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IP Issues in Business Transactions 2015

Author(s): Karen N. Ballack, Eric A. Prager, Dr. Lothar Determann, Steven I. Weisburd
Practice Area: Intellectual Property
Published: Jan 2015
PLI Item #: 59200
CHB Spine #: G1212

Steven Weisburd is a partner in and deputy practice leader of Dickstein Shapiro’s Intellectual Property Practice. Since 1974, Steve has concentrated in the areas of patent, trademark, copyright, and computer law. He has represented clients in litigation, licensing, the development of strategies for protection and the acquisition of intellectual property rights. He is licensed to practice before the U.S. Patent and Trademark Office (USPTO) and various federal and state courts. His experience in the IP field is quite diverse, and his practice covers many areas of technology, including computers, image processing, communications, piezoelectrics, finance, surveillance, and musical instruments. Among his major clients are NEC Corporation; Maidenform, Inc.; Murata Manufacturing Corporation; Verint Corporation; ICAP Management Services Ltd.; Olympus Corporation; and Yamaha Corporation.

As an advisor to some of the largest international companies, he has negotiated license agreements involving hundreds of millions of dollars; litigated patent, trademark, and copyright cases before the federal courts (including the Court of Appeals for the Federal Circuit); structured and carried out major licensing programs that resulted in the licensing of an entire industry; and has been involved extensively in patent and trademark prosecution matters. In addition to counseling clients, Steve has been an active lecturer on numerous IP issues. For many years he was an instructor at the PLI Patent Bar Review course and is presently the national chair for PLI’s nationally presented program “Handling Intellectual Property Issues in Business Transactions.” He has presented lectures on diverse IP topics involving litigation, intellectual property management, and prosecution matters to various groups throughout the world.

Steve began his career with the Pennsylvania law firm of Seidel Gonda & Goldhammer, where he worked as an associate from 1974 to 1976. From 1977 to 2001, he worked for the New York law firm of Ostrolenk, Faber, Gerb & Soffen, LLP, where he was elected partner in 1981. He has been a partner at Dickstein Shapiro since 2002, and heads the New York Intellectual Property Practice

Areas of Focus
Intellectual Property
Computer Science
Due Diligence
Intellectual Property Litigation
Intellectual Property Monetization
Intellectual Property Portfolio Development & Counseling
Patent Litigation
Patent Prosecution
USPTO Contested Proceedings

University of Hartford, B.S.E.E., 1971
Temple University Beasley School of Law, J.D., 1974, cum laude??

Bar Admissions
New York
U.S. District Court for the Eastern District of Pennsylvania
U.S. District Court for the Southern District of New York
U.S. Court of Appeals for the Federal Circuit
U.S. Supreme Court

Eric A. Prager, a partner in the firm’s intellectual property practice group, assists clients with all types of intellectual property issues. His practice involves contentious and non-contentious engagements, including strategic counseling, due diligence of IP assets, sophisticated licensing and agreement work, and litigation.  He has litigated copyright, false advertising, patent, trademark and trade secret cases in courts around the country, obtaining great results for plaintiffs and defendants.

With significant experience in the area of digital content distribution and protection, Mr. Prager represents one of the Big Four record companies and a major online subscription music service in their digital content matters.

Mr. Prager has assisted in drafting several “digital agenda” copyright treaties for the World Intellectual Property Organization (WIPO), a specialized agency of the United Nations.  These include the WIPO Copyright Treaty, the WIPO Performances and Phonograms Treaty, and a proposed treaty on the protection of databases.

He has served on the U.S. Patent and Trademark Office Public Advisory Committee for Trademark Affairs.  He also assisted, as a member of the Intellectual Property Constituency of the Internet Corporation for Assigned Names and Numbers (ICANN), in developing the uniform dispute resolution policy that ICANN requires accredited registrars to follow.

Mr. Prager has practiced intellectual property law for more than 15 years.  Prior to joining K&L Gates, he was a partner in the New York and Seattle offices of an intellectual property boutique law firm.

Mr. Prager co-chairs an annual two-day legal conference in New York, Handling Intellectual Property Issues in Business Transactions.  He also co-chairs an annual two-day legal conference in Washington, D.C., Standard Setting & Patent Pools.  He is a frequent lecturer and author on a variety of subjects in intellectual property law.

Model Railroad Case Supports Enforceability of Open Source Software Licenses and Provides Guidance for Licensors, World Intellectual Property Report, October 2008

Model Railroad Case Supports Enforceability of Open Source Software Licenses and Provides Guidance for Licensors, Licensing and e-Merging Commerce Alert, September 5, 2008

Mr. Prager serves on the adjunct faculty of Fordham Law School and is an active supporter of a number of New York arts organizations.

Bar of New York Bar of Washington
Supreme Court of the United States
United States Court of Appeals for the Federal Circuit

J.D., Fordham University School of Law, 1993, (Editor-in-Chief, Fordham Intellectual Property, Media & Entertainment Law Journal; Phi Kappa Phi National Honor Society; West Publishing Award for Outstanding Scholastic Achievement)
A.B., Columbia College, 1990

Mr. Prager has appeared as an on-air commentator on CNBC and MSNBC, and he is frequently quoted on intellectual property issues in a variety of legal and general interest publications.  One of his published articles on trademark dilution has been cited by two U.S. Courts of Appeals and was relied upon by the government in its briefing to the U.S. Supreme Court in the Victoria’s Secret case, 537  U.S. 418 (2003).

The Puget Sound Business Journal named Mr. Prager a “40 Under 40” business leader in Seattle in 2006.


IP Procurement and Portfolio Management

Commercial Transactions and Outsourcing
Emerging Payment Systems
Food Industry
Interactive Entertainment
IP Litigation
Privacy, Data Protection and Information Management
Technology Transactions
Telecom, Media and Technology

Karen Ballack is a partner in the firm’s Technology and IP Transactions practice in the Silicon Valley office. Ms. Ballack is an intellectual property transactional attorney with emphasis on representing technology companies, particularly in the computer (hardware and software), Internet, semiconductor, biotechnology, pharmaceutical and medical device industries.

Ms. Ballack has extensive experience in a wide variety of complex technology and intellectual property alliances and transactions. Representative matters include: licensing arrangements; research and development collaborations; joint ventures; strategic alliances and corporate partnering transactions; intellectual property acquisitions and divestitures; manufacture and supply arrangements; distribution and reseller arrangements; co-marketing alliances; consulting and professional services agreements; and other arrangements involving the commercial exploitation of technology and intellectual property. Ms. Ballack’s practice also includes providing intellectual property assistance in connection with private equity, M&A and other corporate transactions. Ms. Ballack is frequently engaged as a guest speaker on topics relating to technology and intellectual property transactions.

Ms. Ballack’s representative transactions include:

  • Technology and intellectual property alliances, transactions, acquisitions and divestitures on behalf of Advanced Technology Investment Company, Apple, Applied Materials, Archipelago Learning, ArthroCare, Bebo, Cardinal Health, Ceres, Cisco Systems, CPU Technology, Darling International, Genentech, Genetic Finance, Getty Images, Intel, Koch Industries, L-1 Identity Solutions, Life Technologies (formerly Applied Biosystems), Maruho Co. Ltd., Maxim Integrated Products, Microsoft, Panasonic, PDL Biopharma, Pioneer Hi-Bred International (a DuPont company), Symantec, Texas Instruments, The Progeria Research Foundation, Trimble Navigation, United Way, Wind River Systems and Yahoo!
  • Research and development collaborations involving technology companies, universities (such as California Institute of Technology, Carnegie Mellon University, Harvard, MIT, Stanford, Texas A&M and University of California), and research institutions (such as National Institutes of Health).

Ms. Ballack is a member of the firm’s Women@Weil Leadership Board. She is actively involved with the firm’s diversity and pro bono efforts.

Ms. Ballack is a member of the Board of Directors of The Progeria Research Foundation.

Ms. Ballack was named to The Recorder’s 2013 list of Women Leaders in Technology Law, which recognized women lawyers who have demonstrated leadership and expertise in solving the most pressing legal concerns in the technology sector. She has been ranked by Chambers USA 2010-2013 as a leader in California in the field of IT & IT Outsourcing. A source in Chambers USA 2013 describes Ms. Ballack as “a master drafter of technology and other agreements” and “one of the most amazing negotiators,” adding that “she does not blindly advocate her client’s position, but listens to the other side, convinces the other side that their story has been heard and then illustrates her client’s needs articulately and persuasively.” She has been recognized by The Legal 500 US 2010-2013 in the field of Intellectual Property, Patent Licensing, and has also been named an “IP Star” by Managing Intellectual Property IP Stars 2013. In addition, Ms. Ballack is included in IAM Licensing 250’s “World’s Leading Patent & Technology Licensing Lawyers” and IAM Patent 1000’s “World’s Leading Patent Practitioners.”

University of San Francisco (J.D., 1986)
San Diego State University (B.S., summa cum laude, 1981)

Lothar Determann practices and teaches international technology, commercial and intellectual property law.

As a partner with Baker & McKenzie LLP in Palo Alto, California, Lothar Determann’s practice covers counseling companies on taking their products, data, intellectual property and contracts international, as well as related commercial and compliance matters. Dr. Determann is admitted to practice in Germany and California.

Dr. Determann has been a member of the Association of German Public Law Professors since 1999 and he teaches Data Privacy Law, Computer Law and Internet Law at Freie Universität Berlin (since 1994), UC Berkeley School of Law (Boalt Hall, since 2004), Hastings College of the Law (since 2010), Stanford Law School (2011) and University of San Francisco School of Law (2000-2005). He frequently presents on international and intellectual property law topics and has authored more than 100 articles and treatise contributions as well as 5 books, including Determann’s Field Guide to Data Privacy Law (2nd Edition, 2015) and California Privacy Law (forthcoming, 2015).

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