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Intellectual Property Rights Enforcement 2014


Speaker(s): Angelo E.P. Mazza, Brian W. Brokate, Bruce W. Baber, John Zacharia, Jonathan Z. King, Joseph P. Lavelle, Kathleen E. McCarthy, Katie M. Lachter, Kristina Rosette, Nicole Hyland, Nur-ul-Haq, Shane P. Berry, Steven M. Gruskin
Recorded on: Jan. 31, 2014
PLI Program #: 50874

Joseph Lavelle is a partner in DLA Piper’s Intellectual Property and Technology Practice.

An experienced patent lawyer, Mr. Lavelle focuses primarily on the preparation and trial of patent infringement cases. He also has handled a number of successful appeals to the Court of Appeals for the Federal Circuit. Additionally, he is a well-respected author, teacher and lecturer regarding the antitrust/IP interface.

Patent Litigation

Mr. Lavelle 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, Mr. Lavelle 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.

Chambers USA: America's Leading Lawyers for Business has recognized Mr. Lavelle for his practice in two areas, Intellectual Property and Intellectual Property: Litigation, and notes that he is praised as "a fantastic patent lawyer." He is also recognized by Legal 500 for providing "top notch, bar-none technical understanding." 

Antitrust

Mr. Lavelle 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. He has also represented clients in patent-antitrust matters before the FTC and the Antitrust Division of the Department of Justice.

Additionally, Mr. Lavelle has served as an adjunct professor of law at Georgetown University Law Center, where he taught courses on patent/antitrust and patent misuse law. He has written and lectured extensively in this field.

Education

University of Pittsburgh School of Law (1982) J.D.
Order of the Coif
Managing Editor, University of Pittsburgh Law Review
summa cum laude

Wilkes University (1979) B.S.

Admissions

District of Columbia

United States Patent and Trademark Office


Jonathan Z. King is the Chairman of Cowan, Liebowitz & Latman, P.C.  He has more than twenty years experience as an intellectual property litigator, and handles trademark and copyright disputes in a wide range of industries, including music, fashion, sports, pharmaceuticals and healthcare, software, advertising, licensing, publishing, food and hospitality, and various consumer products. He has tried numerous trademark and copyright cases, and handles many opposition and cancellation proceedings before the Trademark Trial Appeal Board. 

Mr. King’s engagements have included a number of landmark intellectual property matters, including some of the first cases involving the use of trademarks as internet keywords, online liability for linking to pirated materials, and the application of copyright law to the “resale” of digital  files.  He also has extensive experience in the use of consumer surveys in Lanham Act litigation. 

Mr. King graduated Phi Beta Kappa and Summa Cum Laude from Princeton University in 1987 and Cum Laude from Harvard Law School in 1991.  He served as Law Clerk to the Honorable Douglas P. Woodlock of the United States District Court for the District of Massachusetts. He has been named as a New York Super Lawyer in intellectual property litigation for the past seven years, is recognized in The Legal 500 for both copyright and trademark litigation, and is the co-author of a treatise chapter on trade secrets law.  

Mr. King is also a professional jazz pianist and composer, with four recordings as a leader and many others as a sideman to his credit.  He has toured four continents as a musician and is also the author of What Jazz Is, a musical primer in the history and techniques of jazz music.


Position/Title:  Partner
Firm or Place of Business: Sughrue Mion, PLLC
Address: 2100 Pennsylvania Ave. NW, Wash. D.C. 20037
Phone: 202 663.7372
Fax: 202.293.7860
E-Mail: sgruskin@sughrue.com

Primary Areas of Practice: Intellectual Property pertaining to Electrical/Mechanical patents, including IP Litigation, Inter-Partes and Post Grant Review (IPR/PGR) proceedings under the AIA, ITC Section 337, Patent Counseling and Patent Prosecution

Law School/ George Washington University School of Law
Under Graduate School: University of Miami

Work History:  Steve has more than 20 years of experience in all aspects of intellectual property law, including district court jury trials, appeals to the CAFC, bench trials at the ITC, IPR/PGR proceedings under the AIA, patent prosecution, reissue, re-examination, opinions relating to validity/infringement/enforceability, client counseling and strategic management and enforcement of large domestic and international patent portfolios.

Professional Memberships:
American Intellectual Property Law Association (AIPLA)
International Association for the Protection of Intellectual Property (AIPPI)

American Bar Association (ABA)
Tau Beta Pi
Pi Tau Sigma
International Intellectual Property Law Association
American Society of Mechanical Engineers
District of Columbia Bar Association - Patent, Trademark and Copyright Law Section


Primary Areas of Practice: Corporate Security; Brand Protection

Undergraduate: Bachelor of Science, Eckerd College, St. Petersburg, Florida

Work History: Supervisory Special Agent, FBI Special Agent, Florida Department of Law Enforcement

Professional Memberships: Mr. Berry is an Executive Board Member for the International AntiCounterfeiting Coalition (IACC).  He is also a member of the International Security Management Association (ISMA), the American Society for Industrial Security (ASIS) and the US Department of State’s Overseas Advisory Council (OSAC).


John H. Zacharia is the Assistant Deputy Chief for Litigation with the Computer Crime and Intellectual Property Section (CCIPS) of the United States Department of Justice’s Criminal Division.  In this position, John prosecutes and helps to manage the section’s prosecution of large-scale, multi-jurisdictional intellectual property (IP) crimes and computer crimes.  John has also participated in domestic and international IP enforcement training and outreach as well as in developing and drafting legislative and policy initiatives addressing all facets of IP crime.  John has prosecuted with co-counsel and obtained jury verdicts in one of the largest counterfeit goods prosecutions in U.S. history and in large-scale copyright disc piracy cases, and obtained convictions in high-impact online copyright piracy cases. John has also successfully handled federal appeals brought by defendants convicted of IP crimes.  Before joining CCIPS, John was a Trial Attorney with the Federal Programs Branch of the United States Department of Justice’s Civil Division, where he specialized in copyright enforcement issues as well as constitutional and administrative law litigation on behalf of the United States and various executive federal agencies.  Prior to joining the Department of Justice, John was a Senior Associate at the law firm of Howrey & Simon where he specialized in complex domestic and international commercial litigation.  John began his legal career as an associate in the general litigation department at the law firm of Carlton Fields.  John received his law degree from the University of Virginia in 1995. 


Katie Lachter focuses her practice on attorney professional responsibility and risk management. She represents lawyers and law firms with respect to all aspects of legal ethics and the law governing lawyers. Having previously practiced for eight years as a litigator in both civil and criminal cases, Ms.

Lachter is skilled in identifying potential problems before they arise and advocating on her clients' behalf. She is also a national award-winning writer and a frequent speaker on professional responsibility issues.

Ms. Lachter's practice includes:

  • Disciplinary defense
  • Bar admissions and reinstatements
  • Sanctions and contempt proceedings
  • Fee disputes
  • Disqualification and withdrawal motions
  • Attorney-client privilege and confidentiality issues
  • Conflicts of interest
  • Attorney advertising
  • Law firm risk management
  • Legal malpractice actions

Professional Background

Prior to joining Hinshaw & Culbertson in February 2011, Ms. Lachter was an associate in several leading New York law firms, including the renowned litigation department at Paul, Weiss, Rifkind, Wharton & Garrison, where she worked on matters for the firm's largest client. From 2003–2004, she was a law clerk to the Honorable Bruce W. Kauffman, U.S. District Court, Eastern District of Pennsylvania

Professional Affiliations

  • New York City Bar Association, Committee on Professional Ethics, Member
    • 2009–2011, Secretary
    • 2011–Present 
  • Practising Law Institute, Faculty Member (2010–Present)
  • Association of Professional Responsibility Lawyers (APRL) Member (2011–Present)
  • New York Women's Bar Association, Ethics Committee, Member (2013–Present) 

Honors & Awards

  • 2012 recipient of the Burton Award for Distinguished Legal Writing
  • Legal Aid Society’s 2009 Pro Bono Publico Award, 2009

Presentations

  • "#SocialMediaEthics," Legal Malpractice & Risk Management Conference, Chicago, Illinois, March 2016.
  • "Five Common Attorney Mistakes to Avoid," webcast, West LegalEdcenter, January 2016.
  • "The Perils of Multijurisdictional and Cross-Border Practice," Legal Malpractice & Risk Management Conference, Chicago, Illinois, February 2015.
  • "(Don't) Just Bust a Move: What Lawyers and Law Firms Need to Know About Lateral Movement," West LegalEdcenter live webcast, September 2014.
  • "Stump the Panel," Legal Malpractice & Risk Management Conference, Chicago, Illinois, March 2014.
  • "Ethical Considerations in False Claims Act Cases," New York State Bar Association, New York, New York, December 2013.
  • "Other People’s Money: Handling Client Funds and Escrow Accounts," CLE presentation, New York Women's Bar Association, September 2013.
  • "Litigation Funding," Legal Malpractice & Risk Management Conference, Chicago, Illinois, March 2013.
  • "Ethics in the Electronic Age: Be Careful When Using That Smart Phone, Blackberry, Tablet, Blog, Social Network . . ." New York City Bar Internet & Consumer Law series, New York, New York, June 2012.
  • "IP Lawyer Ethical Issues," Intellectual Property Law Institute 2011, New York, New York, September 2011.
  • "Playing Smart: Civility and Professionalism," Association of Professional Responsibility Lawyers (APRL) Annual Meeting, Toronto, Ontario, August 2011.
  • "Ethics for Business/Transactional Lawyers," New York State Bar Association seminar, Uniondale, New York, June 2011.
  • "What Every Attorney Must Know About Ethics, Parts I and II," at the Practising Law Institute, New York, New York, August and December 2010.

Publications

  • Co-author of "E-data and the 'All Records' Exception," published by Law360, March 2011.
  • Editor-in-Chief of the Ethics FAQ page on the Bar of the City of New York’s Ethics Committee webpage.

Personal

Central Park Conservancy, member

Service Areas

Lawyers for the Profession®
Professional Liability
Counselors for the Profession®
Litigators for the Profession®

Education

J.D., cum laude, Harvard Law School, 2003

  • Editor, Journal on Legislation

B.A., summa cum laude, Government, Dartmouth College, 2000

Admissions

New York

U.S. District Court for the Eastern District of New York

U.S. District Court for the Southern District of New York

U.S. District Court for the Western District of New York


Nicole Hyland is a partner in the Litigation Group and Professional Responsibility Group at Frankfurt Kurnit. Her practice focuses primarily on legal ethics, professional responsibility, and legal malpractice.

Ms. Hyland counsels attorneys and law firms on conflicts of interest, legal fee disputes, escrow issues, disqualification motions, multijurisdictional law practice, business transactions with clients, lateral transitions, law firm formation and break-ups, advertising and social media use, and other professional responsibility issues. Ms. Hyland also represents defendants and plaintiffs in legal malpractice and breach of fiduciary duty disputes.

In addition to her legal ethics and professional responsibility practice, Ms. Hyland has an active litigation practice, focusing on art, literature, and entertainment industry disputes. She handles copyright, trademark, right of publicity, and defamation claims, as well as disputes over financing, production, distribution, and talent agreements. She counsels art, literature, and entertainment industry clients on content issues, including copyright, trademark, right of publicity, television formatting rights, privacy, defamation, and fair use.

Ms. Hyland is Chair of the Committee on Professional Ethics of the New York City Bar Association (NYCBA). In that role, she oversees the City Bar’s ethics hotline, which provides ethical guidance to lawyers from all over New York State. She also oversees the drafting of informal and formal ethics opinions on a variety of topics, including: non-refundable flat fee arrangements, the use of Professional Employer Organizations by law firms, the ethics of using a virtual law office, ethical guidelines for accepting credit cards, and business arrangements between law firms and nonlegal organizations.

Ms. Hyland serves as Co-Chair for the Ethics Committees of the Women’s Bar Association of the State of New York (WBASNY) and the New York Women’s Bar Association (NYWBA) – WBASNY’s New York City chapter. For the past two years she has hosted the NYWBA annual meeting at Frankfurt Kurnit followed by an Ethics CLE program for NYWBA members and attendees.

Ms. Hyland serves on the Board of the Association of Professional Responsibility Lawyers (APRL) and is a member of the New York State Bar Association Committee for Standards on Attorney Conduct (COSAC). She is also a member of the American Bar Association’s Center for Professional Responsibility.

Ms. Hyland writes and lectures frequently on legal ethics and professional responsibility issues. She recently joined Professor Roy Simon as a co-author on his seminal treatise: Simon’s New York Rules of Professional Conduct Annotated (2015 ed.). She is on the editorial board of the New York Legal Ethics Reporter and contributes to the Legal Ethics Forum blog. Ms. Hyland is admitted to practice in New York.


Nur-ul-Haq is US Privacy Counsel at NBCUniversal, where he advises on issues relating to privacy and data protection for the company’s portfolio of brands, including its sports, news, film and entertainment divisions, as well as its movie ticketing and theme park businesses.  Nur also provides privacy guidance in the context of internal company operations, including human resources and corporate sourcing.

Prior to joining NBCUniversal, Nur was a staff attorney in the Northeast Region of the Federal Trade Commission, where he oversaw and participated in investigations and litigations involving mergers, anticompetitive conduct, and unfair and deceptive business practices directed at consumers.  While at the FTC, Nur served on the trial team in the FTC’s antitrust litigation against the Intel Corporation and also obtained a multimillion dollar judgment in federal District Court for the deceptive advertising of a purported diet aid in FTC v. Bronson Partners.  In addition to his law enforcement and litigation duties, Nur frequently spoke to consumer and business groups as well as the news media on various topics, such as identity theft, privacy and data security, and online consumer fraud.

Nur is a graduate of Boston University School of Law (cum laude) and Georgetown University.  He is a member of the American Bar Association Sections of Antitrust Law and Science and Technology Law, the Massachusetts Bar Association, the New York State Bar Association, and the International Association of Privacy Professionals.


Primary Areas of Practice: IP

Work History: At Gibney since 1988

Professional Memberships: IACC, INTA, ABA, NYSBA

Mr. Mazza has organized and conducted training sessions for CBP, ICE, FBI and state and local law enforcement in the US, Canada, Mexico and Europe.  Over the course of almost 24 years involved in training programs, he has trained over 55,000 law enforcement personnel.

Mr. Mazza has organized and conducted training sessions for CBP, ICE, FBI and state and local law enforcement in the US, Canada, Mexico and Europe.  Over the course of almost 24 years involved in training programs, he has trained over 55,000 law enforcement personnel.

He has been the National Law Enforcement Training Coordinator for the IACC for over 20 years.  During that time he has worked closely with law enforcement at the federal, state and local levels to organize and carry out training related to counterfeit products and applicable laws.  Since 2001 he has been President of the IACC Foundation, a 501 (c) (3) corporation dedicated to providing educational programs and materials for law enforcement and the public. He created the IACC Foundation's well regarded training CD-ROM for law enforcement which is updated annually and on its 9th edition.

Mr.  Mazza is a graduate of Fordham University and Fordham University School Law.  He practices in the Intellectual Property area at Gibney, Anthony & Flaherty, LLP in New York City where he is a Partner.


Primary Areas of Practice:        Trademark, design rights, copyright and false advertising litigation and counseling

 

Law School/Graduate School:        Columbia University

 

Work History:        Katie McCarthy is a partner in King & Spalding’s New York office.  Katie is a Columbia University School of Law graduate with 30 years of experience.  Katie stays on top of IP issues through work for clients and as a member of the Board of Directors of the NYIPLA and the Trademark Committee for the New York City Bar, speaking frequently at PLI, and as Editor-in-Chief of INTA’s scholarly journal, The Trademark Reporter.  Katie also assists Siegrun Kane with editing Siegrun’s PLI treatise, Kane on Trademark Law.  In her spare time, Katie enjoys rediscovering all of the patent jokes in “Calvin & Hobbes” while reading the old books with her younger son and trying to teach her aspiring rapper older son about the risks of extensive sampling.

 

Professional Memberships:        INTA (Editor in Chief The Trademark Reporter®); NYIPLA (Board Member); NYC Bar (Member, Trademark Committee)


Primary Areas of Practice:  New gTLDs and domain names, Internet-related trademark matters, trademark advice, prosecution, litigation, and transactions

Law School/Graduate School:  University of Georgia School of Law, J.D., cum laude, 1995

Work History:  Covington 1995-present

Professional Memberships:  President, ICANN Intellectual Property Constituency


Brian Brokate is head of Gibney’s Intellectual Property Practice Group. He has extensive experience in the application of intellectual property law, and in investigation and enforcement procedures to combat the infringement and counterfeiting of trademarks and copyrights. Mr. Brokate focuses on anti-counterfeiting and anti-piracy and handles all stages of civil anti-counterfeiting and infringement litigation.  He also has had extensive involvement in state and federal criminal actions.

In addition to his practice, which also includes commercial litigation, Mr. Brokate is the Treasurer, a Member of the Board of Directors and on the Executive Committee of the International Anticounterfeiting Coalition, Inc. (IACC). He is also the Treasurer of the New York Task Force (NYTF), a coalition of brand owners affected by counterfeiting. Mr. Brokate is also a member of the International Trademark Association (INTA) where he serves as a Board Member and is on the Anticounterfeiting Committee.

An oft-quoted source for industry pieces on trends in IP law, he has also authored and co-authored numerous articles and publications and speaks before industry and trade associations on intellectual property law matters.


Bruce W. Baber is a senior partner and founding member of King & Spalding’s global Intellectual Property Practice.  Mr. Baber is active in all aspects of the firm’s IP practice, with an emphasis on litigation and other contested matters.

Mr. Baber participates actively on behalf of a wide variety of clients in both jury and bench trials of patent, trademark, trade dress and copyright infringement litigation matters, as well as adversarial patent, trademark and false advertising proceedings before the U.S. International Trade Commission, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, and the National Advertising Division of the Council of Better Business Bureaus.  Since he began practice in 1979, Mr. Baber has represented many global and nationally-known companies in dozens of patent infringement, copyright infringement and trademark infringement, dilution and counterfeiting matters, as well as in a wide variety of false advertising disputes.

Mr. Baber has substantial experience in the protection of trademarks, copyrights and other forms of intellectual property, the prosecution of applications for registration of such properties, and the development and implementation of worldwide protection strategies.  He has been  involved in numerous major licensing and other intellectual property related corporate transactions, joint venture agreements and marketing agreements.