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MIP Trade Secrets Forum 2017

September 26 2017, Sheraton Palo Alto

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Speakers at the  2017 MIP Trade Secrets Forum included


Anthony Sammi

Anthony Sammi

partner
Skadden   

Anthony Sammi has widely been recognized in the legal and mainstream press. His cases have been reported on, and he has been quoted by, outlets such as The New York Times, The Wall Street Journal, The Washington Post, CNBC, Bloomberg, Vanity Fair, BBC News, USA Today and The Hollywood Reporter, among many others. In the legal press, The American Lawyer described Sammi's closing arguments in a jury trial as a virtuoso performance. Sammi also has been selected for inclusion in Lawdragon 500 Leading Lawyers in America.

Sammi, as lead trial counsel, recently obtained a $500 million jury verdict for leading video game studio clients ZeniMax Media and id Software against Facebook subsidiary Oculus VR and its executives. The case was tried to a jury over three weeks in the US District Court for the Northern District of Texas and involved virtual reality technology. The trial included the first-ever cross-examination of Facebook CEO Mark Zuckerberg in open court and received widespread media coverage. The verdict is the sixth-largest ever awarded for copyright, trademark and/or trade secret claims and the 12th-largest intellectual property verdict including patent claims.

Sammi also obtained a multimillion-dollar jury verdict, damages award and permanent injunction for trade secret misappropriation and copyright infringement on behalf of a technology company in the US District Court for the Southern District of Texas. In another action in the US District Court for the Eastern District of New York, Sammi successfully defended a software development firm against a preliminary injunction for copyright infringement sought by a global technology firm.



Douglas Nemec

Douglas Nemec

partner
Skadden

Douglas Nemec concentrates on intellectual property litigation and related counseling, including providing intellectual property advice in connection with corporate transactions. Nemec has litigated numerous cases in a wide range of technologies, from pharmaceuticals and other chemicals to IT and electronics. He has particular experience in life sciences matters, including patent litigation under the Hatch-Waxman Act. Nemec also is registered to practice before the US Patent and Trademark Office, where he represents clients in proceedings before the Patent Trial and Appeal Board and other matters.

He is a member of the Skadden group recognized by BTI Consulting Group as one of the top legal advisers general counsel turn to for pharmaceutical work; by Law360 among its 2015 technology practice groups of the year for courtroom victories in the technology sector; and by The National Law Journal as one of the country's leading IP practices in its IP Hot List for multiple years. Nemec also was named as a 2017 BTI Client Service All-Star by BTI Consulting Group. He also has been recognized as a leader in IP by Managing IP, LMG Life Sciences and Intellectual Asset Management. He is frequently involved with life sciences matters that the group handles, including defense of patent infringement claims, enforcement of patent and other IP rights and inter partes reviews related to the treatment of a variety of ailments and diseases.



Diane Gabl Kratz

Diane Gabl Kratz

senior IP property counsel
Seagate Technology

Diane Gabl Kratz is senior intellectual property counsel at Seagate Technology's headquarters in Cupertino, California.  She manages Seagate's global trademark portfolio, overseeing the Trademark Review Board and enforcement of trademark, copyright, and domain name rights.  She also manages the patent portfolio for the consumer group, advising on strategy, prosecution, litigation, and transactions.  Previously, Gabl Kratz was in private practice at the Silicon Valley offices of international law firms Morrison & Foerster and Sidley Austin.  There, she focused on IP litigation in industries such as semiconductors, software, telecom, consumer electronics, and medical devices.

A four-time super lawyers rising star, Gabl Kratz regularly speaks at conferences and has been featured as a guest lecturer at Stanford University's Management Science & Engineering Department and the University of California-Berkeley's Haas School of Business. Gabl Kratz received her JD from the University of Chicago Law School and a bachelor's degree in Physics from Cornell University.  She is a member of the California bar and is registered to practice with the US Patent & Trademark Office.



Nathan Walker

Nathan Walker

head of litigation
Sony Interactive Entertainment

Nathan Walker serves as Head of Litigation at Sony Interactive Entertainment LLC (“Sony”). In this role, Nathan manages litigations involving Sony, including ITC investigations. Before joining Sony, Nathan was a partner at the international law firm Wilmer Cutler Pickering Hale & Dorr LLP, where his practice focused on patent, copyright, trade secret, and complex commercial litigation.



Fabio Marino

Fabio Marino

partner
McDermott Will & Emery

Fabio Marino is a partner in the Silicon Valley office at McDermott Will & Emery. He is an experienced IP trial lawyer and leads the northern California arm of McDermott's IP practice. Marino tries high-stakes patent, trade secrets and copyright cases across the US, with particular emphasis on computer-related technologies. He earned his bachelor's and master's degrees in computer science, and has technical experience in a variety of areas, including computer networks, telecommunications, software engineering, e-commerce, and internet-related technologies, computer architecture, digital circuit design, flash memory, drams, parallel computing, 3D graphics and animation, medical imaging and artificial intelligence.



Natalie Bennett

Natalie Bennett
partner
McDermott Will & Emery

Natalie Bennett is a partner in the Washington, DC office at McDermott Will & Emery. She focuses her practice on intellectual property, with an emphasis on trade secret and patent infringement litigation. Bennett has litigated six IP disputes through trial to final judgment, including the first verdict obtained under the federal Defend Trade Secrets Act of 2016.  She is skilled in taking and defending depositions, and examining fact and expert witnesses at trial before a jury. Previously, Bennett served as a judicial clerk for the honorable Jimmie Reyna of the US court of appeals for the federal circuit and for the honorable John Love of the US district court for the eastern district of Texas.


Fortune F.Y. Shieh

Fortune Shieh

associate general counsel
TSMC    

Fortune Shieh is the associate general counsel of TSMC, the world's largest semiconductor foundry company. Shieh manages a multinational team that is responsible for global commercial transactions and operations, general litigation and risk management, employment affairs, contract management, and trade secret protection.

Shieh's professional experience spans both private and public sectors. He began his career as a public prosecutor in Taiwan, serving in various district prosecutor offices and at the Ministry of Justice in Taipei. Shieh then held positions as a government official responsible for cross-strait legal affairs, serving as deputy director at Taiwan's mainland affairs council (the cabinet-level agency responsible for cross-strait policies) and subsequently as director at the Straits Exchange Foundation (the semi-official organization responsible for conducting negotiations on behalf of Taiwan with the People's Republic of China). Subsequently, Shieh entered private practice as the managing partner of Arthur Andersen's law firm in Taipei. He joined TSMC in 2002 and has served its legal department in various capacities, including as director of legal and public affairs of TSMC China in Shanghai, deputy legal director of TSMC North America in San Jose, California, and more recently as the legal director responsible for operations, transactions, and trade secrets at TSMC headquarters in Hsinchu, Taiwan.

Shieh speaks frequently and is a recognized authority on the topics of trade secret protection and fraud investigation. At TSMC, he played a significant role in managing the company's US trade secret litigation and settlement negotiations involving a major competitor in China. To foster an effective understanding between Taiwan's leading businesses and its government officials regarding intellectual property protection, Shieh  has organized symposia involving judicial officials and in-house counsel on the topic of trade secret investigation and legal reform. He has also published two books, along with several articles in the Ministry of Justice's official periodical, in the fields of money laundering, securitization, and the criminal investigation of trade secret misappropriation.

Shieh received his LLB from National Taiwan University, LLM in international banking law from Boston University, LLM in intellectual property from the Franklin Pierce Law Center, and PhD in law from National Chengchi University. Shieh is licensed to practice law in New York and Taiwan.



Jennifer Blank

Jennifer Blank

attorney-advisor
US Patent and Trademark Office

Jennifer Blank is an attorney-advisor in the office of policy and international affairs at the US Patent and Trademark Office (PTO).  Her portfolio includes members of the Commonwealth of Independent States, Georgia, Europe and Canada. She is responsible for intellectual property policy, support of the development and maintenance of effective intellectual property regimes, and capacity building and technical assistance programs. Blank works closely with police, prosecutors, border enforcement and the judiciary both in the US and overseas.  Her portfolio also includes specialization in trade secret protection.
 
Prior to joining PTO, Blank served as senior director, legal affairs, for a trade association for the software industry.  In that capacity she directed its North America and internet enforcement programs.  Blank also gained experience in general litigation and export control as an attorney in a private law firm.

Blank received her undergraduate degree in mathematics from Rutgers University and her law degree, with honors, from The George Washington University.  She is admitted to practice in the District of Columbia and the Commonwealth of Virginia.



Brooks Beard

Brooks Beard

vice president & deputy general counsel
VMware

Brooks Beard is the vice president & deputy general counsel - litigation, employment, and employee relations for VMware, where he has global responsibility for litigation, government inquiries and investigations, employment law issues, employee relations, and cybersecurity incidents.  He joined the company in 2014 after spending 18 years in private practice, including 17 years at Morrison & Foerster in its San Francisco office, where he became a partner in January 2005.  While at Morrison & Foerster, Beard had a broad-based litigation practice focusing on intellectual property (patent, trademark, and trade secrets), false advertising, environmental, breach of contract, white collar criminal, and civil rights matters, among other types of matters.

In October 2007, then-San Francisco Mayor Gavin Newsom appointed Beard to serve as a Commissioner on the San Francisco Rent Stabilization and Arbitration Board - a position he held until 2013.  And from 2009 until 2014, Beard sat on the Eco-Entrepreneurship Advisory Council and the Council of Legal Advisors at the Donald Bren School of Environmental Science & Management, University of California, Santa Barbara. 

Beard received his BA from the University of California, Santa Barbara, his JD, cum laude, from Vermont Law School, and his LLM, with distinction, from the Georgetown University Law Center.



Kathy Tsai

Kathy Tsai

managing legal counsel
GoPro

In her capacity as managing legal counsel, IP at GoPro, Inc., Kathy Tsai focuses on all aspects of GoPro's intellectual property and brand internationally.  She drives trademark and enforcement strategy and supports various in-house business teams regarding IP issues.  Her responsibilities also extend to managing litigation involving trademark, copyright, patent, and trade secrets, both domestically and abroad. Prior to joining GoPro, Tsai was an associate with Fish & Richardson's Silicon Valley office.  In her free time, she drinks a lot of coffee and Tsai visits a lot of museums and parks with her family, which includes three children (ages 4 and under)!



Kevin O'Brien

Kevin Obrien

partner
Baker McKenzie

Kevin O'Brien is a partner in Washington, DC and chair of the North America intellectual property practice group. O'Brien also serves as co-chair of the patent litigation committee of the Federal Circuit Bar Association and has taught a course on trade and competition at Johns Hopkins University.

He has more than 30 years of experience practicing in the areas of intellectual property and international trade law, with an emphasis on counseling and enforcement, and focuses his practice in the areas of counseling, licensing and international litigation concerning products imported into or exported from the United States. O'Brien has handled numerous matters with the US International Trade Commission and US Customs and Border Protection, including patent, trademark and trade secret matters covering machine parts, semiconductors, telecommunications equipment, and other products. He also has been involved in numerous antidumping investigations and related unfair competition actions, and frequently appears in federal district court and the Court of Appeals for the Federal Circuit and before the Department of Commerce and the International Trade Commission. O'Brien has been recognized as an "IP Star" by Managing IP, a leading lawyer by Chambers USA (DC) and has been selected as one of the "best lawyers" for IP law in Best Lawyers in America and in the Legal 500.



David Lashway

David Lashway

partner
Baker McKenzie

David Lashway is the global co-chair of Baker McKenzie's global cybersecurity practice and is located in Washington, DC. He focuses his practice in the areas of crisis management, internal investigations, and complex criminal, civil and administrative litigation, and has significant experience advising clients with respect to various aspects of cybersecurity related matters. He is a sought-after lawyer who advises the Fortune 100 on the full lifecycle of enterprise risks associated with information security, including before, during and after a network breach, as well as federal regulatory and criminal matters. He regularly conducts global investigations around the theft or compromise of confidential data, and is repeatedly called upon to litigate post-data breach issues. His clients include investment banks, publicly traded and private companies, trade associations and individual executives, and his matters span the globe. Lashway is a frequent speaker, a recognized leader in Chambers, and is included in The Washingtonian's top lawyers for crisis management and cybersecurity.

Lashway and his team were awarded Corporate Counsel Magazine's 2017 gold winner for cyber/privacy counsel in its annual best of corporate counsel rankings based on a survey of over 1,500 corporate counsel, and BTI recently listed the team as best at cybersecurity among all leading law firms. Lashway has lived in Washington, DC for over 20 years, and serves on the board of several not-for-profit organizations.


Theodore McCullough

Theodore McCullough

senior director & legal
Marketo

Theodore McCullough is a senior director, legal at Marketo, a SaaS Marketing Automation Company based in San Mateo, California.  At Marketo, McCullough is responsible for IP and licensing strategy.  With respect to IP, at Marketo McCullough developed a trade secret program, this in addition to the patent, copyright, and trademark programs for which he is responsible.  As to licensing strategy, McCullough, in conjunction with Marketo's business development team, developed and manages the revenue producing Marketo LaunchPoint partner program.  Prior to joining Marketo, McCullough held various roles at Dell-EMC and HP Enterprise.  McCullough has a JD from Temple University School of Law, a BA in Computer Science from Seattle University, and an MA and BA in Philosophy from Gonzaga University and Seattle University respectively.



Elizabeth McBride

Elizabeth McBride

director
Applied Materials

Elizabeth McBride is the director of global litigation & IP protection at Applied Materials, a leading manufacturer of semiconductor and display equipment, services and related software. She currently manages legal risk and complex litigation across the country and around the world, in addition to overseeing global intellectual property enforcement activities, internal investigations, and competitive intelligence matters.  She plays a key role in developing IP protection strategies as well as managing corporate-wide programs, policies and training to enhance data security, compliance, and IP protection.  She also counsels on issues related to employee mobility, data and software, compliance, and supply chain management.

Prior to joining Applied, McBride was an IP litigator at Orrick Herrington & Sutcliffe.  Her practice focused on trade secret, copyright, and patent litigation involving complex technologies in high stakes cases at both the trial and appellate court levels. McBride spent her early career in public policy, as a research associate at The Urban Institute, where she analyzed and evaluated state and federal justice policy and programming.  She also clerked in the United States Attorney's Office, Criminal Division, in the Northern District of California. McBride graduated from Princeton University and earned her JD at Stanford University.



Deanna Kwong

Deanna Kwong

senior director & legal
Hewlett Packard Enterprise

Deanna Kwong is IP Litigation Counsel within the Office of the General Counsel at Hewlett Packard Enterprise ("HPE").  She and the rest of the IP Litigation team are responsible for managing all IP lawsuits that are filed against or by HPE in the U.S., and supporting all IP disputes worldwide.  Prior to joining HPE, Kwong was a patent litigator for over a decade in private practice at Covington & Burling LLP.  She received her law degree and undergraduate degrees from the University of California, Berkeley.  Kwong is a regular speaker on patent law issues.  In her spare time, she enjoys training for marathons and half marathons.



Janis Kestenbaum

Janis Kestenbaum

Partner
Perkins Coie LLP

Janis Kestenbaum is a commercial litigation partner in Perkins Coie’s privacy & security practice and advertising, marketing and promotions group. Her practice focuses on consumer privacy, data security, advertising and marketing, and other consumer protection issues. Kestenbaum regularly represents major corporations and startups in high-stakes investigations and inquiries of the Federal Trade Commission, state attorneys general and Congress. She also counsels technology, consumer products, retail and financial services companies on compliance with federal and state privacy and consumer protection laws to avoid becoming the target of investigations or private litigation.

Kestenbaum brings to her work the benefit of years of experience at the highest levels of the FTC, where she served as senior legal advisor to Federal Trade Commission Chairwoman and Commissioner Edith Ramirez for over four years. In that capacity, Kestenbaum counseled on and oversaw the full range of privacy and data security enforcement matters and policy issues to come before the Commission, including those involving the Children’s Online Privacy Protection Act, EU-US data transfers and negotiation of the EU-US Privacy Shield, data security, mobile privacy, big data and predictive analytics, interest-based advertising, Fair Credit Reporting Act and social networks. She also advised on advertising substantiation, endorsements and influencer marketing, telemarketing and consumer fraud issues. While at the FTC, Kestenbaum served as a member of U.S. delegations to the International Conference of Data Protection and Privacy Commissioners, the Asia-Pacific Economic Cooperation (APEC) Data Privacy Subcommittee and the Asia-Pacific Privacy Authorities forum.

Kestenbaum previously served in the FTC’s Division of Marketing Practices in the Bureau of Consumer Protection, where she investigated and prosecuted deceptive and unfair business practices involving malware, online and print marketing, telemarketing, unauthorized mobile charges and payment card processing, and led the team drafting the final set of CAN-SPAM regulations.

She is a seasoned litigator who has alternated between public service and private practice throughout her legal career, which she began as a trial attorney in the Federal Programs Branch of the Civil Division of the US Department of Justice, where she defended constitutional challenges to federal laws in trial and appellate courts across the country.



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