Information About the Authors

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1 Information About the Authors The American Bar Association Section of Business Law thanks the following authors (listed alphabetically) for their contributions to this Deskbook: K. Lance Anderson (Chapter 17: Intellectual Property and Technology Transfer) K. Lance Anderson is Associate General Counsel and Intellectual Property Manager for Austin, Texas-based Emergent Technologies, Inc., a venture capital operating company specializing in the commercialization of university-based technology, where he oversees corporate and intellectual property matters, including patent prosecution, licensing, and other intellectual property related transactions. Natalie Barletta (Chapter 13: Intellectual Property and Antitrust) Natalie Barletta is an associate in the Houston, Texas office of Liskow & Lewis. Her practice focuses on energy and general commercial litigation. Ms. Barletta has also advised clients regarding several current intellectual property issues, including trademark and copyright protection. During law school, Ms. Barletta was a national moot court champion and argued an intellectual property case before several judges and top entertainment lawyers from the Ninth Circuit. She is an advocacy coach for South Texas College of Law s award winning advocacy program. She is a member of the American Bar Association, and the Houston Bar Association s Intellectual Property, Litigation, and Energy sections. She can be reached at nkbarletta@liskow.com. Marc Barreca (Chapter 9: Intellectual Property and Bankruptcy) Marc Barreca is a partner with the Seattle, Washington, office of K&L Gates, LLP. His practice focuses on insolvency, including bankruptcy 423

2 424 Information About the Authors reorganization, workouts, and receiverships. He represents creditors, creditor committees, and debtors in Chapter 11 cases and advises clients on questions involving bankruptcy law and procedure. He is chair of the Washington State Bar Association Creditor-Debtor Section and Chair of the E-commerce and Technology Bankruptcy Subcommittee of the Business Bankruptcy Committee of the ABA Section of Business Law. Frederic D. Bellamy (Chapter 16: Electronic Data Security and Data Security Breaches) Fredric D. Bellamy is a partner in the Phoenix office of Steptoe & Johnson LLP, where his practice focuses on intellectual property as well as science and technology-related litigation. A frequent lecturer on intellectual property and technology-related issues to bar and trade associations, Fred is a former chairman of the State Bar of Arizona s Intellectual Property and E-Commerce & Technology Law Sections, and serves on the board of the Arizona Technology Council. A recipient of the Burton Award for Distinguished Legal Achievement in 2007, Fred has also been recognized in Best Lawyers in America (2008 and 2009) in the field of Information Technology Law, and in Southwest Superlawyers (2008 and 2009) in Intellectual Property Litigation. He can be reached at fbellamy@steptoe.com. Mindy K. Brinker (Chapter 16: Electronic Data Security and Data Security Breaches) Mindy K. Brinker is an associate with the Phoenix office of Steptoe & Johnson LLP, where she focuses her practice on science and technologyrelated litigation and intellectual property. Mindy has served in a number of leadership positions with the State Bar of Arizona's E-Commerce & Technology Law Section, including Program Chair. She has lectured and written on data security and technology-related issues. She can be reached at mbrinker@steptoe.com. Leianne S. Crittenden (Chapter 4: Intellectual Property Issues with Software Financing) Leianne S. Crittenden is Chief Counsel for Oracle Financing Division, the vendor-financed unit of Oracle Corporation. She received her B.A. from Stanford University and her J.D./M.B.A. from the University of California at Los Angeles. She participates on various committees relating to financing intellectual property rights, bankruptcy,

3 Information About the Authors 425 and secured transactions with respect to intellectual property for the American Bar Association and the Equipment Leasing Association. She is a member of the American College of Commercial Financial Lawyers and the American Law Institute. Dana M. Douglas (Chapter 13: Intellectual Property and Antitrust) Dana M. Douglas, a shareholder with Liskow & Lewis, focuses her practice on intellectual property. Ms. Douglas has handled cases involving trademark, copyright, patent infringement, trade secret litigation and cybersquatting. She also has experience in prosecuting trademark and trade name applications and drafting intellectual property licenses and work for hire agreements. She is a member of the Intellectual Property Sections of the New Orleans Bar Association, the Louisiana State Bar Association and the American Bar Association. She can be reached at dmdouglas@liskow.com. Michael J. Dunne (Chapter 7: Intellectual Property Due Diligence) Michael J. Dunne is a partner with Day Pitney, LLP, in the Mergers, Acquisitions, and Joint Venture Practice Group; the Technology, Telecommunications, and Outsourcing Practice Group; and the Emerging Companies and Venture Financing Practice Group. He is a frequent lecturer and has written numerous articles about technology, outsourcing, and mergers and acquisitions topics. Steven J. Eisen (Chapter 1: Intellectual Property Issues for Start-up Companies) Steven J. Eisen is a partner in the Nashville, Tennessee office of Baker, Donelson, Bearman, Caldwell & Berkowitz, PC (see donelson.com). His experience includes corporate representation, securities offerings, intellectual property, and representation of financial institutions throughout the Southeast. He has authored many articles and publications and has spoken at numerous seminars, including many sponsored by the ABA. Kristy L. Evans (Chapter 10: Intellectual Property Issues in Probate and Estate Planning) Kristy L. Evans is a 2005 cum laude graduate of Hamline University School of Law. She is currently working as a law clerk for the Honor-

4 426 Information About the Authors able David M. Johnson of the Sixth Judicial District in the State of Minnesota. Her website is David Flint (Chapter 6: Intellectual Property Representations and Warranties) David Flint is a partner in the Corporate Division of MacRoberts, LLP, and is located in the Glasgow, Scotland, office. His practice focuses primarily on transactional intellectual property, antitrust, and international commercial contract. He is also the Head of the Technology Media and Communications Group at MacRoberts, LLP. He can be reached at df@macroberts.com. Mark E. Freeze (Chapter 16: Electronic Data Security and Data Security Breaches) Mark E. Freeze is special counsel with the Phoenix office of Steptoe & Johnson LLP, where he focuses his practice on science and technologyrelated litigation, including matters relating to computer software copyright issues and trademarks. In addition to being a frequent lecturer to technology-related industry groups, Mark has written articles on data security issues, including Expert Commentaries for Lexis/ Nexis. In 2007, Mark received the Burton Award for Distinguished Legal Achievement for his legal writing. He can be reached at mfreeze@ steptoe.com. Kelly L. Frey, Sr. (Chapter 3: Security Interests in Intellectual Property), (Chapter 11: Open Source Software and IP) Kelly L. Frey, Sr. is a shareholder with the Nashville, Tennessee, office of Baker Donelson Bearman Caldwell & Berkowitz, PC, where he represents both large corporations and vendors to such companies in corporate and information technology procurement transactions. He can be reached at kfrey@bakerdonelson.com. Kelly L. Frey, II (Chapter 3: Security Interests in Intellectual Property), (Chapter 11: Open Source Software and IP) Kelly L. Frey II was a case assistant with Baker Donelson Bearman Caldwell & Berkowitz, PC, during preparation of this chapter. He will be joining the Boston office of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo P.C. and can be reached at kfrey@law.emory.edu.

5 Information About the Authors 427 Kimberly Y. W. Holst (Chapter 18: Intellectual Property Issues in Real Property Transactions) Kimberly Y. W. Holst is on the faculty at Hamline University School of Law in St. Paul, Minnesota, where she teaches Legal Research and Writing. She graduated magna cum laude from Hamline University School of Law and has a master s in Library and Information Science from Dominican University at the College of St. Catherine in St. Paul, Minnesota. She received a BA in Political Science from the University of Wisconsin-La Crosse. Before she began her teaching career, Ms. Holst practiced in the areas of business and real estate law in Rochester, Minnesota. William H. Honaker (Chapter 12: Intellectual Property and the Open Innovation Movement) William H. Honaker is an equity partner of Dickinson Wright, PLLC, and Department Head of its Intellectual Property Law Department. He is involved in all aspects of intellectual property law including obtaining patent and trademark protection, clearance and infringement opinions, litigation, licensing, and ownership transfer issues. Mr. Honaker began his career as a U.S. Patent Office Examiner and has exclusively handled intellectual matters over his twenty-five-year career. He writes and speaks extensively on intellectual property issues. He can be contacted at whonaker@dickinsonwright.com. Pearl Hsieh (Chapter 8: Protecting Intellectual Property in Outsourcing Deals) Pearl Hsieh is an attorney for Fort Dodge Animal Health Division of Wyeth. She receives her B.S. in Microbiology and J.D. degrees from the University of Iowa. She is admitted to practice law in Kansas and Missouri and is a registered patent attorney with the U.S. Patent & Trademark Office. John R. Knapp (Chapter 9: Intellectual Property and Bankruptcy) John R. Knapp, Jr. is a principal of Cairncross & Hempelmann, P.S. in Seattle, Washington. Mr. Knapp served as the judicial law clerk to Judge Peter J. Walsh of the United States Bankruptcy Court for the District of Delaware in He is the Chair of the Bankruptcy Committee of the Federal Bar Association of the Western District of Washington and the Vice Chair of the E-Commerce and Technology- Oriented Bankruptcies Subcommittee of the Business Bankruptcy Committee of the ABA Section of Business Law.

6 428 Information About the Authors Marilyn C. Maloney (Chapter 2: Intellectual Property Issues in Employment Law) Marilyn Maloney is a shareholder in the Houston, Texas office of Liskow & Lewis, Ms Maloney maintains a transactional practice in a range of commercial areas, including intellectual property. Her intellectual property practice involves the registration of copyrights and trademarks, contractual relationships relating to intellectual property, intellectual property issues in mergers and acquisitions, and security rights affecting intellectual property. She is a frequent speaker and writer on intellectual property topics. She is admitted to practice in Louisiana and Texas. Meredith Martin (Chapter 14: Insurance and Intellectual Property Litigation) Meredith Martin is a business attorney with the law firm Astrachan Gunst & Thomas, P.C. in Baltimore, Maryland. Her practice focuses on representing clients in various business transactions and contract negotiations, estate and business succession planning, as well as representing clients in intellectual property matters involving trademarks, copyrights, and trade secrets. Meredith has served as an associate articles editor for The Business Lawyer, a nationally-distributed law journal. In January 2009, Meredith was named as a Super Lawyers Maryland Rising Star. Andrew L. Mathews (Chapter 1: Intellectual Property Issues for Start-up Companies) Andrew L. Mathews is an associate in the Chicago, Illinois, office of Reed Smith, He practices with the firm s Commercial Litigation group and has represented clients in a variety of intellectual property matters, including copyright and trademark infringement actions. He has also counseled clients in non-litigation matters involving trademark prosecution before the U.S. Patent and Trademark Office. He can be reached by at amathews@reed smith.com or at 10 South Wacker Drive, 40th Floor, Chicago, IL David Pamenter (Chapter 6: Intellectual Property Representations and Warranties) David Pamenter is a partner in the business law group of Gowling Lafleur Henderson, LLP, and is located in the Toronto, Canada office.

7 Information About the Authors 429 Gowlings is Canada s largest law firm and consistently wins awards for its IP practice. David s practice focuses primarily on the needs of technology companies and those who buy, sell and invest in such companies. He is also the National Technology Industry Group and Cleantech Leader at Gowlings. He can be reached at david.pamenter@ gowlings.com. Jonathan Rubens (Chapter 15: Intellectual Property Issues in Launching an Online Business) Jonathan Rubens is of counsel to the law firm Bullivant Houser Bailey, PC, in its San Francisco office, where he concentrates his practice in corporate matters, commercial transactions, and intellectual property. He regularly advises entrepreneurs and investors on new venture formation; represents businesses and investors in equity financings, mergers and acquisitions; and acts as outside general counsel advising businesses on a wide variety of commercial transactions and intellectual property issues. Sharon K. Sandeen (Chapter 10: Intellectual Property Issues in Probate and Estate Planning) Sharon K. Sandeen is an editor and a Professor at Hamline University School of Law in St. Paul, Minnesota, where she teaches a variety of intellectual property courses including Trademark Law, Transnational Intellectual Property Law, Trade Secret Law, Computer and Internet Law, and Information Privacy Law. Prior to beginning her teaching career, Professor Sandeen practiced law in Sacramento, California, for more than fifteen years. Marshall Seeder (Chapter 1: Intellectual Property Issues for Start-up Companies) Marshall Seeder is a partner in the Chicago, Illinois, office of Reed Smith, He practices with the firm s Litigation group and represents corporate and media clients in all areas of intellectual property matters, as well as in matters related to defamation and general media law, on-line content and unfair competition. He is a frequent author and speaker on topics of intellectual property, technology and litigation practice. He can be reached by at mseeder@reedsmith.com or at 10 South Wacker Drive, 40th Floor, Chicago, IL

8 430 Information About the Authors Chris Sloan (Chapter 5: Licensing Intellectual Property) Chris Sloan is a partner with Bradley Arant Boult Cummings LLP and vice chair of the firm s Intellectual Property Practice Group. Chris advises clients on a wide variety of intellectual property, software, technology, e-commerce and Internet law issues. He has extensive experience in trademark and copyright protection and licensing, patent and technology licensing, and software licensing. He counsels many of the firm s e-commerce and technology clients on matters such as web site liability, domain name disputes, electronic contracting and Internet privacy concerns. Chris also represents many of the firm s health care clients in software licensing, development and implementation issues. He can be reached at csloan@babc.com. Courtney Smith (Chapter 11: Open-Source Software and Intellectual Property) Courtney Smith worked as a summer associate with the Nashville office of Baker Donelson during preparation of this chapter. She will be joining the Nashville office of Baker, Donelson, Bearman, Caldwell & Berkowitz, PC. Todd Wallace (Chapter 13: Intellectual Property and Antitrust) Todd Wallace is a shareholder of Liskow & Lewis, APLC, in New Orleans, Louisiana where he manages the firm s Antitrust and Trade Regulation practice group. His practice includes the prosecution and defense of potential antitrust and trade regulation violations, including claims involving price fixing, monopolization, bid rigging, bundled discount arrangements, and other pricing, distribution, and consumer protection allegations. He serves as antitrust advisory counsel for a number of the firm s clients and works closely with the firm s business lawyers in obtaining regulatory approval of mergers and acquisitions in compliance with the Hart Scott Rodino Act. He can be contacted at ktwallace@liskow.com. Regina Watson (Bibliography) Regina Watson is Reference and Web Development Librarian and an adjunct professor at Hamline University School of Law in Saint Paul, Minnesota. She is a graduate of the University of Virginia School of Law and Kent State University School of Library and Information Science. She serves on both American Association of Law Libraries and Minnesota Association of Law Libraries committees. She is a former

9 Information About the Authors 431 partner in the Ohio law firm of Martin, Browne, Hull & Harper, PLL. Her practice included intellectual property issues, and she served on the Board of Governors of the Intellectual Property Section of the Ohio State Bar Association. She is a member of the Minnesota bar and an inactive member of the Ohio bar. Patrick J. Whalen (Chapter 8: Protecting Intellectual Property in Outsourcing Deals) Patrick Whalen is a Partner of the Midwestern law firm of Spencer Fane Britt & Browne LLP. Patrick is Chair of the Intellectual Property Committee of the American Bar Association s Section of Business Law. Patrick is listed on the 2009 International Who s Who of Internet and e-commerce Lawyers. He is a contributor on numerous books, including Global Business and Law; and Advising Small Business. as well as a frequent speaker on intellectual property, information security, and litigation. Patrick received his law and master s degrees from the University of Texas. Andrew Wooley (Chapter 2: Intellectual Property Issues in Employment Law) Andrew Wooley practices in the Houston, Texas office of Liskow & Lewis ( The focus of his practice is business disputes, including the representation of employers in litigation and arbitration. His experience includes litigation of trade secret misappropriation claims and drafting, defending, and challenging employment agreements, covenants not to compete, and non-disclosure covenants. He received his law degree from the University of Houston and is Board Certified in Civil Trial Law and Civil Appellate Law by the Texas Board of Legal Specialization.

Paul E. Burns, Partner

Paul E. Burns, Partner Practice Areas Corporate and Securities Emerging Growth and Venture Capital Intellectual Property Intellectual Property Litigation Licensing Litigation Medical Technology Patent