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Intellectual Property Law Institute 2014


Speaker(s): Anne Hiaring Hocking, Charan J. Sandhu, David Bender, Douglas A. (Chip) Rettew, Dr. Justin Watts, Jean I. Liu, Joseph P. Lavelle, Karen Frank, Katherine C. Spelman, Katherine M. Basile, Kenneth B. Germain, Lateef Mtima, Marc A. Cohn, Mark S. Holmes, Marta Y. Beckwith, Merri A. Baldwin, Michael Okada, Michelle E. Park, Phyllis T. Turner-Brim, Raymond T. Nimmer, Robert P. Taylor, Ron Laurie, Victoria A. Cundiff, William Sloan Coats
Recorded on: Oct. 16, 2014
PLI Program #: 50356

Douglas (Chip) Rettew leads the firm’s trademark and copyright group. He focuses his practice on trademark, false advertising, and unfair competition litigation and disputes. Mr. Rettew has litigated cases involving a broad range of issues, including traditional trademarks, trade dress, design patents, false advertising, product disparagement, unfair competition, and domain names. Representative clients include Under Armour, Bridgestone, the NFL Players Association, Capital One, Subaru, the Association of Tennis Professionals (ATP), and PNC Bank. In addition to litigation, Mr. Rettew is involved in trademark and copyright prosecution and licensing.

Mr. Rettew has first-chair jury and bench trial and appellate experience and has argued appeals before the U.S. Courts of Appeals for the Federal, Fourth, and Eighth Circuits. He has also litigated many oppositions, cancellations, and ex parte appeals before the Trademark Trial and Appeal Board (TTAB) of the

U.S. Patent and Trademark Office (USPTO). Mr. Rettew has significant experience in obtaining (and defeating) temporary restraining orders (TROs) and preliminary injunctions, including those involving counterfeiting and ex parte seizures.

Mr. Rettew is frequently recognized as one of the nation’s top trademark lawyers. Touting the group’s “brilliant courtroom reputation,” one source said the following about Mr. Rettew: “At the helm is eminent group chair Douglas Rettew: ‘His combination of deep legal knowledge and excellent contentious skills engenders a strategic and resourceful approach. He is an exceptional team player whose representation could not be better.’” Another source claimed that his “expertise and service level set the standard that I use to assess all other counsel (on a global basis)” and that he “provides succinct, insightful and strategic advice in a timely manner. His communication and negotiation skills are stellar.” Chambers USA notes that Mr. Rettew is “considered a “standout” for his counsel on trademark, false advertising and right of publicity issues. He is a go-to litigation lead for world-famous consumer brands.”

Highlights

  • Nuance v. ABBYY (N.D. Cal). Prevailed in jury trial and obtained verdict that the plaintiff’s asserted family of software packaging designs was unprotectable.
  • Bridgestone v. Federal (Fed. Cir.). Obtained decision reversing the TTAB and holding that the mark MILANZA conflicts with Bridgestone’s POTENZA and TURANZA tire marks.
  • Gateway, Inc. v. Companion Products (D.S.D., 8th Cir.). After a full trial, obtained a decision that Gateway’s cow-spots trademark is strong and famous, and that the defendant’s black-and-white spotted plush novelty computer monitor wraps infringed Gateway’s trade dress rights. Obtained affirmance on appeal before the Eighth Circuit.
  • Andrew Luck v. Leaf Trading Cards (Tex. St. Ct.). Represented NFL first- round draft pick Andrew Luck in a case involving publicity rights in “rookie” football trading cards, which was resolved favorably.
  • Rawlings v. Under Armour (D. Wash.). Defeated demand for a preliminary injunction on a design patent claim that would have prohibited Under Armour’s sale of its new batting helmet line for two years.
  • Chef’n v. Trudeau (D. Wash). Defeated demand for preliminary injunction and obtained victory on summary judgment that Trudeau’s silicon steamer did not infringe Chef’n’s design patent.
  • Nichia v. Seoul Semiconductor (C.D. Cal.). Obtained victory on summary judgment that Seoul Semiconductor’s press statements regarding a design patent litigation did not constitute false advertising.
  • Capital One Financial Corp. v. Capital Financial, Inc. (M.D. Fla.). Obtained a preliminary injunction for Capital One against use of certain marks and names in the solicitation and marketing of limited-merchandise credit cards.
  • Games Workshop v. Brian Beale (W.D. Mo.). Obtained an ex parte seizure order and a TRO against the sale of counterfeit gaming miniatures, sold primarily on eBay. Subsequently obtained sanctions and summary judgment on liability and an award of attorneys’ fees and costs.
  • Involved in a series of nine lawsuits in five states over counterfeit and/or gray-market prescription human-growth hormones, resulting in nine ex parte TROs and five ex parte seizure orders, which led to the seizure of more than 20,000 packages of counterfeit products.
  • In re the American Fertility Society (Fed. Cir.). Obtained decision reversing the TTAB’s refusal to register the mark THE AMERICAN SOCIETY FOR REPRODUCTIVE MEDICINE on genericness grounds.

Professional Recognition

  • Recognized as a leader in the field of Intellectual Property: Trademark, Copyright & Trade Secret law in Chambers USA, which described him as “a ‘standout’ for his counsel on trademark, false advertising and right of publicity issues,” and “a go-to litigation lead for world-famous consumer brands,” 2015, 2016.
  • Recognized by The Legal 500 U.S. as one of the leading lawyers in trademark litigation, 2016; for trademark litigation, 2007-2016; patent prosecution and non-contentious trademark work, 2015; and copyright litigation, 2015.
  • Recognized as an “IP Star” in Washington, D.C. by Managing Intellectual Property, 2016.
  • Ranked in World Trademark Review 1000 among top trademark lawyers for contentious work in the United States, 2014-2016; and in D.C. for contentious and non-contentious work, 2012-2016.
  • Recognized by International Law Office (ILO) and Lexology’s Client Choice Awards for excellent client service in the area of Trademarks, 2013, 2016.
  • Recognized by World IP Review as a WIPR Leader for trademarks in the United States, 2016.

Professional Activities

  • International Trademark Association (member, Publication Committee, 2014- 2015)
  • American Intellectual Property Law Association
  • Federal Circuit Bar Association

Select Publications

  • Principal Editor. Trade Dress: International Practice and Procedure: USA Section, International Trademark Association (INTA), 2010-present.
  • Coauthor. “Offbeat Page in Branding Playbook,” The National Law Journal, Oct. 22, 2012.

Areas of Practice

Trademark

TTAB Litigation
Counterfeiting/Gray-Market Goods
False Advertising
Domain Name Litigation and UDRPs
Trademark Litigation

Patent Litigation

Pre-Trial Strategy

Copyright

Design Patents

Industry Focus

Automotive
Consumer Products
Electrical and Computer Technology
Oil and Gas
Sports and Fitness

Bar and Court Admissions

District of Columbia

Maryland

New Jersey

Education

George Washington University, National Law Center
J.D., 1995

University of Michigan
B.A., Political Science, 1992


Position/Title: Patent Counsel

Firm or Place of Business: Google Inc.

Primary Areas of Practice: Patent

Law School/Graduate School: Boston University School of Law


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


Areas of Practice

Kate Spelman has more than 30 years of experience providing strategic advice, design and implementation counsel for large, mid-sized and startup companies on copyright, trademark, trade secret and patent matters, both nationally and internationally, and has a special focus on media, licensing and mass digitization issues. Kate advises and counsels clients on the development, production, sale and defense of work related to emerging content distribution strategies and challenges, special issues in news reporting including repurposing content, and firewall and paywall configuration in light of changes in the fair use defense.

Kate is a frequent speaker on the progress of emerging copyright and digital publishing issues, and has advised authors, nonprofit and for-profit publishers, and internet service providers on the new language and provisions of the changed, global distribution environment. She has represented large digital publishing companies in international distribution agreements as well as represented developers and designers who are building and launching tools for online transmissions, storytelling, expression and art.

Additionally, Kate has experience assisting clients with Open Source licensing issues, including Open Source integrated licenses, audits, mergers and acquisitions due diligence, and compliance negotiations. Kate also helps clients design independent holding companies in the U.S. and in offshore intellectual property asset management. She has experience with intellectual property asset audits, and has assisted companies in proactive and reactive Sarbanes-Oxley compliance reporting requirements.

Academics

•           Pepperdine University (Certificate in Dispute Resolution, 1990)

•           University of Wisconsin Law School (J.D., 1980)

•           University of Michigan (B.A., Classics and Latin, 1976)


David Bender is an Adjunct Professor at the University of Houston Law Center, and also at Pace University Law School, where he teaches Privacy Law.  Before his retirement from active practice, he had extensive Privacy, Intellectual Property, and Information Technology litigation, counseling, and transactional experience.  In 1985 he was a founder of the IP practice at White & Case.  Before retiring from White & Case, he headed the firm’s global privacy practice.

Mr. Bender served in-house at AT&T for ten years, during the latter half of which he was responsible for all IP litigation brought by or against any Bell System company.  Before that, he spent five years engaged in antitrust litigation.  And before turning to the law, he served as an engineer with the Ford Motor Company’s aerospace division and as a mathematician with Hughes Aircraft.                                                                                                                                          

Bar Admissions:  New York; US Patent and Trademark Office

Publications:   Bender on Privacy and Data Protection (4th ed. 2013 LexisNexis); Computer Law published in 1978 and presently in Release #67 (LexisNexis, 6 loose-leaf volumes); over 100 articles in law reviews and conference proceedings.

Memberships:

  • International Association of Privacy Professionals
  • International Technology Law Association (President, 1999-2000)
  • Association of the Bar of the City of New York 

Super Lawyers:

  • New York City Metro Super Lawyer in Information Technology (2006 -- 2011).
  • One of the 25 best lawyers in the Westchester Co. Area (2009 - 2011)

Speaking:

Over 250 presentations across the United States and in 19 other nations at conferences sponsored by numerous organizations.


Jean 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.


Joseph Lavelle is an experienced patent lawyer, focusing primarily on the preparation and trial of patent infringement cases.

Joseph also has handled a number of successful appeals to the Court of Appeals for the Federal Circuit.

Patent Litigation

Joseph has more than 25 years of experience litigating patent cases, including many bench and jury trials. He has litigated in most areas of technology, including semiconductors, computers, computer software, telephony, Digital Signal Processing, telematics, waveform encoding, automotive technology, financial services, biotechnology and many others.

In addition to federal district court proceedings, Joseph has tried a number of Section 337 proceedings before the US International Trade Commission (ITC), as well as handled cases before the US Court of Federal Claims and appeals to the Court of Appeals for the Federal Circuit. He also is licensed to practice before the USPTO and has successfully handled interference proceedings.

Antitrust

Joseph has vast experience handling litigation and counseling matters at the intersection of competition laws and antitrust laws. He has participated in many of the leading matters in the area of standard setting. Also, he has represented clients in patent-antitrust matters before the FTC and the Antitrust Division of the Department of Justice.


KAREN FRANK is a partner at Coblentz Patch Duffy & Bass LLP where her 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, news services and cultural establishments, technology, food, wine, luxury goods, fashion, music, entertainment and education.

Prior to joining Coblentz Patch in 2008, Ms. Frank was a partner at Howard Rice Nemerovski Canady Falk & Rabkin, in San Francisco, a shareholder at Legal Strategies Group in Emeryville, California, and at Pillsbury Madison & Sutro in San Francisco.

Professional Memberships:

Ms. Frank is a former president of the Copyright Society of the USA and a member of the American Law Institute.  She is listed in California Super Lawyers, Best Lawyers, and Who's Who in American Law.

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


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 an advisor to 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 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 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


Phyllis T. Turner-Brim is Vice President, Chief IP Counsel of Intellectual Ventures headquartered in Bellevue, WA. 
In this role, Phyllis is responsible for managing and coordinating legal services supporting patent asset acquisitions and divestitures, licensing, prosecution and related transactions.  Phyllis’ current team consists of over fifty-five attorneys, para-professionals, assistants and clerks.  Immediately prior to this post, Phyllis was Licensing Attorney Director – Program Development at IV. 

Prior to joining IV, Phyllis had dual legal and business roles as IP Counsel and Director of RFID Strategy and Licensing at Intermec Technologies Corporation.  In her legal role as IP Counsel, Phyllis had responsibility for managing and providing a full spectrum of intellectual property services and related legal counseling including, managing the IP Legal budget, selecting and managing outside prosecution counsel, managing and developing licensing programs, docketing and litigation support.   In her business role as Director of RFID Strategy and Licensing, Phyllis had the general management responsibility for Intermec’s RFID BU.  In this regard, Phyllis was responsible for driving RFID revenue, developing and implementing product strategy and roadmaps, managing internal and external partner relationships, developing and managing budget, and managing all business unit functions and personnel.

From 2000 to 2004, Phyllis was Associate General Counsel – Intellectual Property at Cabot Microelectronics Corporation.  In this position, Ms. Turner-Brim established a full service intellectual property department as part of a corporate “spin-off,” and had responsibility for the corporate intellectual property function worldwide.  In addition, Phyllis was responsible for providing legal counseling in the areas of Labor and Employment, Product Stewardship, Environmental Law, and Immigration. 

Prior to her post at Intermec, Phyllis served briefly as Assistant General Counsel, Intellectual Property for Wal-Mart Stores, Inc. in Bentonville, Arkansas.  She has also served as Intellectual Property Attorney for Amoco Corporation (now BP), and as an associate attorney at the IP boutique firm of McAndrews, Held and Malloy, Ltd. 

Phyllis is a 1993 graduate of the University of Cincinnati Law School, and a 1986 honors graduate of the Illinois Institute of Technology (B.S. Chemical Engineering).  She has served as a lecturer/presenter on several topics including, developing business focused licensing programs, diversity in the law, recruitment and retention of minorities and women in technical professions, chemical patent drafting, IP strategy development, career development and personal risk taking.   Phyllis accepted an invitation to join the Board of Trustees for the AIPLEF in 2013. She has also been a member of the Board of Trustees for the Snohomish County YMCA since 2012 and in 2011, she was elected to Board of Trustees for Trinity Lutheran College in Everett, WA. Prior to pursuing a career in the law, Ms. Turner-Brim held technical management positions with General Electric Co. and Procter and Gamble Co. 


Primary Areas of Practice:  Licensing

Law School/Graduate School:  University of Southern California

Work History: 

Associate and Partner
Wilson Sonsini Goodrich & Rosati
November 1994 – April 2006

Associate
Whitman Breed Abbot & Morgan
1993 – 1994

Legal Advisor
Yamashita & Ohshima
1991 – 1993

Associate
Whitman & Ransom
1989 – 1991 (2 years)

Professional Memberships:  California Bar


Raymond Nimmer is 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 Catolica in Lisbon, Portugal.

Dean 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. The first edition of his book The Law of Computer Technology received a national book award from the Association of American Publisher.  He is a member of the Texas Bar Foundation, and the American College of Commercial Finance Attorneys, and a frequent speaker at programs in the U.S. and abroad in the areas of intellectual property, business and technology law. 

Professor Nimmer is listed as among the Best Lawyers in America in intellectual property law, copyright, Information Technology Law, Litigation - Intellectual Property, Litigation - Patent, Patent Law and Trademark Law, as well as in Who's Who in America, Who's Who in Law, the International Who's Who of Internet Lawyers, and the International Who's Who of Business Lawyers.

He served as the Dean of the University of Houston Law Center for seven years.  He practiced law for over 15 years and has served as a consultant to the National Science Foundation and the Office of the Legal Advisor of the U.S. State Department. In 2007 he held a Fulbright Distinguished Chair in International Commercial Law.


Ron Laurie has worked in Silicon Valley since before it had that name, initially as a missile systems engineer at Lockheed-Sunnyvale, and then as an intellectual property lawyer and patent strategist. In 2004 he launched Inflexion Point Strategy, the first IP investment bank.  With offices in Silicon Valley, Taiwan and Singapore, Inflexion Point advises technology companies and institutional investors around the world in acquiring, divesting and investing in IP-rich companies, businesses units and technologies, and IP assets in the form of patent portfolios, exclusive field-of-use rights and related know-how.  Inflexion Point’s mission is to extract the unrealized value of strategic IP by increasing corporate valuation in M&A transactions, by building a defensive shield against litigious competitors and by generating top-line revenue via creative exclusive field-of-use licensing programs. 

Ron is also a director at Wi-LAN, Inc., one of the oldest and most successful publicly-traded patent licensing companies. He has been named as one of the World’s Leading IP Strategists by Intellectual Asset Management (IAM) Magazine and is on the advisory boards of the Silicon Valley Chapter of the Licensing Executives Society, and the Certified Patent Valuation Analyst accreditation program.

Prior to launching Inflexion Point, Ron was a founding partner of Skadden Arps' Silicon Valley office, where he chaired the firm's IP Strategy and Transactions Practice Group for six years and led IP teams in some of the largest high-tech and life sciences M&A, spin-out and joint venture deals ever done, worth over $50 billion in the aggregate.  He was also a founding partner of the Silicon Valley offices of Weil, Gotshal and Irell & Manella.

As a lawyer, Ron advised clients in the semiconductor, computer, software, communications, media and financial services industries on IP strategy -- a subject he has taught at both Stanford and Boalt (UC Berkeley) law schools.

Ron was an IP litigator for ten years, handling high-visibility patent, copyright, trade secret and trademark infringement cases in federal and state courts, including representation of Hewlett-Packard in its successful defense of the 'look and feel' copyright infringement suit filed by Apple Computer against HP and Microsoft over the Macintosh graphical user interface.

Ron is a registered patent attorney, and a substantial part of his prior law practice involved strategic planning, competitive analysis and commercial exploitation of patents on leading-edge software-based technologies such as encryption, biometrics and internet telephony. He wrote the Priceline reverse-auction patent, which was the first Internet business method patent to attract national attention.

Ron has been an advisor to the U.S. Patent & Trademark Office, the U.S. Copyright Office, the Office of Technology Assessment of the U.S. Congress, the National Research Council, the National Academy of Science and the World Intellectual Property Organization (WIPO). He is on the Executive Council of the Berkeley Center for Law & Technology and the editorial board of The Journal of Internet Law and co-edited a two-volume treatise titled International Intellectual Property.


Victoria A. Cundiff is a partner at Paul Hastings, LLP resident in New York, where she is a leader of the Firm’s nationally ranked trade secrets litigation practice.   She works with clients in a wide variety of industries to protect and obtain value from their intellectual property and to defend against claims of encroachment.  She has litigated intellectual property and commercial disputes in state and Federal courts throughout the United States and before a variety of arbitration and mediation tribunals and has coordinated such disputes internationally.  Ms. Cundiff’s articles on intellectual property issues have appeared 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 is a frequent speaker on the implications of recent IP developments and has been quoted on best practices in a variety of legal and industry publications.  She has served as an instructor in programs sponsored by the USPTO on trade secrets law and practice for, among others, representatives of a variety of US trading partners.  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, teaching 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 2000 member 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.   She has completed the National Institute of Trial Advocacy’s Teacher Training Program and the CPR Institute’s Mediator Training Program and was an invited civilian guest at the U.S. Army War College National Security Seminar.  She is a fellow of the New York and American Bar Foundations and has been recognized in The Best Lawyers in America; Chambers; Legal 500 (Leading Lawyer, Trade Secrets, Nationally); and New York Super Lawyers, among other directories.  

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 admitted to practice in New York, Colorado, the District of Columbia, various Federal District and Circuit courts and the United States Supreme Court.  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 and serves as Chair of the Scholarship Committee of the United States Senate Youth Program Alumni Association and as a member of the board of the York Theatre Company in New York, which is dedicated to providing support for musical theatre and theatre education.


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


Mr. Taylor is the founder and owner of RPT Legal Strategies PC in San Francisco and Silicon Valley, providing legal advice to businesses and investors with respect to litigation, antitrust, intellectual property and related fields of law.  For more than 40 years, he has served as lead counsel in numerous antitrust and/or patent cases involving a wide range of technologies and industries.  He has also represented companies and/or their investors with respect transactions involving these areas of practice.  He has written and lectured extensively on both antitrust and intellectual property issues.

Mr Taylor is a fellow of the American College of Trial Lawyers.  He is a former chair of the Antitrust Section of the American Bar Association (1991-92).  He was a member of the Advisory Commission on Patent Law Reform, whose report was presented to the US Secretary of Commerce in 1992, proposing certain changes in U.S. patent laws.  He is a Lifetime Member of the American Law Institute.  For a number of years, he has served as co-chair of the Antitrust Committee of Intellectual Property Owners Association and as a member of their Amicus Committee.

Mr. Taylor holds a Bachelor of Science degree in Electrical Engineering from the University of Arizona, where he was elected to Tau Beta Pi.  He holds a Juris Doctor degree from Georgetown University, where was an editor of the Georgetown Law Journal.


The founder and CEO of PatentBridge, Mark Holmes is a registered patent attorney experienced in all aspects of patent brokering and patent licensing. He has negotiated numerous patent deals, both inbound and outbound, as well as represented patent owners in the brokering of their patents. For half a decade from 2006 to 2011, Mr. Holmes served as co-chair Silicon Valley Chapter of LES (Licensing Executives Society).

Mr. Holmes has advised some of the largest companies and academic institutions in the world such as Visa, Sony, Applied Materials, Intergraph (in its settlement of Intergraph vs. Intel), University of California at Berkeley (Berkeley Lab), Biosite, Fairchild Semiconductor, Rigel Pharma and Yamanouchi Pharma, as well as sole inventors. He has been on both sides of the table -- as buyer and seller -- which has given him a unique understanding of both perspectives and the negotiating tactics employed by each party to the deal.

Mr. Holmes earned his engineering degree from Brown University. He is a member of the Institute of Electrical and Electronics Engineers (IEEE) and the IEEE Computer Society. Before founding PatentBridge, he served as counsel to Townsend & Townsend & Crew, formerly the largest intellectual property law firm west of the Mississippi.

Mr. Holmes is the author of the book Patent Licensing and Selling: Strategy, Negotiation & Forms, Practising Law Institute, New York (2000 supplemented annually). Please click the button entitled "Book" at the top of the screen for more information.

Mr. Holmes lectures nationally on the pressing issues facing patent owners in the commercialization of their intellectual property. In the past few years, he has spoken nationally over 50 times on the commercialization of intellectual property for such bodies as Renaissance Weekend, Practising Law Institute, International Society for Optical Engineering (SPIE), Patent Law Institute, Washington State Patent Law Association, Oregon Patent Law Association, Hawaii State Bar Association and other organizations.

He also serves as co-chair of the Practising Law Institute’s Advanced Patent Licensing annual program in New York, Chicago and San Francisco, where he speaks on software and patent deals.

He was a speaker on patents at the 2003, 2004 and 2008 Annual Meetings of the Licensing Executive Society (LES) and served on the meeting committee for the 2004 LES Winter Meeting in San Francisco. Since 2002, Mr. Holmes has been a member of the faculty of the Practising Law Institute’s “Advanced Licensing Agreements” annual two-day programs in San Francisco, Chicago and New York where he speaks on software licensing and the analysis of a complex technology deal.

He is the author of numerous articles and sits on the Board of Editorial Advisers for the Intellectual Property Counselor, published by West Publishing.


PROFESSIONAL POSITIONS

Of Counsel: Wood Herron & Evans LLP (Cincinnati, OH) (2010- )
Of Counsel: Greenebaum Doll & McDonald PLLC (Cincinnati, OH) (2008-10)
Partner/Of Counsel: Thompson Hine LLP (Cincinnati, OH) (2002-08)
Partner/Member: Frost Brown Todd LLC [formerly Frost & Jacobs LLP] (Cincinnati, OH) (1988-2002)
Of Counsel: Banner & Witcoff [formerly Banner, Birch, McKie & Beckett] (Washington, DC) (1987-88)
Counsel: King & Schickli (Lexington, KY) (1982-87)
Distinguished Senior Fellow: NKU Chase College of Law (Highland Heights, KY) (2013-2014)
Distinguished Professorial Practitioner in Residence: University of Dayton School of Law (Dayton, OH) (2007-2013)
Adjunct Professor: University of Cincinnati College of Law (1988-2006)
Adjunct Professor: American University College of Law (Washington, DC) (1987-88)
Visiting Professor: George Washington University National Law Center (Washington, DC) (1986-87)
Professor of Law: University of Kentucky College of Law (Lexington, KY) (1971-86)
Instructor in Law: Indiana University School of Law (Bloomington, IN) (1969-71)

LEGAL AFFILIATIONS/RECOGNITIONS

State Bar of California (1970- ) [inactive]
Ohio State Bar (1989 - )
Board of Advisors, Restatement (Third) of Unfair Competition (1987-92)
Advisory Board, Patent, Trademark and Copyright Journal (1987- )
Founder/Program Chair, All Ohio Annual Institute on Intellectual Property (1990-2013; Program Chair Emeritus 2014- )
Member, Board of Directors, United States Trademark Assn. (1990-92)
Member, Cincinnati Intellectual Property Law Association (1988- )
The Best Lawyers in America (1991-92 and later editions)
Marquis’ Who’s Who in American Law and Who’s Who in the World
Guide to the World’s Leading Experts in Trade Mark Law (1996 and later)
Who’s Who Legal, The International Who’s Who of Trademark Lawyers (2001- )
Chambers USAA, America’s Leading Lawyers for Business (2004- )
Ohio Super Lawyers 2005, 2006, 2007, 2008, 2009, 2010, 2011, 2012, 2013
World Trademark Review, The World’s Leading Trademark Professionals (2014- )
Member, INTA Panel of Neutrals (2000-2011)
Best Lawyers “Lawyer of the Year 2011” (Intellectual Property Law - Cincinnati, OH)
Best Lawyers “Lawyer of the Year 2012” (Trademark Law – Cincinnati, OH)
Best Lawyers “Lawyer of the Year 2014” (Litigation, IP and Trademark Law)

FORMAL EDUCATION
New York University School of Law, J.D., 1969; N.Y.U. Law Review, Associate Editor
Rutgers College, A.B., 1966 (Magna Cum Laude); Elected to Phi Beta Kappa (1966)

PRESENTATIONS/PUBLICATIONS

Over 240 public lectures; over 10 in-house presentations; over 20 publications


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.


Justin Watts joined our London IP/IT practice as a partner in March 2003, having previously been a partner at specialist intellectual property firm Bristows. Justin is dual qualified as a lawyer and chartered engineer, and holds a PhD in optoelectronics from Cambridge University. He worked in satellite communications engineering before qualifying as a lawyer.

Justin has extensive experience in the UK courts and in co-ordinating international IP litigation, including patent disputes and licensing enforcement. 

He has acted for clients in disputes across the EU, the US, and Asia. His patent experience covers semiconductors, computers and computer architectures, software, data storage and communications structures and standards, telecommunications and networks, electronic and optoelectronic devices and systems, electrical components and systems, biotechnology, medical appliances, imaging and printing, and mechanical patents.

Justin has advised a number of major companies on patent litigation and patent-related regulatory matters, including Philips, Sony Computer Entertainment, Abbott Laboratories, Hewlett-Packard, Johnson & Johnson, Schlumberger and Rolls-Royce.

His experience includes advising:

  • McDermott in patent litigation over oil pipelaying systems, including a claim to settle the terms of a licence of right, and a dispute over payment of stamp duty;
  • Philips in relation to enforcement of its licensing programmes in CD, CD-R and DVD discs and players;
  • a DRAM memory manufacturer in various multi-jurisdictional litigation arising out of cross-licence renewal negotiations, concerning questions of patent infringement and licence termination;
  • a microprocessor manufacturer in several multi-national patent litigation cases over microprocessor architectures and fabrication technology, involving patent infringement, licence and anti-trust issues;
  • Thomson Multimedia in litigation over MPEG digital television technology, involving patent infringement claims and counterclaims for licenses on reasonable and non-discriminatory terms;
  • a computer manufacturer in litigation over claims brought under allegedly essential patents for standard computer interfaces, including patent infringement, supplier indemnities, antitrust reasonable and non-discriminatory license obligations;
  • Schlumberger in patent litigation against EMGS over its portfolio of patents for electrical methods of oil exploration;
  • Various clients on the IP aspects of renewables, including wind turbine and carbon capture and storage technologies;
  • Rolls-Royce in its dispute on fan blade technology with Pratt & Whitney;
  • Sisvel, Philips, France Telecom, TDF and IRT in patent/antitrust litigation against Sandisk over MP3 players; and
  • An international technology company and mobile phone operator in multi-national patent litigation regarding mobile phones.


Katherine Basile has a unique combination of private practice and in-house counsel experience.  Ms. Basile continues in her long-standing role as primary outside counsel responsible for famous brands worldwide and for key brand protection and brand defense in TTAB, civil court, and multijurisdictional disputes.  Ms. Basile’s ability to combine strategic ownership analysis with her experience in administrative and civil court proceedings allows her clients to develop trademark and brand strategies that support their business objectives and to rely upon Ms. Basile to implement those strategies and enforce their rights – in the United States and worldwide.

Ms. Basile is past National Chair for INTA’s Saul Lefkowitz Moot Court Competition, 2012-2013; was a member of the INTA’s US Sessions Planning Subcommittee for the INTA Annual meeting in 2014; a member of the INTA President’s Task Force; and a member of the European Communities Trademark Association (ECTA) Law Committee). Ms. Basile has been recognized as a top professional in her field by a number of well-respected organizations including the World Trademark Review (WTR) 1000; Guide to the World’s Leading Trademark Law Practitioners; "Who's Who Legal;" "Legal 500 US;" "Who's Who Legal: California;" Who's Who of Trademark Lawyers;" and the "International Who's Who of Trademark Lawyers." Ms. Basile has presented at INTA, ECTA, MARQUES, AIPLA, ABA and ACCA conferences.

Educational Background:

UCLA Law,  JD 1987
UCI, 1980 BS Biology; 1984 BA German


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 2016). 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)).


Marc A. Cohn
Counsel

Marc Cohn is Counsel in the firm's intellectual property practice group. He concentrates his practice on medical device litigation and arbitration, including patent infringement, contract, license, and business tort cases. He has litigated throughout the US, including in New York, California, Maryland, Massachusetts, Delaware, Wisconsin, Minnesota, Illinois, Indiana, Texas, Washington, and Nebraska. Mr. Cohn also has experience filing patent review proceedings in the U.S. Patent Office, including proceedings co-pending with related litigations.

With nearly 15 years of experience in medical device practice, Mr. Cohn has become deeply familiar with the unique market dynamics and regulatory schemes affecting medical device manufacturers and distributors, including the role of reimbursement and the Food and Drug Administration in bringing medical devices to market.

Mr. Cohn's medical device experience includes cardiac stents, drug-eluting stents, and catheters, women's health, including oncology treatment catheters, uterine fibroid removal devices, and diagnostic kits, electronic tissue stimulators, magnetic resonance imaging and medical ultrasound.

He also has experience in other technologies, including: business methods via website portals, temperature sensing equipment, telecommunications equipment and systems, commercial lawn mowers, and diapers.

Representative Matters

  • Inflow v. Boston Scientific. Complete defense victory against a claim for US$105 million for patent infringement relating to coronary stents.
  • GE Healthcare v. ABI. Complete plaintiff's victory in an arbitration involving the interpretation of a license agreement.
  • Boston Scientific v. Cook/Guidant. The court granted Boston Scientific's motion for summary judgment and entered a permanent injunction barring Cook and Guidant from collaborating to exploit licensed technology in the multi-billion dollar drug-eluting stent market.
  • Boston Scientific v. Medtronic. Won judgment for Boston Scientific in excess of US$160 million and secured permanent injunction against future infringing sales of coronary stent systems.
  • Kimberly-Clark v. Procter & Gamble. Represented Procter & Gamble in the "diaper wars" arbitration in defense of a patent infringement claim against Pampers diapers. The arbitration panel found the patent-at-issue invalid, and the panel's opinion was upheld on appeal.
  • Freedom Wireless, Inc. v. Verizon Wireless. In multi-defendant suit re telecommunications systems, represented only victorious defendant.

Practice Areas

Intellectual Property

Education

JD, University of Virginia School of Law, 2000
BS in Applied and Engineering Physics, cum laude, Cornell University, 1997

Admissions

District of Columbia
US Court of Appeals for the First Circuit
US Court of Appeals for the Seventh Circuit


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.