350 South Grand Ave. 32nd Floor
Los Angeles, CA 90071
United States of America

+1 (213) 892-2059
dvalz@chadbourne.com
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Duane R. Valz

Counsel

Practice Description

Duane R. Valz has counseled a wide variety of emerging growth, public and privately held companies on intellectual property and technology matters. At Chadbourne his practice focuses on patent portfolio development, IP strategy and complex technology transactions. Mr. Valz also advises on all aspects of IP issues ranging from litigation, licensing and corporate development matters as well as energy and green technology, social media and networking, web-content and cloud computing and issues related to enterprise use and distribution of open source software. For nascent industries such as renewable energy and next generation vehicles, he is particularly focused on helping clients understanding the impact of government funding and regulation on the development and positioning of IP assets.

Mr. Valz's experience includes serving as Chief Patent Counsel for Yahoo! Inc. During his tenure with the global Internet giant, he reinvigorated the patent function, drastically increasing Yahoo’s filings and issued patents. Mr. Valz also introduced many innovations to the company’s development and positioning of its IP assets, including custom developed software tools and new appraisal and asset management methodologies. His efforts resulted in Yahoo! becoming a constituent of the Ocean Tomo 300® Patent Index, and climbing the ranks of the Wall Street Journal and Patent Board’s top 35 companies in the information technology sector. Mr. Valz also led Yahoo’s cross-functional Open Source Working Group.

A highly sought after speaker, lecturer and policy adviser on law and technology matters, Mr. Valz has presented testimony at the Federal Trade Commission on the evolving IP marketplace, guest lectures regularly at U.C. Berkeley’s Center for Entrepreneurship and Technology, and has participated in numerous conferences and roundtables on intellectual property law. A patented inventor, he has written and spoken about the impact of In re Bilski on patent eligible subject matter, including amicus curiae filings both at the Federal Circuit and the U.S. Supreme Court on behalf of Yahoo!

Honors

Mr. Valz is listed in IAM250 - The World’s Leading IP Strategists (2010).

Publications

  • "Awaiting the ‘Bilski’ ruling with bated breath," The Recorder, March 19, 2010
  • "Awaiting and Anticipating Bilski," LexisNexis® Emerging Issues Analysis, March 2010
  • "Diversity Update Roundtable," California Lawyer, October 2009
  • "Reining in Digital Books Space," Daily Journal, September 30, 2009
  • What Bilski Means For You, Managing Intellectual Property, December 2008 / January 2009
  • "Yahoo! 2.0," IP Law & Business, October 2006
  • "Outsource Licensing: Strategic Uses of IP in the Outsourcing of Critical Business Functions," G0-01JB Advanced Licensing Agreements (PLI) 89, 2004
  • "Secular Organizations for Sobriety, Inc. v. Ullrich," 213 F. 3D 1125 (9th Cir. 2000), 2000
  • "Complaint - NextCard, Inc. v. Providian Financial Corp.," 3 Internet Law & Regulation (P&F), 1999
  • "Book Review - Science at the Bar: Law, Science & Technology in America," 11:1 Berkeley Tech. L.J 205, 1996
  • "Book Review - Children of Choice: Freedom and the New Reproductive Technologies," 10:1 High Tech. L.J. 201, 1995

[ more publications ]

Speeches and Events

  • "Monetizing Intellectual Property: Aligning IP Portfolios with Corporate Strategy," (Panelist), PLI Information Technology Law Institute: Opportunities in Cloud Computing, Blogs, Brand Protection and Targeted Marketing, San Francisco, California, April 15, 2010
  • "The Bilski Effect: Recent and Potential Sea Changes for Statutory Subject Matter," (Panelist), PLI 4th Annual Patent Law Institute, San Francisco, CA, March 22, 2010
  • "Emerging Law & Policy Issues in Cloud Computing ," Panel on Regulation & Jurisdiction, (Moderator), Conference hosted by Berkeley Center for Law & Technology, University of California, Berkeley, California, March 12, 2010
  • "Scaling: Understanding IP as an Enabler or Roadblock," Cleantech Forum XXVI, San Francisco, CA, February 26 - 28, 2010
  • "Bilski and Beyond: Patentable Subject Matter for the 21st Century," Berkeley Center for Law & Technology, University of California, Spring Speaker Series, Berkeley, California, February 2, 2010
  • "Monetizing Intellectual Property: Aligning IP Portfolios with Corporate Strategy," (Panelist), PLI Information Technology Law Institute: Opportunities in Cloud Computing, Blogs, Brand Protection and Targeted Marketing, San Francisco, April 15, 2010
  • "The Bilski Effect: Recent and Potential Sea Changes for Statutory Subject Matter," (Panelist), PLI 4th Annual Patent Law Institute, San Francisco, CA, March 22, 2010
  • "Emerging Law & Policy Issues in Cloud Computing ," Panel on Regulation & Jurisdiction, (Moderator), Conference hosted by Berkeley Center for Law & Technology, University of California, Berkeley, March 12, 2010
  • "Scaling: Understanding IP as an Enabler or Roadblock," Cleantech Forum XXVI, San Francisco, CA, February 26 - 28, 2010
  • "Bilski and Beyond: Patentable Subject Matter for the 21st Century," Berkeley Center for Law & Technology, University of California, Spring Speaker Series, Berkeley, February 2, 2010
  • "Patentable Subject Matter and Practice Strategies in the Shadow of Bilski," UTCLE 14th Annual Advanced Patent Law Institute, (Panelist), Austin, TX, October 29, 2009
  • "Multinational Patent Portfolio Strategy," PLI Advanced Patent Licensing 2009, (Panelist), San Francisco, CA, September 15, 2009
  • "Innovation in a Time of Economic Upheaval: Perils, Opportunities and the Role of IP," Inaugural Meeting of Licensing Executives Society (LES), (Keynote Speaker), San Francisco, CA, September 10, 2009
  • "The U.S. Patent Environment," IAM IP Business Congress, (Presenter and Panelist), Chicago, IL, June 23, 2009
  • "Managing the Use of Open Source Software in a Proprietary Environment: Lessons from In-House Counsel," InfoWorld Open Source Business Conference (Panelist), San Francisco, CA, March 24, 2009
  • "Roundtable Discussion on Patent Holdup & Royalty Stacking," University of San Diego Law School Sponsored Event, San Diego, CA, March 13, 2009
  • "Patent Protection for Internet-related Ideas" and "Evaluating the Future of Business Method Patents & Impact to the Financial Services Industry," World Research Group Conference on Optimizing Patent Strategies, (Presenter and Panelist), San Francisco, CA, February 25, 2009
  • "How do you Get Useful Patents?," Law Seminars International Conference on Best Practices in Patent Monetization, San Francisco, CA, January 29, 2009
  • "Patent Protection in the Aftermath of In re Bilski," Luncheon Event for IP Attorneys and Licensing Executives, Reston, VA, January 22, 2009
  • Federal Trade Commission Conference: Evolution of the IP Marketplace, (Testimonial), Washington, DC, December 5, 2008
  • "Bilski: The Impact on US Patentees," Managing IP Magazine Webinar, November 11, 2008
  • "Software and Business Method Patents: Law, Policy & Controversy," U.C. Berkeley Center for Entrepreneurship & Technology, Course on ‘Patent Innovation & Strategy for Engineers & Entrepreneurs,’ (Guest Lecture), Berkeley, CA, November 3, 2008
  • "Conference and Roundtable Discussion on Patentable Subject Matter," Berkeley Center for Law & Technology Sponsored Event, Berkeley, CA, October 3, 2008
  • "Business & Legal Implications of The Supreme Court’s Decision in Quanta Computer, Inc. v. LG Electronics, Inc.," Morrison & Foerster and the Licensing Executives Society (LES) IP Luncheon, (Panelist), Palo Alto, CA, June 26, 2008
  • "Building Quality Patent Portfolios," 2nd Annual Chief IP Counsel Summit Silicon Valley, (Presenter and Panelist), San Jose, CA, May 1, 2008
  • "The Internet and the Future of Content: Implications of new models for Sourcing, Distribution and Monetization of Content," Plenary Lecture and course presentations at the Scripps School of Journalism, University of Ohio, Athens, OH, April 28, 2008
  • "Patent Protection for Internet-related Ideas" and "Recent developments in Patent Law and Impact on Internet Businesses," World Research Group Conference on Patenting Business Methods for Internet-Based Commerce, (Presenter and Panelist), New York, NY, February 26, 2009
  • "The Anatomy of a Patent: Understanding the Legal vs. Technical Significance of Patent Elements in Different Contexts," U.C. Berkeley Center for Entrepreneurship & Technology, Course on 'Patent Engineering,' (Guest Lecture), Berkeley, CA, February 20, 2008
  • "The Web 2.O Challenge: Supporting Sharing While Protecting Intellectual Property and Privacy," Boalt Hall School of Law All-Alumni Reunion, (Panelist), Berkeley, CA, September 29, 2007
  • "Challenges and Strategies in Dealing with the Patent Office Rule Changes," SFIPLA-sponsored event for IP Attorneys, (Panelist), San Francisco, CA, September 13, 2007
  • "A New Way Forward: How IP & Technology Development springs from Basic Scientific Research," Inaugural Conference of the Institute for Gravitation and the Cosmos sponsored by Penn State Dep’t of Physics, (Keynote Speaker), State College, PA, August 10, 2007
  • "PATENTLEFT: Are patents inherently disruptive, or can they play a meaningful role in supporting innovation and incentivizing quality contributions to Open Source and Open Standards projects?," Yahoo! Research Berkeley Brain Jam, (Lecture), Berkeley, CA, July 27, 2007
  • "Patent Best Practices: What e-commerce businesses need to know about patent reform and how to deal with the inevitable demand letter," 4th Annual Stanford E-Commerce Best Practices Conference, (Panelist), Palo Alto, CA, June 18, 2007
  • "The Future of IP: A Panel Discussion concerning the Development of IP Law in the Next Decade," Panel Discussion at Stanford Law School sponsored by the American Constitution Society, Palo Alto, CA, June 12, 2007
  • "The Future of IP: A Panel Discussion concerning the Development of IP Law in the Next Decade," Stanford Law School Event sponsored by the American Constitution Society, (Panelist), Palo Alto, CA, June 12, 2007
  • "MedImmune vs. Genentech: Does it Lower the Standard for Bringing Suit?," Spring Briefing: Innovations in IP Litigation Conference, (Presenter), San Jose, CA, May 16, 2007
  • "Managing Disputes in a Global Internet Enterprise," Conference session sponsored by WIPO/NASSCOM/Institute for IP Studies (IIPS) and the Technology Law Forum, (Lecture), Mumbai, India, January 18, 2007
  • "Patent Management & Strategies for Building an In-House IP Management Cell," International Conference in IP Rights, (Panelist), Mumbai, India, January 17, 2007

[ more speeches and events ]
 

Practice Areas

Intellectual Property

Communications, Media and Technology

Privacy And Data Security

Litigation

Next Generation Vehicles

Industries

Communications, Media and Technology

Renewable Energy

Regions

North America

United States

Education

  • University of California, Berkeley, A.B., with Honors and Distinction in General Scholarship, 1993
  • Boalt Hall School of Law, J.D., Submissions Editor, BERKELEY TECHNOLOGY LAW JOURNAL, 1996

Professional Background

  • VP & Associate General Counsel - Global Patents, Yahoo! Inc., 2006-2009 
  • Director of Intellectual Property, Quantum Corporation, 2003-2006 
  • IP Counsel, NextCard, Inc., 2001-2002

Admissions

1996

California

1997

U.S.D.C. - C.D. Cal.

1998

U.S. Ct. App. - 9th Cir.

1999

U.S.D.C. - N.D. Cal.

Languages

English