the Federal Circuit. He is a recognized leader in inter partes review practice where there is co- pending district court litigation or a USITC investigation. He is familiar with the challenges faced by both patent owners and petitioners in these complex proceedings, often working closely with trial counsel as part of an inter-disciplinary team.

Mr. Wright has been lead or back-up counsel in over sixty inter partes review (IPR) proceedings, mostly on behalf of patent owners. In one of the earliest success stories for patent owners, Mr. Wright successfully defended a set of four IPRs, securing confirmation of all challenged  claims in the digital rights management space. More recently, Mr. Wright secured key non-institution decisions in four IPRs on two patents for a Fortune 500 IT company, and in two IPRs on one patent for an innovator medical device company.

The involved technologies in Mr. Wright's IPR cases include semiconductor design and fabrication, digital rights management, RFID, computer networking, optical switches, medical devices, and stray voltage detection technologies. Prior to the new AIA proceedings, Mr. Wright represented patent owners in over fifty inter partes and ex parte reexaminations involving concurrent district court or USITC proceedings.

Mr. Wright also has extensive appellate experience at the U.S. Court of Appeals for the Federal Circuit. Prior to joining Sterne Kessler, Mr. Wright clerked at the Federal Circuit for the Honorable Alvin A. Schall. He has been either lead counsel or second chair in over a dozen appeals to the Federal Circuit. Mr. Wright recently secured affirmance of a PTAB decision for a Fortune 500 global communications company.

Mr. Wright is also an editor of Patent Office Litigation, a two-volume set focused on the new contested proceedings under the America Invents Act published in 2012 by Thomson Reuters Westlaw. This book examines how the proceedings interact with other aspects of patent procurement and enforcement, and delivers practical analysis and advice.

Prior to focusing on contested proceedings, Mr. Wright had extensive experience in the preparation and prosecution of patent applications before the USPTO in technologies ranging from software, hardware (analog and digital), communications, wireless devices and systems, networking, database management, computer memory devices, semiconductor manufacturing, computer graphics and electrical power systems including nuclear technology.

While at George Mason University School of Law, Mr. Wright was the Managing Editor of the George Mason Law Review. Before law school,  Mr. Wright was a Lieutenant in the U.S. Navy Submarine Force. His tour included three years on the nuclear powered fast attack submarine USS TAUTOG (SSN 639), and two years with COMSUBGRU 7 in Yokosuka, Japan. In addition to being a qualified Naval Nuclear Engineer, Mr. Wright also has private industry experience where he worked in semiconductor manufacturing for industry leader International Business Machines.

Representative Matters

Inter Partes Reviews

Inter partes review of U.S. Patent No. 7,225,160 (IPR2013-00134) – secured confirmation of asserted claims at trial initiation phase.

Inter partes review of U.S. Patent No. 6,058,045 (IPR2014-00113) – secured non-institution decision.

Inter partes review of U.S. Patent No. 8,359,102 (IPR2015-01203, -01204) – secured non-institution decisions for innovator medical device company.

Inter partes review of U.S. Patent Nos. 6,377, 577 (IPR2015-00973) – secured non-institution decisions for Fortune 500 IT company.

Inter partes review of U.S. Patent No. 7,724,879 (IPR2013-00296) – secured cancellation of all challenged claims for Fortune 500 global communications company.

Federal Circuit Appellate Litigation

AIP Acquisition LLC v. Level 3 Communications: Appeal from the Patent Trial and Appeal Board.

K/S HIMPP v. Hear-Wear Techs., LLC: Appeal from the Patent Trial and Appeal Board

In re Jung: Appeal from the Board of Patent Appeals and Interferences dealing with prima facie anticipation.

Taurus IP, LLC v. DaimlerChrysler Corp. et al: Patent enforcement action on behalf of Taurus IP, LLC. Orion IP, LLC v. Hyundai Motor America: Patent enforcement action on behalf of Orion IP.

Medtronic Inc. v. Guidant Corp.: Patent infringement defense for Medtronic in an appeal related to cardiac pacemakers.

Floyd M. Minks v. Polaris Indus. Inc.: Patent infringement defense for Polaris in an appeal related to speed limiting circuits for All Terrain Vehicles.

District Court Litigation

Fresenius Medical Care Holdings, Inc. (FMC) v. Paddock Laboratories, Inc.: ANDA litigation. (District of Massachusetts)

JuxtaComm Technologies, Inc. v. Ascential Software Corp.: Patent infringement defense for Sybase Inc., relating to software for transforming and exchanging data between distributed, heterogeneous computer systems. (Eastern District of Texas)

FuzzySharp Technologies Inc. v. ATI Inc.: Patent infringement defense for ATI relating to advanced computer graphics processing methods and procedures. (Northern District of California)

Stream Theory v. Exent Technologies Inc.: Patent infringement defense for Exent relating to streaming applications over the internet. (Central District of California)

Reexamination

Reexam of U.S. Patent No. 6,470,405 entitled “Protocol for Communication with Dynamic Memory” on behalf of patent owner. (Control No. 95/001,178)

Reexam of U.S. Patent No. 7,360,050 entitled “Integrated Circuit Memory Device Having Delayed Write Capability” on behalf of patent owner. (Control No. 95/001,201)

Reexam of U.S. Patent No. U.S. Patent No. 90/009,403 entitled "Discrete-Time Sampling of Data for Use in Switching Regulators" on behalf of patent owner. (Control No. 90/009,403)

Reexam of U.S. Patent No. 5,774,670 entitled "Persistent Client State in a Hypertext Transfer Protocol Based Client-Server System" on behalf of third party requester. (Control No. 90/011,106)

Reexam of U.S. Patent No. 5,490,216 entitled "System for Software Registration" on behalf of patent owner. (Control No. 90/010,831)

Admissions

District of Columbia

United States Patent and Trademark Office

Virginia

Court of Appeals for the Federal Circuit

Federal District Court for the District of Columbia

Education

J.D., George Mason University magna cum laude

B.S., Electrical Engineering, University of Vermont


Andrew Bridges represents innovators and their companies in a wide variety of important matters typically involving new technologies or business models, often when a company’s or an entire industry’s future is at stake.  His practice includes complex litigation, high-stakes counseling, and policy advice in Internet, copyright, trademark, advertising, unfair competition, consumer protection, and commercial law matters.  He advises entrepreneurs and companies that develop or promote new products, technologies, or business models in the face of potential legal challenges.  In addition, he has advised many important Internet and technology companies on their branding and trademark portfolios as well as litigating their rights.

Among his major litigation successes are:

  • Defending Diamond Multimedia in RIAA v. Diamond Multimedia (challenge to MP3 players)
  • Defending Google in Perfect 10 v. Google (Amazon.com)(challenge to search engine)
  • Defending MasterCard in Perfect 10 v. VISA and MasterCard (challenge to payment processing for alleged infringers)
  • Defending ClearPlay in Huntsman v. Soderbergh (challenge to DVD replay filtering software)
  • Enforcing Bare Escentuals’ rights against Intelligent Beauty (trademark and false advertising)
  • Representing Richard O’Dwyer (UK university student) in avoiding extradition from UK and prosecution in US for operating linking site
  • Representing owner of dajaz1.com in recovering domain after seizure by Homeland Security in Operation In Our Sites
  • Defending Giganews in Perfect 10 v. Giganews (challenge to Usenet service provider; obtained award of $5.6 million in attorneys’ fees for prevailing defendants)

He has authored several important amicus curiae briefs, including representation of eBay, Facebook, IAC/InterActiveCorp, and Yahoo! in Viacom v. YouTube (2d Cir.) and 11 Internet companies in Garcia v. Google (9th Cir.).

Honors and Accolades

  • California State Bar Intellectual Property Section Vanguard Award winner (private practice category), 2014
  • LA and SF Daily Journal, Top 100 Lawyers in California (2008); Top100 IP Lawyers/Litigators in California (2008-2014)
  • Chambers USA, frequently Band 1 or 2 in Trademark, Copyright, and Trade Secrets, California; Chambers Global
  • World Trademark Review WTR1000, Band 1 in Trademark Litigation – California
  • Legal Media Group “Best of the Best” in Trademark Law
  • Best Lawyers in America (IP Lit., Copyright, Trademark) 

Education

  • Harvard Law School, J.D. cum laude 1983
  • University of Oxford (Merton College), B.A. in philosophy and ancient history, 1980; M.A., 1985
  • Stanford University, A.B. in Greek and Latin with distinction, Phi Beta Kappa, 1976

Positions and Memberships

  • Early Neutral Evaluator, U.S. District Court, N.D. Cal.
  • WIPO Domain Name Arbitrator
  • Member of Advisory Board, Electronic Frontier Foundation
  • Law Clerk to Hon. Marvin H. Shoob, U.S. District Court for the Northern District of Georgia (1983-85)
  • Active in numerous organizations, including:
    • Copyright Society of the USA
    • International Trademark Association
    • International Technology Law Association
    • Media Law Resource Center
    • American Intellectual Property Law Association
    • American Bar Association
    • Federal Bar Association
    • International Bar Association
    • American Society for International Law
    • Association of Business Trial Lawyers
    • United States Council for International Business
    • Digital Economy and Intellectual Property Commissions, International Chamber of Commerce
    • Business and Industry Advisory Committee to OECD
  • Trustee, American School of Classical Studies at Athens


Amy Toro specializes in technology transactions, with particular emphasis on life science arrangements, such as collaboration and license agreements. Her clients include pharmaceutical companies, biotechnology clients and other technology companies. 

Law School:  Berkeley School of Law / University of California


Anne Hiaring Hocking has specialized in trademark and copyright law since 1981.  She is Adjunct Professor of Trademark, Copyright, and International Intellectual Property Law at Golden Gate University in San Francisco, California and Bangkok, Thailand.  She has chaired numerous programs on Intellectual Property law topics, and has served as President of the San Francisco Intellectual Property Law Association and Chair of the State Bar of California Intellectual Property Law Section. She has spoken and moderated numerous International Trademark Law Association and Practicing Law Institute programs.  She has written for AmJur on copyright and trademark law topics, as well as presented numerous papers.

After working at two large firms, she was the IP rights attorney for Pacific Telesis for five years, where she was responsible for all aspects of domestic and international trademark filing and enforcement, and all copyright and trade secret procedures. In 1990 she founded her own firm, Hiaring + Smith LLP, which merged with Donahue Fitzgerald LLP in 2015.

Selected Publications

“Selected Liability Issues: Social Networks and Blogs” The computer & Internet Lawyer, (Vol. 26, January 2009)

“Does Information Really Want to be Free?” Gothenburg Film Festival, 2006

“What’s New in the Neighborhood – The Export of the DMCA in PostTRIPS FTA’s” Golden Gate University International & Comparative Law Journal (2005)

Fair Use And TRIPS: Too Much of a Good Thing?”, Copyright Law Society of the U.S. January Midwinter Meeting 2004

Selected Speaking Engagements

PLI, Intellectual Property Law Institute, various years

Selected Liability Issues, Social Networks and Blogs (2008)
Navigating Trademark Trial and Appeal Board Practice (2000)
INTA TTAB Practice for Novices Forum (2000)

Insight Information, “Sixth Complete Course on Negotiating and Drafting Licensing Agreements: Maximize the Value of Your Intellectual Property Assets” (2000)

PLI, Program Chair, “Understanding Basic Trademark Law” (1994-2008)

International Trademark Law Association, Panel Moderator for Hospitality Industry Issues (1999)

Panelist, Work for Hire Seminar, Law Seminars Institute (1999)

Sunnyvale Center for Innovation, Invention and Ideas, Washington & the West Seminar (1998, 1996, 1994)

“Geographic Misdescriptiveness”; PLI’s Fourth Annual Institute for Intellectual Property Law (1999) 

Practice Areas

Intellectual Property

Admissions

State Bar of California

Education

L.L.M. in International Law, Golden Gate University, 2006

J.D., University of California, Hastings College of the Law, San Francisco, California, 1979

B.A., Reed College, Portland, Oregon, 1973, Phi Beta Kappa

Freie Universitaet, Berlin, Germany, 1971–72; 1974–1975

Albrecht-Ludwigs Universitaet, Freiburg, Germany, 1970–1971

Affiliations

Past Chair, State Bar of California Intellectual Property Section

Past Chair, State Bar Council of Section Chairs

President, San Francisco Intellectual Property Law Association (1994-95)

President, San Francisco Bar Association Barristers Club (1986)

Editor, Northern District Digest

Board Member, San Francisco Neighborhood Legal Aid

Composers Inc.

California Contemporary Craft Association

Mayor’s Advisory Council on Childcare for the City and County of San Francisco

Panel Member, Bay Area Lawyers for the Arts


Dana Hayter has been responsible for various aspects of Intel's Intellectual Property work since 2004. As part of these duties, he has personally handled or directed the conduct of numerous patent licensing, cross-licensing, litigation settlement and acquisition matters, including Intel's 2009 settlement agreements with Advanced Micro Devices, Inc., Intel's participation in Nortel's bankruptcy auction and Intel's 2012 acquisition of patents from InterDigital, Inc.

Mr. Hayter has extensive experience in all legal and business aspects of mission-critical, high-visibility IP licensing and other complex transactions (including related financial and econometric analysis), billions of dollars in closed deals and a consistent record of direct client counseling at the highest levels of public and private clients.

Before joining Intel, Dana was Of Counsel and Senior Counsel at two Bay Area-based, national law firms focused on advising technology industry clients and served as a Trial Attorney at the US Department of Justice's Antitrust Division.


Daryl Fairbairn

Primary Areas of Practice: Intellectual property, M&A/corporate

Work History: 2000-present, Clifford Chance offices in New York, Dusseldorf and Silicon Valley

Daryl is a counsel in the Corporate Group of the New York office of Clifford Chance where he recently returned from practicing in the firm's global healthcare and life sciences group in Düsseldorf Germany for five years. He advises life sciences and technology companies in cross-border intellectual property-driven transactions, including strategic M&A, joint ventures, complex licensing and collaborative arrangements, and other commercial transactions dealing with product R&D, supply, manufacturing and development.

Prior to graduating from Columbia Law School, Daryl joined the firm as a scientific consultant after earning a Ph.D. in microbiology from Brigham Young University and conducting postdoctoral research in immunogenetics at the University of Illinois at Champaign-Urbana.

Daryl is admitted to practice in New York, California and before the US Patent and Trademark Office.


David Bender is an Adjunct Professor at the University of Houston Law Center.  He spent the majority of his career at White & Case, where he founded the IP practice, and later headed the global privacy practice.  Before that, he practiced at AT&T, and for several years was responsible for all IP litigation brought by or against any Bell System company.  He is a member of the International Technology Law Association (President, 1999-2000).  Before turning to the law, he was an engineer with the Ford Motor Company’s aerospace division, and a mathematician with Hughes Aircraft.

Mr. Bender is the author of Computer Law (LexisNexis), presently in Release #67, and of Bender on Privacy (LexisNexis 2015), and numerous law review articles.  He has made over 250 conference presentations across the United States and in some 19 other nations.


Jennifer Sklenar is a partner in the firm's intellectual property practice group. She focuses her practice on patent litigation and counseling, particularly in the medical device, biotech, computer hardware, software, and networking-related fields. She has managed all aspects of litigation and has significant in-court experience. In addition, Ms. Sklenar has experience drafting and negotiating license agreements and has counseled clients on intellectual property matters for corporate transactions.

Ms. Sklenar has been recognized as a Southern California Super Lawyer. 

Representative Matters

  • Google. Serves as counsel in pending patent litigation involving cloud-based and networking applications.
  • Hologic. Serves as counsel in pending patent litigation against Enzo involving labeled nucleic acids.
  • Hologic. Serves as counsel in pending patent litigation against Smith & Nephew involving intrauterine tissue removal technology.

Articles

  • Jennifer Sklenar "Q&A With Arnold & Porter's Jennifer Sklenar" Intellectual Property Law 360, April 8, 2013

Presentations

  • Jennifer Sklenar, Michael A. Berta, Wallace Wu PhD and Denise L. McKenzie "IP/Technology Year in Review: Patent Law Program" Arnold & Porter LLP, San Francisco, CA, January 29, 2014
  • Jennifer Sklenar "Effect of the AIA on District Court Litigation" Practicing Law Institute, San Francisco, CA, October 21, 2013

Practice Areas

Intellectual Property

Education

JD, with distinction, Hofstra University School of Law, 1994
BS in Biomedical Engineering, Northwestern University, 1991

Admissions

California
New York
US District Court for the Central District of California
US District Court for the Southern District of California
US District Court for the Northern District of California
US District Court for the Eastern District of New York
US District Court for the Southern District of New York
US District Court for the Western District of New York
US District Court for the Northern District of Texas
US Court of Appeals for the Federal Circuit
US Patent and Trademark Office


 


Karen Frank’s practice covers virtually every aspect of intellectual property, including copyright, trademark, domain names, unfair competition, right of publicity, branding and advertising, privacy and the Internet. She represents clients in a diverse range of industries, including finance, advertising, technology, food, wine, luxury goods, fashion, music, entertainment, education, and more.

Her practice focuses on licensing and services agreements, print and electronic publishing agreements, intellectual property counseling, clearance and enforcement, content acquisition and performance issues, advertising clearance, and rights and privacy issues relating to websites and the Internet. 

Notable Representations

  • Representation of a major science and natural history museum in rights clearance issues in exhibits, planetariums productions and content licensing agreements
  • Negotiation of publishing agreements for authors and illustrators
  • Representation of a major music performing rights organization in its Northern California enforcement activities
  • Negotiation of services agreements for advertising and communications agencies
  • Negotiation of a range of content licensing agreements, for print, music, and video content
  • Representation of a range of food and beverage companies for distribution agreements, co-pack agreements, advertising and trademark licensing
  • Design and management of digital asset management projects
  • Review and clearance of content and advertising claims for advertising agencies and their clients
  • Review and advice on IP, privacy and other compliance issues for social media advertising campaigns
  • Review and advice regarding contests and sweepstakes
  • IP and business advice and counseling for fashion companies, including enforcement of proprietary designs and images
  • Representation of social entrepreneurial ventures in general business activities, advertising activities and commercial co-venturing projects
  • Management of international trademark portfolios and enforcement of trademark rights

Publications & Speaking Engagements

  • "Fashion Rules! (And Laws),” Golden Gate University Intellectual Property Law Institute (February 2015)
  • "Trademark Law Update,” Intellectual Property Law Institute (October 2014)
  • "Social Media, Fair Use & The Fashion Industry,” Hastings College of the Law Fashion, Art & Design Law Society, Fashion Law Symposium (February 2014)
  • "Illegal Instagram: Fair Use and Photography," Hastings College of the Law (January 2014)
  • "Trademark Law Update," Intellectual Property Law Institute (October 2013)
  • "Trademark Law Update," Intellectual Property Law Institute (September 2012)
  • "Copyright Basics, Practice Pointers and Hot Spots in Social Media and Advertising," State Bar of California Tele-Seminar (July, 2012)
  • "Creating and Managing Brand Content on the Web," ALI-ABA Museum Administrators Conference (March, 2012)
  • "Trademark Hot Topics 2011," PLI Intellectual Property Institute (October, 2011)
  • "Trademark Pre-Litigation Checklist: Getting Your Ducks in a Row," PLI Intellectual Property Institute (October, 2010)
  • “IP Rights in Fashion," San Francisco Intellectual Property Law Institute (May, 2010)

Honors & Awards

Karen has been named a Top 250 Women in IP by Managing Intellectual Property Magazine. She is listed in The Best Lawyers in America in the Intellectual Property Litigation category. She is recognized as a Northern California SuperLawyer, and is a Martindale Hubbell AV-Rated Attorney.  Karen was selected by her peers for inclusion in the 2007 and 2009 Who's Who Legal: California, Trademarks chapter and is listed in Who's Who in American Law, 2009 and 2010 and Who's Who in America, 2007 – 2012.

Professional Activities

Karen is past president of the Copyright Society of the USA; former chair of the Copyright Society of Northern California; a member of the American Law Institute, and a member of the International Trademark Association.

Karen is an annual member of the faculty for the Practicing Law Institute (PLI) Advanced Intellectual Property Institute and is a frequent speaker on intellectual property issues.

Community

Karen has served on the Boards of Directors of the Lake Tahoe Summerfest, Legal Community Against Violence, the Emeryville Chamber of Commerce, and Friends of Oakland Parks and Recreation. She volunteers with Bay Area YearUp and Foster a Dream.

Education

Karen received her undergraduate degree from Connecticut College and her law degree from the University of California, Hastings School of Law where she was Executive Articles Editor for COMM/ENT Journal of Communications and Entertainment Law.


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).

Professor Mtima is the editor/contributing author of Intellectual Property, Social Justice, and Entrepreneurship: From Swords to Ploughshares (Edward Elgar 2015) and the co-author of Transnational Intellectual Property Law (Xuan-Thao Nguyen and Danielle Conway, co-authors; West Academic 2015). Some of his other publications include The Promise of Information Justice, in Censoring Cyberspace: Regulating Communication on the Internet (Hannibal Travis, Editor, Routledge Publishing 2013); A Social Justice Perspective on IP, Innovation, Entrepreneurship, Innovation and Entrepreneurship, in Entrepreneurship and Innovation in Evolving Economies: The Role of Law (Megan Carpenter, Editor, Edward Elgar 2012); What’s Mine is Mine but What’s Yours is Ours: IP Imperialism, the Right of Publicity, and Intellectual Property Social Justice in the Digital Information Age, 15 S.M.U. Sci. &Tech. L. Rev. 323 (2012); Fulfilling the Copyright Social Justice Promise: Digitizing Textual Information, 55 N.Y.L. Sch. L. Rev. 77 (2010) (quoted in The Authors Guild v. Google Inc., 770 F. Supp. 2d 666, 679, n. 15, (S.D.N.Y. 2011); Copyright Social Utility and Social Justice Interdependence: A Paradigm for Intellectual Property Empowerment and Digital Entrepreneurship, 112 W. Va. L. Rev. 98 (2009); Whom the Gods Would Destroy; Why Congress Prioritized Copyright Protection Over Internet Free Speech and Privacy in Passing the Digital Millennium Copyright Act, 61 Rutgers L. Rev. 627 (2009); So Dark the CON(TU) of Man: The Quest for a Software Derivative Work Right in Section 117,  70 U. Pitt. L. Rev. 1 (2008); and “Tasini and Its Progeny: The New Exclusive Right or Fair Use on the Electronic Publishing Frontier?” 14 Ford. Intell. Prop., Media & Ent. L. J. 369 (2004) (quoted in Greenberg v. National Geographic Society, 533 F.3d 1244, 1264, 1266 (11th Cir. 2008) (dissenting opinion)).


Neel Chatterjee

Primary Areas of Practice
 Patent, Trade Secret, and  Internet Litigation

Law School  J.D., Vanderbilt University
Graduate School  Law School, 1994

Work History  Joined Orrick in 1997

Professional Memberships

State Bar of California; Bar Association of San Francisco, Past Board Member; Intellectual Property Inns of Court; Law Foundation of Silicon Valley, Former President; California Bar Foundation, Past Board Member. 


Niklas Östman is Senior Director of Licensing at Microsoft Corporation. In 1999, he received a degree corresponding to a US J.D. degree from the University of Helsinki in Finland. He is admitted to the Finnish Bar Association. Before joining Microsoft in 2012, he was the Head of Patent Licensing for Nokia Corporation playing a central role in creating the largest patent licensing program ever by a European company, mainly around standard essential patents. Earlier in his career, he has also been a partner at a top Nordic law firm. Regarding patent licensing specifically, he has negotiated hundreds of patent licenses ranging from multi-billion dollar deals to royalty free ones and from those covering one patent only to those covering up to 460.000 patents globally. As to patent litigation, he has been involved in patent lawsuits in the UK, Germany, France, Italy, the Netherlands, Sweden, Finland, Norway, US (TX, VA, CA, WI, DE and US ITC), South Korea, Taiwan as well as in China (Beijing and Shanghai). He has also acted as a trial counsel in patent cases in Finland obtaining several land mark decisions on issues such as the doctrine of equivalence (non-literal infringement), availability of preliminary injunctions and patents for biochemical synthesis routes. As to standard essential patents in particular, he has participated in 100+ lawsuits globally involving essential patents, dozens of patent pools, several anti-trust efforts involving essential patents and also has extensive experience regarding the licensing thereof while having to balance between, on one hand, being the licensor for one of the strongest portfolios in the industry and, on the other hand, being a licensee having to clear IP rights for the sales of up to 500.000.000 cellular devices annually.


Philip Warden focuses on commercial law, and related litigation, the rights of creditors, and controversies involving allegations of unfair business practices.

Mr. Warden was an associate at Meserve, Mumper & Hughes in Los Angeles from 1972-73 in that firm's business litigation department. Prior to that, he served in the United States Navy from 1965-69 in the Weapons Department aboard the U.S.S. New Jersey and was awarded the Secretary of the Navy Commendation Medal with Combat V and Republic of Viet Nam Cross of Gallantry. Mr. Warden attained the rank of Commander in the U.S. Navy Reserve.

From 1973-83, Mr. Warden worked for Dinkelspiel & Dinkelspiel in San Francisco, beginning as an associate and being promoted to partner in 1979.

Mr. Warden represented the indenture trustees for seven municipal bond issues totaling $1,850,000,000 in litigation with the Insurance Commissioner of the State of California in the Executive Life Insurance Company case. In that case, the Commissioner sought to classify the indenture trustees' claims in such a fashion that they would be paid nothing. Mr. Warden was the lead counsel for a team of Pillsbury attorneys and paralegals that successfully pursued declaratory judgment in the Los Angeles Superior Court, which determined that the claims of the indenture trustees are insurance policies and entitled to share whatever dividend insurance policyholders are paid. In other words, the guaranteed investment contracts were classified as insurance products. Mr. Warden's clients have to date been paid approximately $1,700,000,000. Mr. Warden has also been active in numerous lengthy hearings on the Plan of Reorganization in the Executive Life case and successfully argued to the California Court of Appeal that the state insurance commissioner's Plan should be ruled unlawful (Commercial Nat'l Bank in Shreveport v. Superior Court). This is the first time an insurance commissioner's confirmed plan has been rejected by a court of appeal.

Mr. Warden has been involved in significant financial restructuring and insolvencies around the United States and in Asia including Storage Technology Corporations, Daon Corporation, MiniScribe Inc., System Integrators, Inc., Cumberland Farms, Inc., El Paso Refinery, Harbor Bay Isle Associates, CHS Electronics, Inc, MicroAge, Inc., Priam Corporation, First Lenders Indemnity Corp, Pacific Gas and Electric Company, and California Power Exchange, Inc.

Mr. Warden has been involved in significant CPR and AAA arbitration matters. He was lead petitioners' counsel in a CPR arbitration arising out of the acquisition of the manufacturing division of a New York Stock Exchange company. The Honorable Robert Bork was the lead arbitrator in that case.

Mr. Warden was selected to be on the Peer Assistance Panel for the Northern District of California to provide litigation advice to inexperienced lawyers. Mr. Warden has also offered his legal experience to the San Francisco Neighborhood Legal Assistance and helped obtain zoning variances for a drug treatment center. He was previously a trustee of the San Francisco Mental Health Association and president of the Management Center. Mr. Warden was the Chairman of the American Bar Association Bankruptcy Litigation Subcommittee.

Mr. Warden has regularly participated in Practicing Law Institute and California CEB panels, including PLI's Annual Institute for Intellectual Property Law, for the last several years.

Mr. Warden was one of just 90 lawyers in the country identified as a member of the BTI Consulting "Client Service All-Star Team." BTI Consulting recently interviewed over 200 corporate counsel at Fortune 1000 companies throughout the U.S. and requested the names of individual lawyers at law firms who stand out for providing "superior client service."

Honors & Awards

  Best Lawyers in America, Bankruptcy and Creditor Debtor Rights / Insolvency and Reorganization Law, Litigation - Bankruptcy (for 25+ years)

  PLC Which Lawyer?, Bankruptcy & Corporate Reorganization-San Francisco & Silicon Valley (2011-2012)

  BTI Client Service All-Star (2004)

  Super Lawyers (2004-2011)

Education

J.D., University of California, Hastings College of the Law, 1972, Order of the Coif, Thurston Honor Society
A.B., Dickinson College, 1965


Robert P. Taylor
RPT Legal Strategies PC

Intellectual property lawyer (1985 to present)

  • Lead counsel in numerous patent infringement cases involving wide spectrum of mechanical, electronic, chemical and pharmaceutical technologies and industries.
  • Lead counsel or co-counsel in numerous copyright and trade secret cases involving wide range of technologies and creative works.
  • Extensive experience in matters involving the interface of intellectual property law and antitrust law, including litigation, counseling and licensing.

Business strategy and consulting

  • Written and lectured for more than 35 years on the strategic and tactical uses of intellectual property in a business context and the legal principles that govern such uses.
  • New Enterprise Associates, Venture Advisor – 2007 to present
  • Counseled and advised both large and small companies as to best practices in protecting their own IP and avoiding or managing IP conflicts with others.

Professional Recognition

  • Fellow, American College of Trial Lawyers, 1992 to present.
  • Chair, Antitrust Section, American Bar Association, 1991-92.
  • Co-Chair, Intellectual Property Institute, sponsored by Practicing Law Institute in New York and San Francisco, 1998 to present.
  • Co-chair, Antitrust Committee of Intellectual Property Owners Association (“IPO”) (at least 10 years).
  • Member, Amicus Committee of IPO, 2009 to present.
  • Member, Secretary of Commerce Commission on Patent Law Reform, 1992.
  • Lifetime Member, American Law Institute.
  • Listed in Chambers worldwide directory of business lawyers (at least 10 years).
  • Listed in “Best Lawyers in America” (at least 10 years).


Steve Bené

Primary Areas of Practice
 IP, Corporate, Litigation, Compliance

Law School/Graduate School   Stanford Law School

Work History

1991-92: Judicial Clerk, 5th Circuit Court of Appeals (Austin, TX)
1992-95: Corporate and Licensing Associate, Fenwick & West, LLP (Palo Alto, CA)
1995-Present: Electronic Arts

Professional Memberships  CA Bar Association


Victoria A. Cundiff is a partner at Paul Hastings resident in New York. She leads the litigation department’s global trade secrets litigation practice, which is ranked in “Tier 1” by Legal 500.

Ms. Cundiff has successfully tried or resolved trade secrets, non-compete, "inevitable disclosure,” intellectual property ownership, and other intellectual property and commercial disputes in state and Federal courts throughout the United States and before a variety of arbitration and mediation tribunals. She also advises on such disputes internationally and coordinates multi-jurisdictional litigation. She has designed confidential verification protocols for resolving intellectual property use and ownership disputes in and outside of court. She has worked with clients in a wide variety of industries, including technology, software, media, financial services, insurance, pharmaceuticals, chemicals, marketing, and sales and distribution organizations.

Ms. Cundiff’s articles on topics including “Preventing the Inevitable,” “How to Hire Your Competitor’s Employee,” and “How to Own Your Own Intellectual Property” have been published in publications including the Santa Clara Computer and High Technology Law Journal; IDEA ®: The Intellectual Property Law Review; The New York Business Law Journal; The Computer Lawyer; The New York Law Journal; The Employee Relations Law Journal and a variety of course handbooks published by the Practising Law Institute. She has been quoted on best practices in a variety of legal and industry publications. She has contributed to amicus curiae briefs filed in the United States Supreme Court on copyright and intellectual property licensing issues.

Ms. Cundiff is a Visiting Lecturer in Law at Yale Law School, where she teaches intellectual property law.

Ms. Cundiff is a Member of the American Law Institute, serving as an Adviser on the Restatement, Third, Conflict of Laws. She is a member of the Executive Committee of the New York State Bar Association’s Intellectual Property Section and is the past Chair of that section. She is a member of the Trade Secrets Committee of the American Intellectual Property Law Association; is listed in The Best Lawyers in America; Chambers; Legal 500 (which has named her a “Leading Lawyer” in Trade Secrets Litigation); and New York Super Lawyers. She was an invited civilian guest at the U.S. Army War College National Security Seminar. She has completed the National Institute of Trial Advocacy’s Teacher Training Program at Harvard Law School and the CPR Institute’s Mediator Training Program.

Ms. Cundiff received her B.A. degree from the University of Denver, where she was a Boettcher Foundation Scholar, and her J.D. degree from Yale Law School. She is on the advisory board of the Yale Law School Center for the Study of Corporate Law. She was a founding member of the Print Club of the City of New York. She is admitted to practice in New York, Colorado, the District of Columbia and several Federal courts.


William “Bill” Coats is a partner in the San Francisco office of Novak Druce Connolly Bove + Quigg and chair of the firm’s litigation group.  He focuses his practice on intellectual property litigation, specifically involving patents, copyrights, trademarks and trade secret disputes. He possesses deep and broad knowledge of a number of cutting-edge technologies, which he uses to provides strategic counsel to clients across a number of industries, including computers, electronics, entertainment and the media. He is the past Chair of the Science and Technology Law Section of the American Bar Association and was appointed by the U.S. government to the United Nations Centre for Trade Facilitation and Electronic Business Task Team on Intellectual Property Rights and Related Issues in 2008.

As an esteemed litigator in the IP space, Bill represents companies that are leaders in their respective fields, from large computer software and hardware developers to industry associations. His representation has helped establish guidelines and standards for the content and consumer electronic industries.

Practice Areas: Litigation, Prosecution, Copyright, Trademark

Education: University of California, Hastings College of Law, J.D.; University of San Francisco, B.A.

Professional Affiliations:

  • Delegate, United Nations Commission on International Trade Law (UNCITRAL) Working Group on Electronic Commerce
  • Member, United Nations Centre for Trade Facilitation and Electronic Business Task Team on Intellectual Property Rights and Related Issues
  • President, Santa Clara County Bar Association's Blue Ribbon Commission on Diversity in the Legal Profession in Silicon Valley
  • American Bar Association Section of Patent, Trademark and Copyright Law Past Chair
  • American Bar Association, Computer Law Division Past Chair
  • American Bar Association, Task Force on Biometrics Past Chair


Helen Hill Minsker provides assistance to clients concerning a broad range of issues arising under trademark and unfair competition laws, as well as copyright law. Her experience in these fields of law includes counseling, prosecution and registration of applications before the U.S. Patent and Trademark Office and the U.S. Copyright Office, internet, licensing, enforcement, oppositions and cancellations, and litigation in the courts. Helen also counsels clients in protecting their trademark portfolios internationally.

Helen is active in a number of professional organizations. She has held leadership roles with national and international IP associations, including serving on both the INTA Board of Directors and the AIPLA Board of Directors (as a Board member and as Treasurer). From 2006 - 2009, Helen served on the Editorial Board of the INTA publication The Trademark Reporter. Over the years, Helen has chaired various committees for these associations and others, such as the ABA IP Law Section’s Committee on Franchising, and she served as co-Chair of INTA’s Annual Meeting in Amsterdam in 2003. Helen also was chair of the Bar Association of DC’s Patent, Trademark & Copyright Law Section.

Helen received her undergraduate degree (A.B.) in political science from Vassar College, and her J.D. from George Washington University. She also spent a year studying at the London School of Economics and Political Science. She is admitted to the Bar of the District of Columbia Court of Appeals and the Bar of the Supreme Court of Illinois, as well as several courts, including the United States Supreme Court and the Court of Appeals for the Federal Circuit.

From 2001-2011, Helen served as an adjunct professor of law at Georgetown University, where she co- authored and taught a course on intellectual property pretrial litigation skills. She also is a frequent lecturer in continuing legal education programs, and is a former Contributing Editor/Trademarks for the Federal Circuit Bar Journal. On the international front, Helen is a member of the European Community Trademark Association (ECTA). Helen was included in "IP Stars - Top 250 Women in IP" in Managing Intellectual Property in 2013 and 2014, and recognized as a "World’s Leading Trademark Professional" in the World Trademark Review 1000 in 2012-2015.

Helen practices in the Chicago office of Banner & Witcoff, Ltd.

Education

A.B. 1982, Vassar College

J.D. 1987, George Washington University

Bar Admissions

1988, District of Columbia 2007, Illinois

Court Admissions

U.S. Supreme Court

U.S. Circuit Court of Appeals for the Federal Circuit

U.S. Court of Appeals for the Seventh Circuit

U.S. District Court for the Central District of Illinois

U.S. District Court for the District of Columbia

U.S. District Court for the Northern District of Illinois

Practice Areas

Appellate Litigation
Copyright
Counterfeit Goods Seizure
Litigation
Trade Dress
Trademarks

Industries

Internet, E-Commerce & Business Methods


Mr. Sterne is one of the leading patent attorneys in the United States in all phases of patent office litigation, including Federal Circuit and Supreme Court appeals, for patents involved in concurrent litigation both in the federal courts and the United States International Trade Commission. He is also recognized by his peers as a thought leader for best practices concerning all areas of intellectual property. He specializes in cutting edge technologies in the electronics, computer, communications, biomedical and nanotech arenas, for the monetization of patents, patent litigation and patent licensing.

Throughout his career, Mr. Sterne has been consistently recognized as an outstanding IP law practitioner and thought leader. In 2015, the Financial Times ranked Mr. Sterne among the "Top Ten Innovative Lawyers in North America." Clients rely on his negotiation skills and big picture approach to patent procurement and protection, licensing and enforcement that considers the product, distribution, network and market conditions. Additionally, Mr. Sterne is a sought after expert witness, has written and spoken extensively on the subject of patent reexamination and concurrent patent litigation, and is Chairperson of the Editorial Board of The PTO Litigation Center. He has served as a Special Master for Judge Marvin J. Garbis in a case involving patent inventorship, ownership, and U.S. and foreign patent applications and prosecution.

Mr. Sterne has played a role in groundbreaking, precedent-setting case law. In 2007, he served as co-counsel in KSR International Co. v. Teleflex, Inc., one of the most significant patent cases heard by the U.S. Supreme Court in 50 years. The case addressed the fundamental question of when an invention is “obvious” and therefore not patentable. Mr. Sterne was the lead attorney in In re Beauregard, 53 F3d 1583,35 USPQ2d 1383 (Fed. Cir. 1995). This groundbreaking case was brought by IBM at the Federal Circuit to establish that a computer program on a disk was patentable subject matter. The case resulted in the United States Patent and Trademark Office issuing new proposed software patent guidelines which expanded the scope of patent protection for software. He was counsel for appellants in In re Jung et al, before the Federal Circuit, which involve the prima facie anticipation requirement in patent prosecution.

Mr. Sterne serves as an IP strategic advisor to start ups, emerging companies, and investors and serves on the boards of directors of a publicly traded company and a number of charitable organizations. He is a member of the University of Maryland School of Law, IP Program Advisory Board and the Advisory Board of The Sedona Conference. He served as the co-chair of the Sedona Patent Litigation Conference in 2001, 2002, 2007, 2008, 2009, 2010, 2011, 2012, 2013, and 2015. For more than 20 years, Mr. Sterne was a member of the Advisory Board of BNA's Patent, Trademark and Copyright Journal. He holds an Extra Class radio license (WK3W) from the FCC.

Mr. Sterne is the Editor-in-Chief of Patent Office Litigation, a two-volume set focused on the new contested proceedings under the America Invents Act published in 2012 by Thomson Reuters Westlaw. This book examines how the proceedings interact with other aspects of patent procurement and enforcement, and delivers practical analysis and advice.

Mr. Sterne is a strong proponent of diversity and inclusion. He is a member of the Women’s Bar Association of the District of Columbia, on the firm’s diversity task force, and actively involved in mentoring both in the firm and with outside organizations. Mr. Sterne is also active in the community. He was elected to the Executive Board of the National Capital Area Council (NCAC), Boys Scouts of America (BSA) in 2003. He was awarded the Silver Beaver by the NCAC in 2010, the highest award given at the council level. He was very involved in Scouting as a youth, and now serves as the Eagle Scout Coach/Advisor to Troop 1983 in Oakton, Virginia. He was the founder of the Attorney of the Year: "Good Scout" Award Luncheon, and chaired this event in 2006 - 2009.


Charan J. Sandhu is a partner in the firm's Technology and Intellectual Property Transactions practice and concentrates in the areas of complex technology transactions and intellectual property, with a particular focus on patent licensing. Ms. Sandhu is consistently recognized by Chambers USA as a leading lawyer for Technology & Outsourcing; by Legal 500 as a leading lawyer in the field of intellectual property; in IAM Licensing 250’s “World’s Leading Patent & Technology Licensing Lawyers;” and by IAM Patent 1000 for licensing. She was also named an “IP Star” for licensing in New York by Managing Intellectual Property’s IP Stars 2013 and has been recognized as a Financial Transactions Life Science Star by LMG Life Sciences.


Jean I. Liu joined Seattle Genetics in November 2014 as General Counsel, Executive Vice President, Legal Affairs and Corporate Secretary. She oversees all aspects of the company’s legal, compliance and intellectual property functions.  Prior to joining Seattle Genetics, Ms. Liu served since 2011 as Vice President and General Counsel at Halozyme, a publicly traded biotechnology company. Prior to Halozyme, from 1998 to 2011 she held a number of legal roles at Durect Corporation, most recently as Chief Legal Officer and Corporate Secretary. Ms. Liu’s early career included work at 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 obtained 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 where she was a Harlan Fiske Stone Scholar.


Marta Beckwith is Vice President, Legal at Aruba Networks.   Prior to joining Aruba this year, Ms. Beckwith was Senior Director, Legal Services, at Cisco Systems, Inc. where she was responsible for worldwide intellectual property litigation. Before that, Ms. Beckwith was Senior Director, IP Litigation for Applied Materials, Inc. She began her 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 from UC Santa Cruz.


Nimmer is the Leonard Childs Professor of Law at the University of Houston Law Center and co-director of the Houston Intellectual Property and Information Law Institute. He is also a Distinguished Chair in Residence at Universidad Catholica in Lisbon, Portugal and former Dean of the Law Center.

Admitted to practice in Illinois, Texas, and the United States Supreme Court, Nimmer was a Fulbright Distinguished Chair of International Commercial Law. Over a period of sixteen years, he was Of Counsel to the law firm of Weil, Gotshal & Manges as well as the law firm of Sheinfeld, Maley & Kay.  He was the co-Reporter to the Drafting Committee on Revision of U.C.C. Article 2 and the reporter for the Uniform Computer Information Transactions Act.

Professor Nimmer is the author of over twenty five books and numerous articles, including a three-volume treatise on Information Law, a multi-volume book on the Law of Computer Technology, a treatise on Modern Licensing Law, and a multi-volume treatise on The Law of Electronic Commercial Transactions. He is a member of the American Law Institute, the Texas Bar Foundation, and the American College of Commercial Finance Attorneys. The first edition of his book The Law of Computer Technology received a national book award from the Association of American Publishers in 1985.

He is listed in The Best Lawyers in America in the practice areas of: Copyright Law, Information Technology Law, Litigation - Intellectual Property.  He is also one of 700 lawyers listed in the International Who’s Who of Business Lawyers in the category of Information Technology Law.  He has been recognized in 2011 by his peers as the as the Best Lawyer in Houston in Information Technology Law.  In 2013, his peers voted him the Best Lawyer in Houston in Copyright Law.