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William A. Tanenbaum

William A. Tanenbaum
Partner, Chair, Technology, Intellectual Property and Outsourcing Group
wtanenbaum@kayescholer.com

New York
T: (212) 836-7661 F: (212) 836-6765

Palo Alto
T: (650) 319-4525 F: (650) 319-4700

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William A. Tanenbaum is the Chair of Technology, Intellectual Property and Outsourcing Group, the Chair of the Green Tech and Sustainability Group at Kaye Scholer and a Partner in the firm’s New York and Palo Alto offices. He also heads the firm’s social media, privacy and data protection practice and works in health care informatics and Life Sciences. He is a past president of the International Technology Law Association. He is Vice President for Planning of the Metropolitan New York Chapter of the Society for Information Management.

According to legal researcher Chambers, Mr. Tanenbaum has “built one of New York City’s most outstanding IT transactional practices,” is a “well-respected attorney, with a well-informed approach [who] provides litigation, transactional work and strategic counseling on a range of technology and outsourcing-related issues,” and is “efficient, solution-driven and makes excellent judgment calls.” Chambers also found he “is an acknowledged expert on the convergence of mainstream businesses with cleantech.” His Information Technology Law practice has been recognized for over ten years by Best Lawyers and was ranked in the First Tier in New York in the 2011 and 2010 by Best Law Firms Survey by U.S. News and World Report. He “is among the market’s foremost IT licensing experts and a leading authority on related issues such as data security, privacy and social media [and] is endorsed by all as a ‘strong, pragmatic lawyer who knows exactly how to get a deal done,’” according to the World’s 250 Leading Patent and Technology Lawyers. Because of the strength of his Group’s practice, Kaye Scholer was named as the “Internet & E-Commerce Law Firm of the Year” by The Lawyers World Law Awards 2011. According to Legal 500, clients recommend William Tanenbaum as “an outstanding attorney with a deep knowledge and understanding of technology and outsourcing and a deeply principled and trustworthy colleague.” Legal 500 says that his Group’s “brilliant attorneys collaborate well and provide fast, diligent responses.”

Mr. Tanenbaum serves as lead partner in IT and IP transactions and in patent litigations. In 2011, he won a business method patent case on summary judgment and obtained a complete dismissal of a case brought against his client CLS Bank, which settles foreign exchange trades for 60 major member banks with an average daily value of approximately $4 trillion (CLS Bank International v. Alice Corp. Pty. Ltd., 768 F. Supp. 2d 221 D.D.C. 2011). The decision is significant because, among other things, it addressed issues left unanswered in the Supreme Court’s decision in Bilski v. Kappos. He also won a victory for a multinational medical device client in a patent case in the Court of Appeals for the Federal Circuit. He is the founder and co-chair of two annual PLI conferences. One is on Outsourcing and the other is on Green Law and Business. He is a graduate of Brown University (Phi Beta Kappa and Degree with Highest Honors), A.B. ’76 and Cornell Law School, J.D. ’79.

MEHR

Professional Recognition

  • Named as one of the Top 25 IT Lawyers in the U.S. by the Best of the Best.
  • Selected as one of the World’s Leading 250 IP Strategists by Intellectual Asset Management.
  • Selected as one of the World’s Leading 250 Patent and Technology Licensing Practitioners by Intellectual Asset Management.
  • Named as “Leading Individual” and awarded “Recommended” ratings in both Outsourcing and Technology law by Chambers.
  • Recognized as a “Notable Practitioner” in Outsourcing at the National level by Chambers.
  • Named as a member of the “Legal 500” in the Media, Technology and Telecoms — Outsourcing category.
  • Named to the International Who’s Who of Internet, e-Commerce & Data Protection Lawyers 2011.
  • Recognized in The Best Lawyers in America 2002 through 2012 for Information Technology Law.
  • Recognized as the “highly influential chair” of Kaye Scholer’s “‘high-powered, very international’ Internet and e-commerce practice” in Who’s Who Legal.
  • Named to the International Who’s Who of Business Lawyers 2011 in the “Internet and e-Commerce” category.
  • Named to the Expert Guide to the World’s Leading Technology, Media & Telecommunications Lawyers,
  • published by Euromoney Publications.
  • Named to the Expert Guide to the World’s Leading Information Technology Lawyers, published by Euromoney Publications.
  • Named as a leading lawyer in the Outsourcing Multijurisdictional Guide 2010/2011 through 2012/2013, published by PLC Which lawyer?”
  • Listed in SuperLawyers.
  • Named in the Expert Guide to the World’s Leading Media Lawyers, published by Euromoney Publications.

Client and Peer Ratings

Chambers interviews clients, in-house counsel and peer attorneys in private practice and found that Mr. Tanenbaum “receives excellent feedback from the market.” Client and peer comments include:

  • a “leading light” in outsourcing with “household names” in his client roster
  • “clients highlight his IP experience, but commend his command of the whole deal”
  • has “‘masterful experience’ in the patent realm”
  • “an effective negotiator”
  • “good at communicating with clients”
  • “thorough and experienced”
  • “focuses on the important issues”
  • “responsive and efficient”
  • “always accessible”
  • “great at explaining technical legal issues to lay people”
  • leads a “team [that] knows the tricks and traps that arise in the IT outsourcing world because it’s seen so many of them. This experience means it knows what works and what doesn’t in difficult situations”
  • “clients are drawn by the strength” of his Group’s “IP counsel and specifically the niche it has carved out in global data security matters”

Comments from clients in a survey conducted by Legal 500 include:

  • “wide knowledge in the technology area”
  • “is focused on the client’s overall business, and not just discrete issue at hand”
  • “strength in financial services and defense industry work [provides] valuable expertise in managing outsourcing transactions in heavily regulated industries”

Mr. Tanenbaum’s experience and leadership in the fields of technology transactions and outsourcing were recognized when he was selected to serve as the neutral arbitrator in a $30 million outsourcing dispute.

Leadership Positions

  • Past President of the International Technology Law Association (formerly named the Computer Law Association).
  • Founder and co-chair of PLI’s annual national Outsourcing Law conference.
  • Founder and chair of PLI’s annual national Green Technology Law and Business conference.
  • Presenter of series of monthly speeches on Green Law and Business topics for PLI, LSI, ACI and others.
  • Contributor to Bloomberg’s Energy Sustainability Law Report.
  • Author and presenter of a series of monthly speeches sponsored by West LegalEd and CelesqÂŽ AttorneysEd Center entitled “Tanenbaum on Technology Law and More” (2006-2008).
  • Lecturer on litigating and arbitrating IT and IP dispute, Green IT, Green Patent Litigation, privacy and data security, outsourcing, and other topics at legal, industry and academic events, including at Sourcing Industry Group conferences.
  • Former New York Law Journal columnist on “Privacy and Data Management”.
  • Member, West Professional Development Intellectual Property Law Advisory Board.

Areas of Practice

  • Intellectual Property
    • Strategic Intellectual Property counseling
    • IP licensing and other agreements
    • Joint venture, strategic alliances and other business relationships
  • Transactional matters
    • Lead partner in intellectual property, information technology, life sciences, outsourcing, technology service agreements and other technology transactions
    • Outsourcing transactions including IT, business process, knowledge process and pharmaceutical outsourcing
    • Renegotiation of technology agreements in light of changing economic conditions
    • Updating agreements to add provisions regarding cleantech, green technology and sustainability
    • Cloud computing
    • E-Commerce and contract transactions
  • Litigation
    • Lead partner in intellectual property and technology litigations involving patents, copyrights and trade secrets
    • Selected as arbitration chair and party arbitrator and mediator in numerous disputes
  • Data Protection, Data Management, Privacy and Social Media
    • Data analysis, data mining and enabling software
    • IP protection for data, including market data
    • Litigation and dispute resolution
    • Transactions
    • Strategic Counseling
    • Develop corporate Social Media policies with use in e-Commerce
  • Green Technology and Environmental Sustainability
    • Intellectual property protection, licensing and strategic counseling.
    • Assisting mainstream companies in adopting cleantech to reduce costs and improve energy efficiency and sustainability
    • Green IT and Energy Smart Technology
    • Green outsourcing
    • Corporate sustainability policies
    • Supply chain environmental sustainability
    • Carbon credits and trading
    • Remanufacturing and product life-cycle development

Notable Matters

  • Created open source software policies for Fortune 500 companies
  • Established technology infrastructures for U.S. companies in China for the 2008 Beijing Olympics
  • Advised NASA and the New York County Lawyers’ Association on intellectual property matters
  • Advised on cloud computing
 
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