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Advanced Licensing Agreements 2015


Speaker(s): Brett M. Schuman, Christian H. Nadan, Daniel Burns, Gillian Thackray, Grace L. Pan, Joseph Yang, Kenneth M. Kaufman, Marc P. Schuyler, Marcelo Halpern, Mark S. Holmes, Marya Postner, Nader A. Mousavi, Peter J. Kinsella, Sarah Angela Solomon, Terence N. Church, Tiki Dare
Recorded on: Jan. 28, 2015
PLI Program #: 59089

Joseph Yang is a partner at PatentEsque Law Group, LLP

Joe specializes in structuring and negotiating patent/tech- centric deals (especially licensing and joint ventures), and in the use of IP as strategic business assets.  He has been lead counsel on hundreds of deals involving tens of billions of dollars in value – across the computer/software/electronics, semiconductor, entertainment, consumer goods, manufacturing and healthcare industries.  Joe has also been an arbitrator, overseen patent litigation, led development of corporate patent portfolios, and served as an expert witness in the area of patent licensing. 

Joe is also currently a Lecturer in Law at Stanford Law School, where he co-teaches the "Patent and Technology Licensing" course.  He previously co-taught the “Patent Law and Policy” course as an adjunct faculty member at U.C. Berkeley School of Law.

Joe previously served as VP & General Counsel of Cryptography Research, Inc. (now part of Rambus Inc.), playing a key role in developing and implementing a patent licensing program under which more than 8 billion devices a year are currently being made by the company’s licensees worldwide in the smartcard, semiconductor, pay TV, printer and other industries, as well as developing and managing the company's patent portfolio.

Joe is a recognized authority on IP law.  He has been named one of the “World’s Leading IP Strategists” and “World’s Leading IP & Technology Licensing Lawyers” by Intellectual Asset Management magazine, and is profiled in “Marquis Who’s Who in American Law”, “Marquis Who’s Who in America”, and “Marquis Who’s Who in the World”.  Joe co-chairs the “Advanced Patent Licensing,” “Advanced Licensing” and “Understanding the IP License” courses at the Practising Law Institute in NYC, SF and Chicago.  He has written for journals and books, and been cited by U.S. federal courts and treatises, on patent and licensing law. 

Before PatentEsque Law Group, Joe co-founded and later led the IP Strategy & Transactions practice based in the Silicon Valley office of the multinational law firm Skadden, Arps, Slate, Meagher & Flom LLP.  Before that, he was at other New York- and California-based law firms.  In his early career, Joe was a research engineer in the aerospace and energy industries.  He holds a J.D. from Stanford Law School and a Ph.D. (engineering) from the California Institute of Technology, where he is a board member of the Caltech Associates, and previously served on the board of the Caltech Alumni Association.


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

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

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

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

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


Gillian Thackray is Vice President, Associate General Counsel and Chief IP Counsel at The Clorox Company, a consumer products company headquartered in Oakland, Ca with a diversified portfolio of products that, in addition to their iconic bleach and cleaning products also includes such leading brands as Kingsford Charcoal, Brita water filtration products, Glad bags, wraps and containers, and Burt’s Bees natural personal care products.  In this role, Ms. Thackray oversees IP strategy, enforcement and licensing. She also advises the Company regarding IP in M&A activity, and counsels the business on complex IP transactions, partnerships, and business opportunities.

Prior to joining Clorox, Ms. Thackray was a partner with the AmLaw 100 firms of Quinn Emanuel and Covington and Burling, providing clients with strategic guidance regarding patent assets, including advice regarding IP in M&A and joint ventures, as well as litigating patent cases. Prior to moving in-house, she was named a ‘Rising Star’ by Super Lawyers for three consecutive years. Ms. Thackray is also a fellow of Litigation Counsel of America, an invitation-only trial lawyer’s honorary society.


Kenneth M. Kaufman is a Partner in the Washington, D.C. office of Manatt, Phelps & Phillips, LLP.  His practice focuses on entertainment and media law, copyright, content and music licensing, digital media, and sports law.  He represents a wide range of clients including television networks and distributors, international media and publishing companies, video producers, music publishers, digital media and technology companies, telecommunications companies, photographers, visual artists, copyright licensing companies, Broadway theatre producers, private equity firms, foundations, composers, recording artists and authors.

Ken is a recognized authority in the fields of entertainment law and copyright.  He was named the 2014 Washington, D.C. Copyright Law “Lawyer of the Year” by The Best Lawyers in America, where he is also listed in the practice areas of entertainment law-motion pictures and television, entertainment law-music, and intellectual property litigation.  He has also been recognized by Chambers USA: America’s Leading Lawyers for Business, Washington, D.C. Super Lawyers, Washingtonian Magazine’s Best Lawyers, and The Legal 500 United States.

Ken has extensive experience as both in-house and outside counsel in the entertainment and communications industries.  Immediately prior to joining Manatt, he was a partner at Skadden, Arps, Slate, Meagher & Flom LLP.  Previously, he served as Senior Vice President, General Counsel of Showtime Networks Inc. in New York; as Senior Vice President, Corporate Affairs and General Counsel of PolyGram Records, Inc. in New York; and as General Counsel of The John F. Kennedy Center for the Performing Arts in Washington, D.C.  In two of those positions, he was the first in-house attorney and organized the in-house legal department.  Previously he served as Assistant Counsel of a U.S. Senate Judiciary Subcommittee.

In addition to his law practice, Ken is a 2016 Advanced Leadership Fellow at Harvard University.  He has also served as a Visiting Lecturer at Yale Law School, where he taught a course on entertainment law, copyright and Internet law for several years, and as a Professorial Lecturer in Law at George Washington University Law School, teaching a course on copyright law.

Ken is a frequent lecturer for the Practising Law Institute and serves as Co-Chair of PLI’s annual conference on Counseling Clients in the Entertainment Industry.  He also speaks on copyright and content licensing at the annual PLI Advanced Licensing Agreements conference and serves on the Governing Committee of the American Bar Association’s Forum on the Entertainment and Sports Industries and on the Planning Committee for the annual Stanford E-Commerce Best Practices Conference.  In addition, he teaches an annual course on copyright law and litigation for the D.C. Bar, is a member of the Board of Directors of Washington Area Lawyers for the Arts, and has served as a Trustee and Chair of the Washington, D.C. Chapter of the Copyright Society of the U.S.A.  He is a graduate of Harvard College (magna cum laude) and Yale Law School (where he was an Editor of the Yale Law Journal), and is admitted to practice in New York, California and the District of Columbia.


Marcelo Halpern is a partner with the firm's Business group and is co-chair of the firm’s national Technology Transactions & Privacy group.  Marcelo's practice focuses on transactional and strategic matters involving the development, deployment and distribution of technology.  His clients include global "FORTUNE 100" companies, start-up and emerging growth companies, as well as U.S.-based and international governments and non-profits. His experience includes structuring and negotiating technology and intellectual property-oriented strategic alliances and joint ventures; software, data and content licensing; outsourcing and ERP implementation transactions; counseling on digital strategy concerns including open source licensing, data security, data use and privacy issues; hosting, cloud computing and software services agreements; data analytics and contract licensing; research and development transactions; private labeling, co-branding and other marketing and distribution strategies; and intellectual property and technology issues arising in the context of mergers and acquisitions, financing and bankruptcy transactions.

Education

  • Columbia University School of Law, J.D., 1992
  • Columbia University, Graduate School of Business, M.B.A., 1992
  • Wesleyan University, B.A., 1985

Professional Recognition

  • Chambers' USA Guide to Leading Business Lawyers, 2004 - present 
  • The Best Lawyers in America, 2006 - Present(2016 Technology Law "Lawyer of the Year" for Chicago)
  • Illinois Leading Lawyers Network, 2004 - present 
  • Legal 500, Leading Lawyer, 2005 - present

Professional Leadership

  • Practising Law Institute, Understanding the Intellectual Property License program, Chair
  • Illinois Legal Aid Online, Board of Directors, Immediate Past President
  • International Technology Law Association (ITechLaw), Membership Committee, Local Representative 
  • American Bar Association, Science and Technology Section, Member
  • Illinois State Bar Association, Member
  • Chicago Bar Association, Computer Law Committee, Member


Primary Areas of Practice:

Technology Transactions, including Technology Related M&A, Licensing, Joint Development, Strategic Alliances; Corporation & Entity Support, including Organization, Maintenance & Private Funding; Trademark & Copyright Registration & Protection

Work History:

Terry Church is an experienced transaction attorney specializing in technology licensing and IP related transactions.  His extensive corporate, business transaction, and licensing experience includes over 15 years at major technology companies in Silicon Valley, including PeopleSoft, Cisco Systems, and LSI Logic.  While he was at Cisco, the company was closing up to 25 acquisitions a year.  Terry served as VP and Assistant General Counsel at PeopleSoft through Oracle’s hostile takeover, responsible for 20 professionals covering licensing, strategic alliances, IP management, and M&A.  His experience includes strategizing, drafting and negotiating complex transactions, including deals with companies in Europe and Asia.

After obtaining his law degree from Hastings Law School in San Francisco, Terry served as law clerk for the Chief Judge of the US District Court for the Eastern District of Tennessee, practiced as a litigation associate at Cooley, LLP, and worked in London as Senior Legal Advisor for British Gas, Ltd. where he negotiated sophisticated gas transportation agreements with major energy companies in Europe.

Terry currently operates out of the Law Offices of Terence N. Church & Associates, a growing practice in the San Francisco Bay Area.  Terry’s clients include both publicly traded and privately held semiconductor and software companies in California and elsewhere, for whom he has served as both corporate and transaction counsel.  Terry has 2 sons and lives with his wife in Danville, CA.

Law School:  Hastings College of the Law, San Francisco CA

Professional Memberships:

  • ProVisors Group; Member, Executive Committee Walnut Creek I; Host for East Bay M&A Affinity Group
  • San Ramon Chamber of Commerce, Board of Directors 2012 to Present; Board Chairman 2010
  • San Ramon Valley Unified School District, Facilities Oversight and Advisory Committee, 2013 to Present
  • Rotary Club, Danville Sycamore Valley Chapter
  • Past President, Association of Corporate Counsel – San Francisco Bay Area Chapter
  • Member State Bar of California


Primary Areas of Practice: Life Sciences Licensing and Commercial Transactions

 

Law School/Graduate School: 

            J.D., University of California, Berkeley School of Law (Boalt Hall)

            MA & Ph.D. in Molecular Biology, Princeton University

 

Work History: Cooley LLP, 1996 to present 


Primary Areas of Practice:               

Intellectual Property Litigation

 

Law School:                                       

Northwestern University School of Law, J.D., 1992; Phi Delta Phi and lota Sigma Pi  

 

Work History:

Holland & Knight LLP; Orrick, Herrington & Sutcliffe LLP; Kaye Scholer LLP; Frommer Lawrence & Haug LLP

                                             

Professional Memberships:             


American Bar Association 

New York State Bar Association

District of Columbia Bar  

New Jersey State Bar Association

Committee on Patent, Trademark and Copyright Law and Intellectual Property Section

Japan Federation of Bar Associations

Daini Bengoshi Kai

Taipei Bar Association  

Los Angeles Intellectual Property Law Association

New York Intellectual Property Law Association

American Intellectual Property Law Association

Southern California Chinese Lawyers Association

American Chemical Society

National Asian Pacific American Bar Association


Sarah A. Solomon is a partner in the firm’s Technology & Life Sciences Group.

Ms. Solomon represents biotechnology, pharmaceutical, medical device, diagnostic and other life sciences companies in connection with their intellectual property, commercial and M&A transactions. She regularly advises private and public companies on complex strategic collaboration and partnering transactions (such as co-development, joint research and development agreements, patent licenses, strategic alliances and joint ventures); research, development and commercial relationships (such as manufacturing, distribution, supply, clinical trial, university licenses and services arrangements); and mergers and acquisitions (such as product acquisitions, spin-outs and patent portfolio acquisitions). Ms. Solomon also counsels clients in connection with international transactions and relationships in North America, South America, Europe and Asia.

Education

  • J.D., University of California Hastings College Law, 2001
  • B.S., Biology, University of California, San Diego, 1996

Bar and Court Admissions

Ms. Solomon is admitted to practice in California.


Peter Kinsella is a partner in the firm's Technology Transactions & Privacy and Intellectual Property practices. His practice is focused on advising start-up, emerging and large companies on technology, licensing and intellectual property transaction matters. He is a frequent lecturer on licensing and technology issues. Prior to joining the firm in 2010, Pete was a partner with Faegre & Benson. Prior to that, he worked in various legal capacities with Qwest Communications International, Inc. (formerly U S WEST, Inc.) in Denver and Honeywell, Inc. in Minneapolis.

Pete offers extensive experience structuring and negotiating domestic and international agreements in a wide variety of areas, including: cloud services, outsourcing, product development, technology transfer, telecommunications, data sharing, complex procurement, product distribution and sales, contract manufacturing, and a wide variety of patent, trademark and copyright licenses. He offers significant international experience, including, intellectual property holding companies, export control and international intellectual property issues. Pete also regularly handles intellectual property issues in connection with public and private company mergers and acquisitions, including due diligence and licensing issues. The value of several of these transactions has exceeded one billion dollars.

Pete has been materially involved in a number of high profile intellectual property disputes in a variety of industries, including the semiconductor, telecommunications, computer networking, automotive, clean- tech and health sciences industries. In 2005, he wrote significant portions of the appeal brief filed on behalf of AWH Corporation in the United States Court of Appeals for the Federal Circuit en banc proceedings, Phillips v. AWH Corporation, concerning the procedures that should be used to determine patent claim construction. Most recently, Pete successfully represented a third party semiconductor tooling manufacturer in connection with a government ITC investigation seeking to ban the importation of hard drives into the United States.

As a registered patent attorney, Pete counsels clients on patent matters, including, infringement, validity, and pre-litigation issues. While at U S WEST, Inc. he was responsible for managing over 1500 trademark applications and registrations in 62 countries and all trademark opposition and litigation proceedings.

EDUCATION

  • University of Minnesota Law School, J.D., 1993
  • North Dakota State University, B.S., 1990

BAR ADMISSIONS

  • Colorado
  • Minnesota
  • U.S. Patent and Trademark Office

COURT ADMISSIONS

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


Brett Schuman, a partner in Goodwin Procter's IP Litigation Group, focuses his practice on patent and other IP litigation in all of the federal and state courts in California, the Eastern District of Texas, the Eastern District of Virginia and the District of Delaware.

Mr. Schuman focuses his practice on patent cases on behalf of both plaintiffs and defendants across the technology industry in the district courts and at the Federal Circuit. He serves as lead partner and lead trial counsel in patent infringement litigation matters involving mobile phone technology, broadband communications technology, semiconductor fabrication and circuitry, wearables and pharmaceuticals. He has also served as lead counsel in several litigations involving patent license agreements.


Recognized as one of the “World’s Leading Patent Practitioners” by Intellectual Asset Management (IAM) Patent 1000 (2012-2015) and named as one of the “Top 100 Lawyers in California” by Daily Journal (2012), Nader A. Mousavi is a partner, and co-head of the Firm’s Intellectual Property & Technology Group and the Firm’s Cybersecurity Group. He joined the Firm in 2010.

Mr. Mousavi’s practice includes advising clients on intellectual property, technology and data protection issues in a wide range of corporate and transactional matters, including mergers and acquisitions, joint ventures, collaborations, financings, licensing, outsourcing, monetization, manufacturing, commercialization, R&D and settlements.

Mr. Mousavi was lead IP counsel to Eastman Kodak Company in its successful global reorganization and led the sale of its portfolio of 1,100 digital imaging patents and a series of associated patent licensing transactions. He also was counsel to Silver Lake Partners and Skype in connection with the $8.5 billion sale of Skype to Microsoft.

After graduating from Stanford Law School, he joined TCS, an early-stage telecommunications software (SaaS) company, where he led strategy and legal affairs as TCS pioneered the “softswitch” and was acquired by a leading broadband equipment company. Following the acquisition, Mr. Mousavi served as senior counsel for the acquirer until joining Hale and Dorr (now Wilmer Cutler Pickering Hale and Dorr) in 2001. Mr. Mousavi later also served on secondment to Cisco Systems as lead technology counsel to Cisco’s IP communications business unit. He became a partner at Wilmer Cutler Pickering Hale and Dorr in 2008 and co-founded the firm’s Palo Alto office before joining Sullivan & Cromwell.

Awards and Recognitions

  • The American Lawyer – named as one of the “Lateral All-Stars,” a list honoring the most significant partner moves of the year (2010)
  • Chambers USA: America’s Leading Lawyers for Business – recognized for IT and Outsourcing (2008-2015)
  • Daily Journal – named as one of the “Top 100 Lawyers in California” (2012)
  • IAM Licensing 250: The World’s Leading Patent and Technology Licensing Lawyers – recognized in 2010 and 2011/2012 (the only years this recognition was given)
  • IAM Patent 1000 – The World’s Leading Patent Practitioners (2012-2015)
  • The Legal 500 United States – recognized for Patent Licensing and Transactional Law (2014, 2015)
  • Northern California Super Lawyers (2009-2014)
  • Silicon Valley/San Jose Business Journal – recognized as one of the top “40 under 40” business professionals in Silicon Valley (2007)


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.


Dan Burns, a partner in Goodwin Procter's Business Law Department and a member of its Patent Prosecution and Technology Transactions Practices, focuses his practice on domestic and international patent prosecution in the areas of software, Internet, information retrieval, cloud computing, renewable energy, machine learning, image processing, 3-D graphics, web technologies and bioinformatics, among others. His work includes performing invention harvests with client engineering teams and serving as a liaison between the teams and in-house counsel, as well as reviewing and revising intellectual property agreements, preparing clients for licensing negotiations and performing open source investigations. Mr. Burns also has experience investigating patent holdings and providing recommendations for design-around and licensing opportunities. He joined Goodwin Procter in 2013.

PROFESSIONAL ACTIVITIES

Mr. Burns is a member of the Association for Computing Machinery of the Institute of Electrical and Electronics Engineers.

PROFESSIONAL EXPERIENCE

Prior to joining Goodwin Procter, Mr. Burns was a partner at Fish & Richardson in Silicon Valley. Before beginning his legal career, he worked as a software engineer and manager for 10 years and is fluent in Java, C++, MS-Windows and various flavors of Unix. His previous technical experience also includes work as an engineer in the Space Physics Group at the Jet Propulsion Laboratory in Pasadena, California.

BAR AND COURT ADMISSIONS

Mr. Burns is admitted to practice in California, as well as before the U.S. Court of Appeals for the Federal Circuit and the U.S. Patent and Trademark Office.

RECOGNITION

In law school, Mr. Burns was on the editorial board of the Loyola Law Review.


Marc P. Schuyler has been a patent counsel since 1989 and is a principal of the Law Office Of Marc P. Schuyler in Saratoga, California.  Marc began his career as a litigator at the LA-based firm of Pretty, Schroeder, Brueggemann and Clark, subsequently moving in-house to Hewlett-Packard Company in 1995, where he became a managing counsel, until he left to start his own firm in 2007.  Marc is versed in all aspects of intellectual property (IP) law practice, especially including licensing and patent development for purposes of licensing, acquisition and litigation. Marc obtained his BS with honors at Caltech and his law degree from UCLA.


Tiki Dare is Assistant General Counsel at Oracle, where she specializes in trademark and copyright law. Her areas of practice also include anticounterfeiting, advertising, intellectual property, licensing and competition.   She previously led the trademark group at Sun Microsystems.  Before joining Sun, Tiki specialized in trademark law at Fenwick & West in Palo Alto, California and started her legal career at Arent Fox in Washington, D.C., where she litigated issues including trademark and patent infringement and false advertising.  Tiki is a graduate of Dartmouth College (cum laude) and the Duke University School of Law.    She is an active member of the International Trademark Association and recently completed a term on its Board of Directors.  She enjoys cycling, triathlons and spending time with her family.