Robert Barr – Executive Director, Berkeley Center for Law and Technology
Daniel Cerutti – General Manager, Intellectual Property Licensing, IBM
Colleen Chien – Assistant Professor, Santa Clara University School of Law
Evan Cox – Partner, Covington & Burling LLP
Ed Gershuny – Former Senior Counsel, IBM
David Kaefer – General Manager of IP Licensing, Microsoft Corporation
Jason Kipnis – Partner, Weil, Gotshal & Manges LLP
Allen Lo – Vice President of IP, Juniper Networks
Dan McCurdy – CEO, Allied Security Trust I
Shaalu Mehra – Partner, Perkins Coie LLP
Rob Merges – Professor of Law, BCLT & UC Berkeley, School of Law
Marshall Phelps – Corporate Vice President for IP Policy and Strategy, Microsoft Corporation
Jeff Rothstein – Partner, Sidley Austin LLP
William Schwartz – Parter, Morrison & Foerster LLP
Bart Showalter – Partner, Baker Botts L.L.P.
Ted Sichelman – Assistant Professor of Law, University of San Diego School of Law
David Simon – Chief Patent Counsel, Intel Corporation
BJ Watrous – VP & Associate General Counsel of IP Licensing, Hewlett-Packard
Mallun Yen – Vice President of Worldwide IP, Cisco Systems Inc.
Rosemarie Ziedonis – Professor, University of Michigan School of Business
Robert Barr is Executive Director of BCLT and the former Vice President for Intellectual Property and Worldwide Patent Counsel for Cisco Systems in San Jose, California, where he was responsible for all patent prosecution, licensing and litigation. Robert has degrees in Electrical Engineering and Political Science from MIT and a JD from Boston University School of Law. He is a frequent speaker on patent reform and has testified twice at the Federal Trade Commission hearings on Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy. He was named by the Daily Journal as one of the top 25 Intellectual Property Lawyers in California in 2003, and as one of the top 10 in-house intellectual property lawyers in 2004.
Daniel Cerutti is GM of IP Licensing at IBM, responsible for all patent and software technology related IP transactions across the company. He has been involved in leading edge technologies and building IP-based information technology businesses for 25 years, including intimate involvement in the formation and growth of a dozen businesses. He has personally attracted over $50M in venture capital funding, and substantially more in corporate investments. Dan has been the CEO of Cylant, a security technology company sold to Reflex Security; the founder and CEO and Veridiem, a marketing analytics company sold to SAS; and the founder and CEO of Amulet, an Internet pioneer that created the InfoWizard service hailed by Forrester as “LexisNexis for the Web”. Earlier in his career, Dan’s positions included VP Work Management Products at Wang, Director of Multimedia Technology at IBM, and AIX RS/6000 System Manager at IBM. He holds computer science degrees from Harvard and Syracuse, and is the author of a McGraw-Hill textbook titled Distributed Computing Environments.
Colleen Chien is an Assistant Professor of Law at Santa Clara Law. She teaches and researches in the areas of patent law and international intellectual property law, with an emphasis on empirical research and access to technology issues. Her recent publications include in-depth empirical studies of patent litigation & NPEs and litigation at the International Trade Commission. She frequently speaks at national conferences on patent law and policy issues. Prior to Professor Chien’s academic appointment, she prosecuted patents at Fenwick & West LLP in San Francisco, California, where she remains Special Counsel, and was a Fellow at the Center for Law and the Biosciences at Stanford Law School. She worked as an investigative journalist at the Philippine Center for Investigative Journalism as a Fulbright Scholar.
Evan Cox is a partner in the firm’s intellectual property and antitrust practices resident in the San Francisco office. He has previously practiced in the firm’s Washington, DC and London offices. His transactional and advisory practice involves representation of technology companies in the structuring and negotiation of licensing, distribution, joint venture, standards-setting, and other intellectual property-driven relationships. He counsels clients on US antitrust and European Union competition law matters including intellectual property licensing, standards-setting, patent pools, and mergers and acquisitions and has represented clients before the Antitrust Division of the Department of Justice, the Federal Trade Commission, and the European Union’s Directorate General for Competition. He has worked closely with leading companies and trade associations in the software, publishing, hardware, and pharmaceutical industries on anti-piracy, anti-counterfeiting, and digital rights management strategies and enforcement. He supervises an in-house team of internet investigators that provide clients with worldwide forensic and notice and takedown capabilities, and provides counseling and litigation support on secondary liability and anti-circumvention issues under the DMCA and comparable international legislation. He has comprehensive experience with copy protection and digital rights management licensing schemes, standards-setting activities, and legislative initiatives.
Edward Gershuny has drafted and negotiated hundreds of patent license agreements while working with IBM, which produced income to IBM well in excess of a billion dollars. When IBM expanded its licensing activities in Asia/Pacific, he became responsibility for reviewing local intellectual property laws and determining how patent licensing would proceed in each country. As part of this activity, he developed the license agreements for each country and, in the Republic of Korea and the Republic of China, met with appropriate government ministries to ensure that the terms would be acceptable to government approvers. Since retirement from IBM, Ed has continued licensing, training and other consulting activities for IBM and others, including Fairfield Resources International, Lucent, Open Invention Network, Samsung and Texas Instruments. Ed received a B.S. in Electrical Engineering from the Massachusetts Institute of Technology and a JD from the Washington College of Law at American University. He is a member of the bar in New York State and in the District of Columbia and has been admitted to practice before the United States Patent and Trademark Office and various federal courts. He has been named a Certified Licensing Professional by the Licensing Executives Society.
David Kaefer, as General Manager of Microsoft’s IP Licensing organization, manages a team of legal and business professionals responsible for a range of IP transactions, including patent cross licensing, out-bound patent licensing, patent sales, protocol licensing, technology licensing and technology divestitures. David’s team also acts as a center of excellence at Microsoft for open source legal counseling. In that capacity, the group advises Microsoft business groups on issues related to acquisition, use, contribution and distribution of open source licensed software. David joined Microsoft in 1998.
Jason Kipnis is a Partner in the Silicon Valley office of Weil, Gotshal & Manges LLP, where he manages the office’s Intellectual Property Counseling practice. He advises clients regarding a wide variety of intellectual property matters, including IP portfolio management, IP litigation, IP enforcement and dispute counseling, IP transactions, and IP audits and due diligence. Other areas of expertise include trade secret protection and management, standards counseling, open source matters, international IP rights management, and identification and acquisition of IP of third parties.
Allen Lo joined Juniper Networks, Inc. in 2000, and serves as Deputy General Counsel and Vice President of Legal Affairs for Intellectual Property at Juniper Networks, Inc. In his role, Allen is responsible for providing legal support to all of Juniper’s technology and business groups. This responsibility includes managing the company’s patent and trademark portfolios, technology transactions, standards and open source compliance, and intellectual property licensing, disputes, and litigation. Allen is also responsible for providing legal support on all worldwide employment matters for Juniper Networks. Allen previously worked as an attorney at the law firm of Finnegan, Henderson, Farabow, Garrett & Dunner, and as a patent examiner in the U.S. Patent and Trademark Office in Washington D.C. He also served as a judicial law clerk for Chief Magistrate Judge Infante of the U.S. District Court, Northern District of California and has taught patent law courses as an adjust professor at the Boalt Hall School of Law at the University of California at Berkeley. Allen obtained his J.D. degree from the Georgetown University Law Center and a B.S. in Electrical Engineering from The Ohio State University.
Dan McCurdy was named Chief Executive Officer of Allied Security Trust in August 2008. He is responsible for management of the Trust, patent acquisition and divestiture negotiations, and membership expansion. He is also Chairman of PatentFreedom, the on-line, subscription-based global authority on Non-Practicing Entities (NPEs) (sometimes called “patent trolls”), as well as Patent Integrity, which pools funds from operating companies to financially support the selection and filing by Patent Integrity of inter partes reexaminations of patents held by NPEs. From 2001 through 2008, Mr. McCurdy was founding CEO of ThinkFire, an intellectual property advisory firm providing services to many of the world’s leading technology companies and private equity firms. From 2000 – 2001, Mr. McCurdy was president of Lucent Technologies’ Intellectual Property Business. There, he managed 300 employees generating more than $500 million in annual revenues from the licensing of 26,000 worldwide patents. Prior to joining Lucent, he served as founding vice president of IBM’s Life Sciences business unit, and vice president of corporate development for CIENA corporation where he was responsible for mergers and acquisitions. Mr. McCurdy received his B.A. summa cum laude from the University of North Carolina. He served on the Intellectual Property Policy committee of the United States’ National Academies, and recently chaired an effort for the Center for American Progress providing intellectual property policy recommendations to the incoming Obama Administration.
Shaalu Mehra is a partner in the firm’s Licensing and Technology group of Perkins Coie LLP. He counsels private and public companies on complex corporate and technology transactions, with particular focus on outsourcing and intellectual property transactions. Shaalu is a frequent speaker on the topics of outsourcing, open source licensing, and venture financing. Shaalu is also the chair of the firm’s India practice and has extensive experience working with U.S.-based companies, multinationals and India-based companies on acquisitions, joint ventures, and outsourcing transactions in India.
Rob Merges has authored or coauthored three books, Patent Law and Policy: Cases and Materials, Intellectual Property in the New Technological Age, and Legal Protection for Computer Technology. Recent articles include “As Many as Six Impossible Patents before Breakfast: Property Rights for Business Concepts and Patent System Reform,” in the Berkeley Technology Law Journal (1999); “The Control of Strategic Alliances: An Empirical Analysis of Biotechnology Collaborations,” in the Journal of Industrial Economics (1998); and “Intellectual Property and Digital Content: Notes on a Scorecard,” in Rivista di Diritto Industriale (1998). In addition to teaching and research projects, Merges also serves as a special consultant to the U.S. Department of Justice, Antitrust Division, and is a member of the Department’s Task Force on Intellectual Property.
Marshall Phelps is responsible for setting the global Intellectual Property Strategies and Policies for Microsoft Corporation. In addition, Phelps interfaces with governments, other companies in the technology industry and outside institutions to broaden awareness of intellectual property issues. Before transitioning to his current position in 2006, Phelps served as the deputy general counsel for intellectual property in Microsoft’s Legal & Corporate Affairs group, where he supervised Microsoft’s intellectual property groups, including those responsible for trademarks, trade secrets, patents, licensing, standards and copyrights. He oversaw the company’s management of its intellectual property portfolio, which comprises some 13,000 patents issued and more than 12,000 trademark registrations worldwide. Phelps joined Microsoft in June 2003 after a 28-year career at IBM Corp., where he served as vice president for intellectual property and licensing. Phelps was instrumental in IBM’s standards, telecommunications policy, industry relations, patent licensing program and intellectual property portfolio development. Also, Phelps helped establish IBM’s Asia Pacific headquarters in Tokyo and served as the company’s director of government relations in Washington, D.C. Upon retiring from IBM in 2000, he spent two years as chairman and chief executive officer of Spencer Trask Intellectual Capital Company LLC, which specialized in spinoffs from major corporations such as Motorola Inc., Lockheed Martin Corp. and IBM.
Jeffrey Rothstein, a partner in Sidley Austin’s Chicago office, is co-head of the firm’s Intellectual Property and Technology Transactions practice. His practice covers a wide range of intellectual property transactions, with particular emphasis on biotechnology, pharmaceutical and information technology transactions. His biotechnology experience includes both human and agricultural biotech matters. Mr. Rothstein advises firms ranging from early-stage companies to the world’s leading biotechnology and pharmaceutical companies on licensing, development, collaboration, contract manufacturing, clinical trial, contract research and other similar agreements. He represents companies, including major financial institutions and professional service firms, entering into complex intellectual property and information technology license and development agreements, outsourcing agreements and strategic alliance agreements. Mr. Rothstein also handles intellectual property issues arising in M&A and financing transactions.
William Schwartz represents companies in business transactions and counseling involving intellectual property and technology, including license and development agreements, outsourcing arrangements, distribution and commercial activities, and joint ventures. Mr. Schwartz has been particularly active on transactional and counseling matters relating to computers, telecommunications equipment, the Internet, electronic commerce and other advanced information technology. He also has represented numerous clients in patent licensing. Mr. Schwartz has spoken widely on information technology and intellectual property issues. He has lectured in the MBA program at Oxford University and has been a visiting fellow of Oxford’s Centre for Socio-Legal Studies. Mr. Schwartz worked in Tokyo and Hong Kong as a reporter and editor for the Asian edition of The Wall Street Journal from 1977 to 1980. He joined Morrison & Foerster in 1984 and became a partner of the firm in 1990.
Bart Showalter is the firmwide chair of the Intellectual Property Department of Baker Botts. His practice includes all aspects of intellectual property law, with a particular emphasis on patent litigation, procurement and licensing in the electronics, telecommunications and software fields. With broad experience in a number of areas, Mr. Showalter provides strategic counsel to clients developing innovative computer software, semiconductor devices, optical systems, data networks, wireless infrastructure, business methods, transmission systems, medical devices, graphics processors, military and commercial aircraft, automated industrial equipment and many other technologies. Mr. Showalter has litigated patent infringement cases involving landline and cellular telecommunications technology, video conferencing, interactive television, voice messaging and a number of other fields. He also provides general counseling on intellectual property issues, including intellectual property audits, strategic patent mapping, exposure assessment, patent opinions, licensing negotiations, patent categorization, industry benchmarking, infringement risk management and comprehensive intellectual property protection programs. While he was at MIT, Mr. Showalter investigated the role of artificial intelligence (specifically, neural networks) in the design and performance of complex adaptive control systems. Following graduation, he worked as a lead systems engineer for LTV Missiles and Electronics Group, where he designed guidance and control subsystems for missile, aircraft and spacecraft projects. He currently serves as an adjunct professor of intellectual property law at Southern Methodist University.
Ted Sichelman is an Assistant Professor of Law at the University of San Diego School of Law. Prior to joining the USD faculty, he was a fellow at the University of California, Berkeley, Boalt Hall School of Law. Previously, Professor Sichelman practiced in the areas of intellectual property litigation and transactions, appellate litigation, and venture finance at the law firms of Heller Ehrman and Irell & Manella. Professor Sichelman also clerked for Judge A. Wallace Tashima of the U.S. Court of Appeals for the Ninth Circuit. Before practicing law, he founded and ran a venture-backed software company, Unified Dispatch. Professor Sichelman designed the company’s software and is a named inventor on several filed patents. Professor Sichelman earned his J.D. from Harvard Law School and an A.B. from Stanford University. His numerous publications include: “Commercializing Patents,” in Stanford Law Review (forthcoming 2010); “Patenting by Entrepreneurs: An Empirical Study,” in Michigan Telecommunications & Technology Law Review (forthcoming 2010); “High Technology Entrepreneurs and the Patent System,” in Berkeley Technology Law Journal (forthcoming 2009); and “Why do Start-Ups Patent?” in 23 Berkeley Technology Law Journal 1063 (2008).
David Simon is
currently the Senior Vice President for Intellectual
Property at salesforce.com.
Previously, he was involved for fifteen years
in running intellectual property matters for Intel
Corporation, including a
stint as Chief Patent Counsel. Prior to joining Intel in
1997, David was
in private practice in Los Angeles for fifteen years,
intellectual property matters, licensing and high
technology law. He has
been a featured speaker in a number of intellectual
property seminars including at Stanford, GW, Berkeley and
University of Texas law schools and in
China, Germany, Japan and Korea. Mr. Simon holds a BSEE
Massachusetts Institute of Technology and a JD from
University and has testified before both the House and
subcommittees on the need for patent reform. He was a
member of the Board
of Directors of the Intellectual Property Owners
Association, the Coalition for
Patent Fairness and the IP Advisory Board for George
Washington University Law
BJ Watrous manages HP’s Intellectual Property Licensing (IPL) group and is responsible for helping to create and implement HP’s intellectual property strategy and for optimizing the value realized by HP’s IP portfolio – including over 32,000 worldwide patents. His IPL team focuses on Patent & Brand Licensing, Standards Licensing, Technology Transfer, Patents Sales and Patent Acquisitions.
Mallun Yen is Vice President, Worldwide Intellectual Property at Cisco Systems, Inc. located in San Jose, CA. As Cisco’s Chief IP Counsel, Mallun leads a team that is responsible for patents, trademarks and copyrights, including prosecution, licensing and litigation as well as standards, acquisitions and IP aspects of M&A transactions. After earning a law degree from Boalt Hall, Mallun clerked for The Honorable Ronald M. Whyte for the U.S. District Court in San Jose and then joined Weil, Gotshal & Manges, where her practice focused on patent litigation and technology transactions. Prior to joining Cisco in 2002, Mallun served as Chief Counsel of Calient Networks located in San Jose.
Rosemarie Ziedonis is an Assistant Professor of Strategy at the University of Michigan’s Ross School of Business and Co-Director of the Center for Law, Economics, and Technology at the University of Michigan Law School. She earned her Ph.D. in Business and Public Policy from UC Berkeley’s Haas School of Business and undergraduate degree in economics from the University of North Carolina, Chapel Hill. Before joining the Michigan faculty in 2002, Rosemarie was an Assistant Professor at the Wharton School of the University of Pennsylvania. Her research examines the value and strategic use of intellectual property, as well as broader aspects of technology and innovation management. Her studies have appeared in top academic journals, including Organization Science, Management Science, and the Rand Journal of Economics. She also serves on editorial boards at the Academy of Management Journal and the Strategic Management Journal. At Michigan, Rosemarie teaches Corporate Strategy and the Strategic Management of Intellectual Capital to MBA students.