Self-employed; neutral arbitrator, mediator; mediation preparation coaching; entrepreneur coaching; settlement counsel.
Of Counsel; Feldman Gale.
Contract; IP and General Counsel, AuriQ Systems, Inc.
Profession: Attorney, Business Consulting, ADR neutral
- Neutral: Arbitrator, mediator, settlement counsel, entrepreneur coaching over broad range of commercial, personal injury, consumer real estate, employment, professional fee agreements and corporate governance.
- Commercial Trial Attorney: Unfair competition; contracts; intellectual property including patent, copyright, trademarks; entertainment; trade secret litigation; Markman (claim construction hearings; RICO; FRCP Rule 11 Sanctions proceedings.
- Commercial Transactions: IP and technology licensing; patent pools; RAND licensing; trade secrets; publicity rights; domain names; trademark; copyrights; distribution; supply; manufacturing; R&D; product endorsement; agency agreements, real estate transactions and broker agreements regarding business and real estate sales; international trade and enforcement of rights; architectural rights in commercial structures; insurance coverage issues arising out of advertising injury coverage.
- International: Ongoing engagement with foreign counsel in connection numerous countries in connection with the filing and foreign prosecution of patent and trademark registration applications; US Customs and foreign importation matters including seizure of counterfeit products; foreign grey market importation matters; discovery in Japanese courts; depositions in Europe (primarily Germany) in connect with US litigation; service of process under the Hague Convention; assist Holland company in the assignment of international patent rights and the enforcement of those rights; managed patent enforcement and patent validity litigation in Germany; negotiated and drafted numerous international patent and trademark license agreements and foreign territory product distribution agreements; managed Polish counsel in legal matters conducted in Poland; interacted UK engineers, inventors and legal counsel in connection with prosecution of hip transplant invention; represented client in international arbitration matter between Japan and US related to copyright license agreements; enforcement of judgments in foreign countries; represented Italian client in litigation regarding a weaving product including pursuing litigation in Italy regarding same; represented Swiss company in connection with product development and IP protection; Represented client in connection with commercial agreement with Mexico company; specific countries include Eurasia, Saudi Arabia, Iran, Iraq, Holland, Poland, Germany, Switzerland, Italy, Mexico, Japan, South Korea, Australia, China among others.
- Employment: Consultant agreements, employee and employer non-compete, employee IP ownership rights, confidentiality, employment agreements.
- Corporate: Non-profit board governance, executive compensation, audit committee duties and independence, conflict of interest reporting and obligations of board members, regulatory financial reporting; merger and acquisition due diligence matters.
- Government and Regulatory: Proceedings before the ITC, U.S. Customs, U.S. Patent Office – patent prosecution and board of appeals matters – U.S. Bankruptcy Court, Department of Justice patent pool matters; ESI discovery disputes.
- Insurance: GCL advertising injury, duty to defend, reservation of rights, personal injury insurance coverage.
- Appellate: CAFC, 9th Circuit, 5th Circuit, and California Appellate.
- Electronic Discovery: ESI management and discovery numerous speaking engagements on the topic; actively participated in eDiscovery matters; published numerous articles including Sedona Conference White Papers on eDiscovery.
- Entrepreneur Coaching: Assisting and advising entrepreneurs and business on board governance, protection of corporate and IP assets, resolution of business disputes and business operations
- Non-Profit Board: Advising and consulting on board governance, organization, structures and operations.
- Computer Hardware, Software and Services
- Electronics and Other Technology
- Non-Profit Organizations
- Energy and Utilities
- Consumer Products
- Leisure and Entertainment
- Publishing and Media
- Arbitration and Dispute Resolution Neutral, 1991-present;
- Of Counsel, Feldman Gale 2011-present;
- Part time General Counsel, AuriQ Systems Inc., 2011-present.
- Retired Partner, Fulbright & Jaworski, LLP 2002-2010;
- Partner, Oppenheimer Wolff & Donnelly 1999-2002;
- Managing Partner LA Office Merchant & Gould 1992-1999;
- Partner Nilsson Robbins, Dalgarn, Carson & Wurst 1977-1992;
- Patent Counsel Hughes Aircraft 1975-1977;
- Adjunct Professor Southwestern Law School, Loyola Law School and Masters College
- Professional Control Systems Engineer, Hughes Aircraft, 1969-1977.
- Commercial Litigation: (Contracts) creation, ownership and transfer of IP rights; manufacturing, software development, business and real estate broker, landlord / tenant agreements. (Trademark) trademark ownership; publicity rights; rights in iPhone app; celebrity publicity rights and trademark rights in architectural works; product counterfeit matters. (Patents) infringement, ownership, patent marking and damages matters in electronics, consumer products, computer, telecommunications, medical device, oil field systems, electronic components, electro optical systems; design patent infringement; reexamination proceedings; Patent Board of Appeals; patent pools; claim construction (Markman) hearings. (Copyrights) unauthorized use of urban art in major motion picture; software copyright infringement; architectural copyright rights; fabric design copyrights; sound recordings. (Trade Secret – Unfair Competition) misappropriation of smart ID card technology including e-discovery disputes and spoliation, large scale memory technology, intraocular lens, customer lists, domain name disputes.
- Commercial Transactional: Agreements related to employment; non-disclosure; consulting; development; import-export; distribution; publicity rights; IP licensing; business broker agreements; product endorsement.
- Employment / Labor: Non-compete agreements; employer limitations of rights to employee inventions; work for hire agreements.
- Insurance: GCL coverage and duty to defend (advertising injury coverage); General liability and personal injury coverage.
- Corporate & Non-Profits: Governance; audit committee and independence; board disclosure of conflicts; board-management relations; compensation committee standards and obligations; M&A due diligence.
- Government and Regulatory: DOJ patent pool and essential patents matters; patent, trademark and copyright registration and prosecution; U.S. Customs and counterfeit product exclusion; foreign patent and trademark registration and prosecution.
- Member of the AAA’s Commercial Arbitration Panel.
- Member of USDC Central District ADR Panel;
- LACBA Fee Arbitration Panel;
- Agency for Dispute Resolution Panel;
- LA Superior Court ADR Panel.
- California Department of Insurance Mediation Panel
Served as sole arbitrator, panelist and panel chair in 50+ commercial arbitration matters. Recent matters include patent litigation; numerous patent fee disputes; Software license agreement matter; consumer education contract matter; software development contract to develop App for Android platform; business agent agreement in sale of business; agreement related to unpermitted property improvements; post judgment marriage dissolution matter; panel chair regarding TV rights asset purchase; panel chair in matter of copyrighted jewelry designs; panel chair in fee dispute regarding attorney services.
Mediated approximately 250 matters. Recent matters include ownership interests in screenplay; trademark infringement; patent infringement matter related to environment protection product; contract and trade secret misappropriation matter related to international manufacturing of electronic component parts; matter related to electronic smoking pipe; matter related to optical particle counter; contract matter regarding reverse engineering and trade secret misappropriation; matter related to sale of educational material; matter regarding inventor claim of patent ownership; dispute related to agricultural product; dispute related to commercial rights in article of clothing; numerous personal injury and consumer matters.
- Straus Institute For Dispute Resolution “Advanced Mediation”2014;
- AAA Guided Choice: Innovations In Mediation To Get Better Settlements At Less Cost 2014;
- AAA Webinar, Managing ESI Exchanges In Arbitration- Preparing Yourself For The New Landscape And New Challenges” Part 1, 2014;
- AAA Principled Deliberations, 2014;
- ABA “Tips On Achieving Cost Effective Arbitration” (2014);
- LACBA/AAA What Lawyers And Arbitrators Need To Know About Commercial Arbitration (2014); LAIPLA Intellectual Property Judiciary Reaction To Current IP Issues;
- Analyzing Interest To Facilitate Settlement, USDC ADR Training;
- Recent Developments In Mediation Law, USDC ADR Training;
- Ethics And ADR: Whatever Happened To Zealous Representation (Presenter-First American Title Ins. Co.);
- Advanced Mediation Training, USDC ADR Training;
- Cross-Cultural Challenges In Mediation, USDC ADR Training;
- To Caucus Or Not To Caucus, USDC ADR Training;
- Ethics 101: Mediators, Arbitrators, Attorneys – AAAU;
- How To Become A More Innovative Neutral Or Advocate AAAU:
- Applying Cutting Edge Innovation Management Techniques To Your ADR Practice, AAAU;
- Consummate Negotiation: Techniques & Tactics, AAAU;
- How Are Your (Negotiation) Table Manners?, AAAU;
- Mediation Confidentiality- USDC ADR Training;
- When Morals Meet The Mediator: The Effect Of Religion & Spirituality On Negotiation,
- ABA Section of Dispute Resolution 13th Annual Conference
- Bargaining With The Devil, Good Judgments, Improving Risk Assessment Etc.;
- Beyond Mediation Styles; Analytical Mediation;
- What Works In Complex Mediation;
- Accelerating The Dispute Resolution Timeline In IP Cases;
- Arbitration – Dispute Resolution Of U.S. Olympic Etc.;
- When Cases Don’t Settle-Mediators Part Of The Problem;
- Re-Imaging Commercial Arbitration;
- Court Mediation And Settlement Etc.;
- Applying ADR To E-Discovery; A Model For Dispute Resolution;
- Strauss Institute
- ICANN – International Top Level Domain Name Dispute Resolution Studies; Negotiation Theory & Practice;
- Arbitration Practice And Advocacy;
- Mediation Theory & Practice;
- International Commercial Arbitration;
- Chairing An Arbitration Panel: Managing Procedures, Process & Dynamics, AAAU;
- Secrets For Negotiators, Mediators, And Arbitrators, ABA;
- Mandatory Fee Arbitration Training, LACBA;
- Arbitration Myth Busters, ABTL;
- Arbitration Fundamentals And Best Practices For AAA Arbitrators, AAAU
- LASC ADR Neutral Training, La Superior Court;
- LASC ADR Voluntary Settlement Conference Training;
- Dispute Resolution Services, Mediation Training, LACBA;
- Arbitration Training Institute, ABA
American Bar Association (IP, Litigation And ADR Sections); Los Angeles County Bar Association; Los Angeles Intellectual Property Law Association; Association Of Business Trial Lawyers; Sedona Conference Working Group On Electronic Discovery And Privacy, Confidentiality And Public Access.
“Public Policy & the Arbitrability of Intellectual Property Disputes,” ADR Times July 2, 2013; “Building Trust in Mediation,” Dispute Resolution Magazine, Vol. 16, No. 4, Summer 2010; “E-Discovery Disputes, Mediation and Confidentiality,” Bloomberg Law Reports / Federal Practice, September 8, 2009; “Technology Basics,” eDiscovery for Corporate Counsel, Chapter 4, Thompson / West Publishing, 2008 – 2014editions; “Will Your Company Be Required To Preserve Information From Employees’ Personal Email Accounts and Computers?,” Fulbright & Jaworski L.L.P. Client Alert, April 2007; “Wal-Mart: Has Non-Genericness Been Eliminated as an Element of a Product Configuration Trade Dress Claim?,” BNA’s Patent, Trademark & Copyright Journal, March 2005.
Also participate in the drafting and enactment of California’s Anti-Counterfeiting Statutes (Business and Professions Code §§14340-14342 and Penal Code §350); Trade Secret Act (Civil Code §3426 et seq. and Code of Civil Procedure §2019(d); and Employee Rights in Inventions (Labor Code §2870).
(Presentations) “Ethics And ADR: What Ever Happened To Zealous Representation?” Presented to Munger, Tolles & Olson LLP, January 10, 2013; “Cloud Computing,” 15th Annual Electronic Discovery and Records Retention Conference, December 7, 2011; “E-Discovery for the Corporate Market,” Executive Counsel Institute, March 12- 15, 2011; “Intellectual Property Protection in International Commercial Transactions,” Conference on Future Trends in Exporting and Importing, sponsored by the Foreign Trade Association, February 17, 2011; “Controlling Your E-Discovery Destiny,” E-Discovery for the Corporate Market Conference, Executive Counsel Institute, Los Angeles, CA, December 14-15, 2010; “Getting your IM/RM House in Order,” Thomson Reuters, 14th Annual Electronic Discovery and Records Retention Conference: Achieving Practical Proportionality, Los Angeles, CA, September 14-15, 2010; “The Electronic Information Juggernaut: Taking Aim At ADR,” American Bar Association Section of Dispute Resolution, San Francisco, CA, April 7-10, 2010; and others before 2010. (Teaching) Adjunct Professor – Business Law, Masters College Business School (2011); Patent Procedure, Southwestern Law School (1985); Copyright Law and Intellectual Property, Loyola Law School, (1982 – 1983); Copyright and Intellectual Property, American Patent Institute (1978-1980)
2010 – Certificate in Dispute Resolution, Pepperdine University School of Law;1984 – National Institute for Trial Advocacy;
1978 – Advanced Copyright Law, USC;
1975 – J.D. (honors) University of La Verne College of Law;
1971 – M.S., Control Systems Engineering, UCLA;
1967 – B.S., Electronic Engineering, UCLA.
U.S. Supreme Court; Supreme Court, California; Ninth Circuit Court of Appeals; Fifth Circuit Court of Appeals; Court of Appeals of the Federal Circuits; U.S. District Court (California Central, Southern, Northern, Eastern, Wisconsin Eastern District, Nebraska), U.S. Patent Office.