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IP Issues in Business Transactions 2015


Speaker(s): Bruce Perens, Christian H. Nadan, David S. Almeling, Debra A. Dandeneau, Dr. Lothar Determann, E. Lynn Perry, Eric A. Prager, Eric Kurtycz, Esq., J. Scott Evans, Jae Kim, Jeffrey D. Osterman, Karen N. Ballack, Marjorie M. Goux, Mark A. Valetti, Mary A. Fuller, Michael S. Rabson, Nate Garhart, Susan Lyon-Hintze, Tessa J. Schwartz, Thomas F. Villeneuve
Recorded on: Feb. 26, 2015
PLI Program #: 59203

Mark A. Valetti

Position/Title:                       
Senior Patent Counsel

Firm or Place of Business:   
Texas Instruments Incorporated

Address:                                
13588 N. Central Expressway
MS 3999
Dallas, TX 75243

Phone:                                   
(214) 479-1265

E-Mail:                                  

m-valetti@ti.com

Primary Areas of Practice:  Mergers and Acquisitions

Law School:                          
Southern Methodist University

Work History:          
As a member of TI’s legal department I have prosecuted patents, participated in our cross-licensing program, written/negotiated commercial contracts, provided litigation support, and support our M&A activities.

Professional Memberships:  IEEE, AIPLA and Texas Bar


Bruce Perens                        

Position/Title: Co-Founder, Open Source Movement                   

Firm or Place of Business:    Algoram, Inc.

E-Mail:           bruce@perens.com                          

Bruce Perens is an American computer programmer and advocate in the open source community. He created the Open Source Definition and published the first formal announcement and manifesto of open source. He co-founded the Open Source Initiative (OSI) with Eric S. Raymond.

In 2005, Perens represented Open Source at the United Nations World Summit on the Information Society, at the invitation of the United Nations Development Program. He has appeared before national legislatures and is often quoted in the press, advocating for open source and the reform of national and international technology policy.


Chris Nadan is the Vice President of Legal Services & Corporate Secretary for Actian Corporation, a leader in next-generation Big Data analytics and cloud integration. He heads the legal department and is responsible for all legal affairs for Actian (formerly Ingres Corp). The Actian Analytics Platform helps organizations leverage data assets for competitive advantage, including the industry’s first end-to-end analytics platform running 100% inside of Hadoop. 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 is an adjunct professor of law at the U.C. Berkeley Boalt Hall School of Law where he teaches a course on intellectual property transactions. Mr. Nadan is also a frequent speaker to industry groups and has authored a number of published articles, including:


    “Closing the Loophole: Open Source Licensing & the Implied Patent     License” (26 The Computer & Internet Lawyer 1 (August 2009)).

    “Software Licensing in the 21st Century: Are Software “Licenses” Really Sales, and How Will the Industry Respond?” (32 Amer. IP Law Ass'n Q. J. 555 (Fall 2004)) cited and followed by the 9th Circuit in Wall Data v. LA Sheriff, 447 F.3d 769 (2006).

    “Open Source Licensing: Virus or Virtue?” (10 Texas IP Law Journal 349 (2002)).


Mr. Nadan is also 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 intellectual property 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.


David Almeling is a partner in O’Melveny’s San Francisco office and a member of the Intellectual Property and Technology Practice Group within the Litigation Department.

David focuses his practice on both patent and trade secret litigation. He is also a leader in those fields.  Among his other awards, David was recognized in The National Law Journal’s 2014 “Intellectual Property Trailblazers & Pioneers,” which highlights 50 of the top intellectual property lawyers across the country “who are raising the bar in intellectual property law.”  David was also named on The Recorder’s 2013 list of “Lawyers on the Fast Track,” which identifies 50 California lawyers across all legal fields “whose early accomplishments indicate they will be tomorrow’s top lawyers and leaders.”

David is a nationally respected authority on patents and trade secrets.  He has published more than a dozen articles in best-in-class publications, and he has presented more than a dozen CLE presentations.  David’s second book on trade secret law, Trade Secret Law and Corporate Strategy, will be published by LexisNexis in 2015.  David holds leadership roles in state and national intellectual property bar associations.

David graduated with High Honors and Order of the Coif from Duke University School of Law.  He also graduated with Highest Honors and as a Valedictorian from the University of Florida.


Debra A. Dandeneau is a partner in the Business Finance & Restructuring Department. Since joining the firm in 1986, she has concentrated in the area of business reorganizations and debtor and creditors’ rights.

Ms. Dandeneau’s practice focuses on the restructuring and liquidation of companies in various industries. Ms. Dandeneau’s debtor representations include Daffy’s, Aleris International, LandSource Communities Development, Armstrong World Industries, Formica Corporation, Maidenform Corporation, Sun Healthcare Group, Okeelanta Power Corporation and Brothers Gourmet Coffee. She also has represented creditors and other parties in a number of high-profile chapter 11 cases, including the UK administrators in the MF Global cases, a bond insurer in the Stockton and San Bernardino chapter 9 cases,  and a co-defendant in the Montreal, Maine & Atlantic cases.

Ms. Dandeneau is ranked by The Best Lawyers in America 2011-2014 in the practice areas of Bankruptcy and Creditor Debtor Rights / Insolvency and Reorganization Law, and Litigation–Bankruptcy.

Ms. Dandeneau is a member of the New York and Florida Bars and is admitted to practice before the United States Supreme Court, the United States Courts of Appeals for the Third and Sixth Circuits, and the United States District Courts for the Southern and Middle Districts of Florida, the Eastern and Southern Districts of New York, and the Western District of Michigan. Ms. Dandeneau has published and lectured on a variety of bankruptcy-related topics and is the founding editor of Weil’s Bankruptcy Blog: http://business-finance-restructuring.weil.com/.

Ms. Dandeneau received her JD from Columbia University School of Law, where she was a Harlan Fiske Stone Scholar. She received her AB from the University of Miami, magna cum laude, where Ms. Dandeneau was a Henry King Stanford Scholar and a member of Phi Beta Kappa.

Education

Columbia University Law (J.D., 1986)

University of Miami (A.B., magna cum laude, 1983)


J. Scott received his undergraduate degree from Baylor University and his Juris Doctor cum laude in 1992 from the Louis D. Brandeis School of Law at The University of Louisville. He first served as Corporate Counsel for Fruit of the Loom where he was responsible for managing the international intellectual property portfolios for Fruit of the Loom and its associate companies The B.V.D. Licensing Corporation, Gitano, Pro Player and Salem Sportswear, Inc. In November 1996, Mr. Evans joined Adams Evans P.A. where he continued to concentrate his practice in the areas of trademark, copyright, unfair competition and Internet law. In November 2007, he joined the legal team at Yahoo! Inc., where he served as a Senior Legal Director – Global Brands, Domains & Copyright.  In October 2013, J.Scott joined Adobe Systems as Associate General Counsel responsible for global trademarks, copyright, domains and marketing.

On three separate occasions, Managing Intellectual Property magazine voted J. Scott one of the 50 Most Influential People in IP (2009, 2011, 2013).  J. Scott is also President-Elect of the International Trademark Association, where he serves on the Executive Committee and chairs the Planning Committee.


Jae Kim is Rambus’ senior vice president and general counsel. Jae joined Rambus in July 2010, and assumed the role of general counsel in 2013. Before he came to Rambus, Jae was a senior legal counsel at both private and public companies, where he was responsible for compliance, intellectual property, commercial transactions, and litigation. Jae also has experience in private practice with the law firm of Wilson Sonsini Goodrich & Rosati, advising high tech and emerging growth companies on mergers and acquisitions, private financings, public offerings, securities compliance, public company reporting and corporate governance. Jae began his legal career as an attorney with the US Securities and Exchange Commission, Division of Corporation Finance, in Washington, DC.

Jae is a member of both the California State Bar and New York State Bar, received a JD from the American University, Washington College of Law, and his bachelor's degree from Boston University.


Jeffrey Osterman is a partner in Weil’s Technology & IP Transactions practice and concentrates on matters with deep commercial or technical complexity. He has had extensive experience with pure patent licensing, technology transfer, outsourcing, technology integration, content licensing and merchandising.

Mr. Osterman recently advised Sanofi in its worldwide exclusive licensing agreement with MannKind Corporation to develop and commercialize Afrezza (insulin human) Inhalation Powder; Verizon in connection with the acquisition of cloud TV technology from Intel; Lenovo in connection with the acquisition of Motorola Mobility from Google; and Mubadala and Sony/ATV in connection with the proposed $2.2 billion acquisition of EMI Music Publishing. Mr. Osterman also regularly represents Panasonic in connection with a wide variety of transactional matters involving consumer electronics and GE in connection with the IP aspects of numerous corporate transactions. He also counsels clients with respect to their rights under existing agreements and the development of new technologies.

Mr. Osterman lived in Japan from May 1997 to May 1998 where he worked in-house on loan to the headquarters of Panasonic Corporation.

Mr. Osterman is a member of the State Bar of New York and is admitted to practice before the United States Patent and Trademark Office. He has appeared on national television and lectured on intellectual property, electronic privacy and e-commerce throughout the United States and on U.S. intellectual property and contract law in Japan. He is also the Vice Chair of the IP Licensing Committee of the Intellectual Property Owners’ Association and is active in the open source legal community.

Mr. Osterman has received a number of awards for his expertise including being ranked by Chambers USA and Chambers Global as a national and global leader in the technology and outsourcing fields and by Legal 500 as a leading lawyer in the field of intellectual property. He is also recognized as an “IP Star” by Managing Intellectual Property’s IP Stars for Copyright, Counselling and Licensing, by Best Lawyers in America for Information Technology Law and in IAM Patent 2014.

Education

Harvard Law School (J.D., cum laude, 1995)

Cornell University (B.A., cum laude, 1992)


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).

For more information see www.bakermckenzie.com.


Marjorie Goux is Senior Corporate Counsel for The Clorox Company in Oakland, California.  Currently, Marjorie is general business counsel to the Glad Products Company in the Specialty Division of Clorox and Secretary to the Board of Managers for the Glad joint venture between Clorox and Procter & Gamble.  She also provides expert legal advice across all Clorox businesses in relation to trademark and technology transactional matters for Clorox’s global brand licensing, strategic partnership, and innovation and sourcing teams.  She actively supports Clorox’s compliance programs, including managing Clorox’s Global Compliance Hotline.   Marjorie has also served as general business counsel for Clorox’s Home Care, Pet Products, and Away From Home (professional products) businesses.  She is co-chair of the Opportunity Committee of Clorox’s women’s employee resource group, SHOW, Support Heart and Opportunity for Women.

Marjorie has deep experience in domestic and international marketing property licensing, protection, enforcement, and maintenance matters. She began her practice in the trademark and brand name creation group, “Intelmark,” of Dechert, London, after which she managed the Baker & McKenzie (London, UK and Palo Alto, California) trademark practices. Prior to joining Clorox, Marjorie was a member of The Hewlett-Packard Company’s legal department where she managed legal services for HP’s global anti-counterfeiting program and supported trademark matters, including brand licensing, for HP’s imaging and printing business.  She has served as Adjunct Professor at Santa Clara University School of Law, a presenter for PLI, and she regularly participates with and presents to professional groups such as The Licensing Executives Society, Association of Corporate Counsel, and The California Bar Association.

Marjorie is a graduate of The University of Washington (BSc Chemistry) and University College, London (Honors Law), wife of a conceptual artist, and mother to boy/girl eight-year old twins.


Mary A. Fuller
General Counsel and Corporate Secretary
ASSIA, Inc.

Mary Fuller is ASSIA’s General Counsel and Corporate Secretary, where she is a trusted executive who combines her technical expertise with her strong legal and business experience to provide advice and guidance to ASSIA, its executive management, and Board. Mary has specialized in high-tech for more than thirty-years.

Before ASSIA, Mary held positions including Chief IP Counsel and Managing Director at Maxim Integrated Products, where her global responsibilities extend to all facets of intellectual property, and further included primary responsibility for Compliance, Ethics, and Risk (CER), including Cybersecurity.  Before Maxim, Maxim served as a Director and Managing Counsel for Marvell Semiconductor where her primary responsibilities included serving as Assistant Secretary to the Board, as well as overseeing all litigation, driving key investigations, such as the Stock Option Backdating Investigation, and providing advice and guidance to Marvell’s executives and Board.

For nearly a decade before going in-house, Mary practiced law at high profile Silicon Valley law firms including Pennie and Edmonds, and Bingham McCutchen.   Before that, Mary was an electrical engineer at Hewlett-Packard.

Mary holds an AAS in Electronics from Glendale Community College, a BSEE from Northern Arizona University, and a JD with honors from the University of Notre Dame School of Law.  In 2015 Mary was awarded the Watermark Emerging Leader Award and profiled in Silicon Valley Magazine, and in 2016 Mary’s work was profiled in Modern Counsel Magazine.


Susan Lyon-Hintze, founder of the Law Office of Susan Lyon-Hintze, has provided legal counsel to tech and e-commerce clients for over 15 years over a decade of which has been focused exclusively on the area of privacy and security.  She advises clients from small start-ups to major Internet, technology, advertising, and mobile companies on a wide range of U.S. and international privacy and data security issues. Representative areas of expertise include CAN-SPAM, FTC Act, Children's Online Privacy Protections Act (COPPA), telemarketing laws, data security and data breach notice obligations, behavioral targeting and advertising, online and mobile tracking and monitoring using automatic tracking technology, facial recognition and biometrics, cloud computing strategy, and legislative and regulatory policy and outreach.

Ms. Lyon-Hintze formerly served as co-chair of Cooley LLP's privacy group and co-lead of Perkins Coie's privacy group.  She also gained valuable in-house experience as privacy counsel with Microsoft Corp., where she was the lead attorney responsible for global privacy law compliance for all sales and marketing activities and legislative policy in the area of privacy, data security, and online safety.  Prior to Microsoft she served as lead privacy counsel at Dell, Inc


TOM, a founding partner of the firm, is a nationally recognized authority in the areas of U.S. and international corporate partnering, strategic alliances, joint ventures, and licensing, as well as in intellectual property strategy and commercialization. He has extensive expertise representing start-up/emerging companies and multinational corporations in these areas, and has successfully represented emerging company clients in major corporate partnering/strategic alliance and/or licensing arrangements with a great many of the largest U.S. and international information technology, communications, pharmaceutical and medical device companies, as well as with the major research universities and institutes.

Tom was the only licensing/partnering lawyer named among the "Top 25 IP Lawyers" by California's leading legal trade publication. He is also one of only a handful of licensing/partnering attorneys named to Global Counsel's "Most Recommended Lawyers" lists and is recognized as one of California's top corporate transactional lawyers in both "Best Lawyers in America" and the Chambers USA guide to "America's Leading Lawyers for Business," as well as one of the Northern California "Super Lawyers."

Tom has been a Federal court-appointed expert arbitrator, and has been appointed as an expert negotiator and expert counselor/witness regarding intellectual property issues and licensing/partnering practices in various industries. This includes such notable matters as: amicus counsel to the Software Industry Coalition and the Computer Software Industry Association with respect to the U.S. Supreme Court review of the seminal Lotus v. Borland copyright case; appointment by the California Attorney General as the lead strategist and negotiator in resolving the State's highly-publicized Oracle licensing scandal; and serving as the expert consultant and witness on corporate partnering/strategic alliances in the Beckman Center/City of Hope dispute with Genentech.

Tom is co-author of Corporate Partnering: Structuring and Negotiating Domestic and International Strategic Alliances (Prentice Hall Law & Business 1992-2006), the leading lead treatise on that subject, as well as the co-Series Editor of The Emerging Growth Companies Series of legal treatises (published by Glasser LegalWorks). He is also a co-author of Internet, On-line and eBusiness Transactions, (Glasser LegalWorks, 2001), as well as a contributing author of Venture Capital and Public Offering Negotiation (Prentice Hall Law and Business, 1992-2005) and Formation and Financing of Emerging Companies (Glasser LegalWorks 1998, 2004). In addition, he is a member of the Board of Editors of The Cyberspace Lawyer and The Computer Lawyer and serves on the Advisory Board of the High Technology Law Journal of Boalt Hall School of Law at UC Berkeley.

Tom holds a J.D. from the University of California at Berkeley and undergraduate degrees from the University of California in Chemistry and Biology.

Prior to founding Gunderson Dettmer Stough Villeneuve Franklin & Hachigian in September 1995, Tom was a partner of Brobeck, Phleger & Harrison where he founded and served as head of the firm's transactional and counseling Intellectual Property practice. Tom is admitted to practice in California.


Dr. Michael Rabson is Senior Of Counsel in the Palo Alto office of Wilson Sonsini Goodrich & Rosati, where his practice focuses on counseling biotechnology companies, including those in the biopharmaceutical, diagnostics, clean technology, and agricultural biology industries. Michael has more than 20 years of experience working with clients in the life sciences, both as external counsel and in-house counsel. He often serves as external general counsel to such  companies, providing advice regarding the full range of business and legal issues, including the negotiation and structuring of complex technology transactions, intellectual property counseling, and corporate matters, including mergers and acquisitions, both in the U.S. and abroad.

Prior to rejoining the firm in 2010, Michael served as senior vice president, business development and legal affairs, and general counsel at Cytokinetics, Inc., a clinical-stage biopharmaceutical company focused on the development of small-molecule therapeutics. Before that he spent eight years as senior vice president of legal affairs and general counsel at Maxygen, Inc., an international biotechnology company focused on the development of improved protein drugs. His in-house operational experience and deep familiarity with the business issues associated with growing and public companies allow him to be practical and pragmatic in providing advice.

Before he joined Maxygen in 1999, Michael was a member of the Wilson Sonsini Goodrich & Rosati technology transactions group, where his practice focused on clients in the life sciences, including therapeutics, agriculture, medical devices, and material sciences. Earlier in his career, Michael was a patent examiner focused on biotechnology and genetic engineering at the U.S. Patent and Trademark Office. He is a member of the patent bar and an author of scientific publications in Science, Nature, Proceedings of the National Academy of Sciences, and other journals.

EDUCATION:
J.D., Yale Law School
Ph.D., Infectious Disease Epidemiology, Yale University
Postdoctoral fellow at the National Cancer Institute, National Institutes of Health
B.S., Biological Sciences, Cornell University

ADMISSIONS:
State Bar of California


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.

 
PROFESSIONAL BACKGROUND
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.

 
PRESENTATIONS
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.

PUBLICATIONS
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

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

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

EDUCATION
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

ACHIEVEMENTS
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.

LANGUAGES
French

PRIMARY PRACTICE
IP Procurement and Portfolio Management

SECONDARY PRACTICES
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


Eric Kurtycz, Esq.
IP Counsel
Olympus Surgical Technologies America

As the IP Counsel for Olympus Surgical Technologies America, Eric Kurtycz is the sole Patent Attorney charged with establishing the OSTA IP Legal Department and primary patent expert for handling all intellectual property matters for the company.  Mr. Kurtycz’s activities include monitoring and assisting in the preparation & prosecution of patent applications; managing outside counsel; revising patent clearance studies; management of the company's IP portfolio; IP licensing; client counseling; patent litigation; and supervising staff. He Works with Research & Development, Patent Agents & Senior Management to define and implement the IP strategy for the company.

Education:

Juris Doctor, Michigan State University – College of Law                           

Master of Business Administration – Finance, Oakland University                                                               

Master of Science – Manufacturing Engineering, Wayne State University                                                       

Bachelor of Science – Management Information Systems, Oakland University                                                                     


Bar Admissions and Accomplishments:

Attorney - Admitted to Practice, State of Michigan; In-house exemption State of Massachusetts

Registered Patent Attorney - United States Patent and Trademark Office

Certified Six Sigma Black Belt – Dow Chemical

Co-inventor on 9 issued US patents

Author and Presenter -  API Polyurethanes Expo 2001 (non-fabric seating)

Author and Presenter -  SAE International 2001 (All Thermoplastic Lightweight Structural Rear-Seat-Back)


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.”

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


Nate Garhart understands that his role is to help his clients get the job done. Whether he’s registering trademarks that represent the business, protecting copyright assets of the business, or negotiating any of various agreements that are necessary for the business, he knows that his job is to enable the client to do its job – not hold things up.

Nate also works with clients on their advertising, marketing, and other promotional activity transaction needs, similarly helping ensure that all necessary rights have been considered and the risks associated with any given activity have been explored, understood, and minimized.

Whether he’s working with a high-tech startup, a public company, or a nonprofit entity, Nate’s expertise helps his clients ensure that they are protecting and securing their intellectual property and other rights as intended.

Nate is a member of the California and New York State Bars, as well as the American Bar Association. He served as Chair of the Intellectual Property Section of the Barristers Club for the San Francisco Bar Association. He is also a member of the International Trademark Association and the Copyright Society of the USA and is a frequent speaker on trademark and copyright issues for groups such as the Practicing Law Institute and the American Bar Association. Recently, he also presented on intellectual property issues in social media. During law school, Nate was Research Editor for the Duke Journal of Comparative and International Law.

Nate has served on the boards of various nonprofit organizations, including the California Autism Society and the Tel-Hi Neighborhood Center, which provides cultural and educational activities for the community in the North Beach, Chinatown, and Fisherman’s Wharf neighborhoods in San Francisco.

Nate also volunteers with the National Ski Patrol and is currently on the patrol at the Northstar California resort in the Lake Tahoe area.

Special Expertise

  • Trademark prosecution and disputes;
  • Licensing;
  • Copyright registration and enforcement;
  • Contract drafting and negotiation.

Education

  • University of Pittsburgh: Bachelor of Arts, English, with honors, 1993;
  • Duke University: Juris Doctor, cum laude, 1996.


Tessa Schwartz is a partner in the San Francisco office and co-chair of the firm’s Technology Transactions Group. She has an active practice counseling companies on intellectual property issues, and negotiating complex intellectual property and commercial agreements. She advises on a range of strategic transactions, including key patent licenses and acquisitions, technology procurement agreements and complex development, collaboration, joint-venture and distribution deals. Ms. Schwartz also regularly advises companies on the IP aspects of their M&A transactions.

Ms. Schwartz’s M&A experience includes advising Intel on the IP aspects of a string of strategic acquisitions, including Intel’s $7.7 billion acquisition of McAfee, and its $884 million acquisition of Wind River and Yahoo! on the licensing and IP issues in connection with a flurry of strategic transactions executed as part of the company’s recent, well publicized acquisition program and expansion efforts into the mobility market. Deals included the acquisitions of Lexity, Inc. (an Internet advertising services company), Ztelic (a Beijing based startup focused on social-network data), AdMovate (a mobile advertising startup), Qwiki ( iOS app that helps users create movies out of the photos and videos in their camera roll), Milewise, Inc. (an online travel services company), and Todoroo, Inc. (makers of the popular "Astrid" to-do list app).

She also advised Yahoo! on a separate series of strategic transactions, including its acquisitions of 5to1 Holding Corp. and interclick inc.; the sales of the social bookmarking service Delicious and Yahoo! HotJobs; and the launching of Hortonworks to accelerate the development of Hadoop, an open-source software platform. She has also represented SuccessFactors, a market-leading provider of cloud-based human capital management (HCM) solutions, on the intellectual property issues related to its $3.4 billion agreement to be acquired by SAP; Autodesk in its acquisition of Socialcam, Inc., a mobile video application; and Altera Corporation in its acquisition of TPACK from AppliedMicro.

Ms. Schwartz's clients include companies in the telecommunications, wireless, software, hardware, consumer electronics and products, semiconductor, social media, Internet and other fields. She also has a particular focus on the Cleantech sector (including the solar, energy-efficiency, renewable-energy and other sectors) and sustainability issues, and is co-chair of the firm's Clean Technology + Alternative Energy Group. 

Ms. Schwartz provides clients with prelitigation and litigation advice. She frequently advises executives and senior management on strategic business, legal and commercial issues, including the structuring of transactions, risk management and contract compliance. She also counsels clients with respect to a wide variety of IP issues, including patent exhaustion and implied licenses, standing and standards, the protection of trade secrets and the development and distribution of open-source software.

In addition to her transactional expertise, Ms. Schwartz’s litigation background includes representing clients in arbitration, as well as in state and federal courts in such areas as antitrust, false advertising, unfair competition, breach of contract, securities, trademark, copyright and trade secret law.  Her litigation experience includes complex, multidistrict and class action litigation, as well as appellate advocacy.

Ms. Schwartz’s pro bono efforts have included work for The Biomimicry Institute, Goodwill, Common Sense Media, Business for Social Responsibility, The World Wild Life Fund, Build Change, and the Sustainability Accounting Standards Board (SASB). She also provides IP advice to a variety of cultural, media and arts organizations; and other assistance for nonprofits. She recently received the Wiley W. Manuel Award for Pro Bono Legal Services from the State Bar of California.

Ms. Schwartz is recommended as a leading lawyer by Chambers USA 2013 and Legal 500 U.S. 2013, was recognized as a 2013 Women Leader in Technology Law by The Recorder and was named to The Daily Journal’s Top 20 Under 40 list in 2009.

Ms. Schwartz received her B.A. magna cum laude from Harvard College in 1991. In 1996, she earned her J.D. from the University of California at Los Angeles, where she was elected to the Order of the Coif.

Education
Harvard College (B.A., 1991)
University of California at Los Angeles (J.D., 1996)


Lynn Perry is the founder and principal of Perry IP Group ALC, which specializes in trademark and copyright law.  She was formerly a partner with Thelen Reid & Priest and Townsend and Townsend and Crew (now Kilpatrick Townsend & Stockton). Lynn has practiced trademark and copyright law since 1981 and is an adjunct professor of trademark law at University of San Francisco School of Law, and a former adjunct professor at UC Hastings College of the Law. She was on the Editorial Board of the Trademark Reporter for over 25 years, and judged an annual professional legal writing competition for many years (both for the International Trademark Association). Lynn has been a member of the Executive Committee of the Intellectual Property Section of the California State Bar, and a member of the Governing Committee of the ABA Forum on Franchising, among many other similar activities. Lynn is a frequent speaker on subjects in the intellectual property law area. Her practice consists of searching and clearing proposed trademarks, prosecuting U.S. and foreign trademark registrations, trademark and copyright infringement analysis, intellectual property licensing, and litigation, including proceedings before the Trademark Trial and Appeal Board.