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IP Issues in Business Transactions 2015

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

Steven Weisburd is a partner in Arent Fox's Intellectual Property group, where he concenlrates his practice in the areas of patent, trademark, copyright and computer law.

Client Work

Sleven represents a diverse roster of clients in technology, in areas including compulers, image processing, communications, piezoelectrics, finance,  surveillance,  and musical instruments.

He has advised some of the largest international companies in negotiating licensing agreements involving hundreds of millions of dollars; litigating patent, trademark and copyright cases before the federal courts; and structuring and carrying out major licensing programs that resulted in the licensing of an entire industry He also has extensive experience in patent and trademark prosecution matters.

Previous Work

Prior to joining Arent Fox, Steven was a partner at Dickstein Shapiro

Professional  Activities 

Steven is an active lecturer on IP issues. He is currently the national chair for PLl's nationally presented program "Handling Intellectual Property Issues in Business Transactions" and was previously an instructor at the PLI Patent Bar Review course He has presented lectures on topics such as litigation, intellectual property management and prosecution mailers lo national and international audiences.

Bar & Court Admissions New York Bar

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

Supreme Court of the United States


Temple University Beasley School of Law, JD (cum laude) , 1974

University of Hartford,  BSEE, 1971


Intellectual Property Copyright


Trade Secrets Trademark

Recent News

June 22, 2015
Arent Fox Scores Dual Inter Partes Review Wins for Olympus  al USPTO

May 13, 2015
Arent Fox and 11 Attorneys Recognized as 'IP Stars' by Managing Intellectual Property

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 and a member of the Firm’s Management Committee. 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 actively involved with the Firm’s diversity and pro bono efforts. She is also a member of the Board of Directors of The Progeria Research Foundation.

Ms. Ballack was recently named by The Silicon Valley Business Journal as one of Silicon Valley’s 2015 Women of Influence. Ms. Ballack was also named to the Daily Journals 2014 list of Top Women Lawyers in California, with the publication noting “When Weil represents major technology giants in high-value corporate transactions, the firm calls on Ballack to handle the complex intellectual property aspects of the deals.” She has also been included in The Recorders 2013 and 2015 lists of Women Leaders in Technology Law, which recognizes 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 2010-2015 as a leader in California in the field of IT & IT Outsourcing. Sources in Chambers USA 2015 describe Ms. Ballack as having the ability to “cut through and find areas of compromise” in major M&A deals and as being “a superb drafter and negotiator”. She has been recognized by The Legal 500 US 2010-2015 in the field of Intellectual Property, Patent Licensing, and has also been named an “IP Star” by Managing Intellectual Property IP Stars 2013-2015. In addition, Ms. Ballack is included in IAM Licensing 250s “World’s Leading Patent & Technology Licensing Lawyers” and IAM Patent 1000s “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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