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Meeting Program:
LES Professional Development Series (PDS):
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Workshops
Convergence | Healthcare | High Technology | University | Legal
Convergence
Thursday, February 12 - 1:30-3:00 p.m.
Workshop 1: Convergence of Platform Technologies in Diagnosing and Treating Disease
James Watson, Director,
Strategic Partnering Services
Burrill & Company
Scott Foraker, Vice President,
Licensing, Amgen, Inc.
Jack Anthony, Senior Vice
President, Business &
Commercialization, Tularik Inc.
As we better understand the
underlying mechanisms of
disease, platform technologies
increasing converge to focus
on the diagnosis and treatment.
Since the diagnostic and
therapeutic technologies that
work for one disease are not
always transferable to another,
companies that wish to be
competitive in multiple therapeutic
areas may need to
license technologies much
different from their own (e.g.
small molecules versus antibodies).
This need provides a
unique set of challenges for
licensing professionals. Panel
members will share their experiences
in licensing technologies
that are outside of their
companies historic comfort
zone.
Thursday, February 12 - 3:30-5:00 p.m.
Workshop 5: Commercialization
of Converging Technologies: Strategic Business and IP Considerations
Alan Hauser, Senior Business
Manager, Motorola Life
Sciences
Advancements at the interface
between bioscience and miniaturization
methods hold promise
for significant commercial
benefit. Despite the potential
of converging bio-nano-IT innovations,
the innovating company,
whether an up-start attacker
or a large incumbent, is not
guaranteed success. Moreover,
history reveals mixed results at
best for the innovator. Thus,
how to assess "who will win?"
in this highly competitive space
is one of several questions
relating to commercializing
converging technologies that
will be addressed. Other business
and IP management
issues relating to convergence
also will be presented.
Friday, February 13 - 1:30-3:00 p.m.
Workshop 9: Nanotechnology:
From History to
Hyperbole to Headlines
Philip Summa, President,
Summa & Allan, P.A.
Ken Buckingham, Founder,
Tiny Technology, Inc.
The workshop will provide an
overview of the term "nanotechnology,"
while explaining
its delineation into separate
fields such as electronics,
chemistry, machinery and biology.
The workshops will also
explain the implications of the
"nano" size parameters in
each field individually, and then
the implications of the potential
interactions among separate
technologies that arise
from the common small sizes.
Friday, February 13 - 3:30-5:00 p.m.
Workshop 13: The Convergence of
Food and Pharma to
Address the Needs of a
Maturing Population
Robert Morrison,
Vice President,
BTG International, Inc.
Chris Harley-Martin,
GlaxoSmithKline
The workshop will address
key technology issues relevant
to the food/beverage, food
supplements, and the pharmaceutical
industries. Will an
aging and affluent population
rely on traditional healthcare to
maintain wellness or will the
food/beverage and supplement
companies step to the plate
meet their needs? Or will it be
a combination of both?
Considering the key market
needs including cardiovascular,
obesity, menopause, etc.,
where will the breakthrough
come from? How will they be
commercialized and who will
do it? Case studies/war stories
will be used to illustrate successes
and failures with the
intent to draw out what is
needed to ensure more
success than failure.
Healthcare
Thursday, February 12 - 1:30-3:00 p.m.
Workshop 2: Systems Biology Deal Making
James Erickson, Director,
Business Development, Entelos
Systems biology is a rapidly
growing field and has been
identified as one technology
that will enable companies to
address the looming productivity
crisis within the pharmaceutical
industry. The purpose of
this workshop will be to
discuss this new field in the
context of its being a convergent
of life science, IT, knowledge
management, mathematics
and engineering. The goal
will be to provide a forum for
discussing the implications of
such deals on the future of
pharmaceutical development.
Thursday, February 12 - 3:30-5:00 p.m.
Workshop 6: Off P&L Financing
Strategies: What's Left
and What Works?
Ken Clark, Managing Director,
Technology Transactions Group,Wilson Sonsini Goodrich &
Rosati
Michael Brinkman, CIBC World
Markets
The workshop will review the
history of off-P&L financings in
the biotech industry, from R&D
Limited Partnerships in the
early '80's to SWORDs in the
late 80's and early 90's as well
as some of the off P&L abuses
of Enron and Elan. Learn about
the key accounting changes
that followed the Enron and
Elan transactions, but with a
particular emphasis on what
the new rules still permit.
Deals that companies are doing
today that are effectively "
Off-P&L," including "carveout"
and "balance sheet leveraging"
transactions, and some
others that companies could
consider doing will be highlighted.
Friday, February 13 - 1:30-3:00 p.m.
Workshop 10: Protecting Your
Downside While
Maximizing Your Upside:
Protective Provisions
in Biotech Deals
Randall Sunberg, Partner,
Morgan Lewis & Bockius LLP
Linda Hogan, Vice President,
Business Developments,
Clearview Projects
Christine Mayer, Vice President,
Global Business Development,
Aventis Pharmaceuticals, Inc.
Joseph J. Brindisi, General Counsel and Vice President of Business
Development, Kyowa Pharmaceutical, Inc.
Big pharma and biotech companies
are collaborating and
entering into corporate partnering
arrangements at an
increasing rate. Both sides are
most interested in late-stage
product opportunities. If the
product is a success everyone
wins, but under the surface
both sides are negotiating
increasingly sophisticated protective
provisions to limit their
downsides in case the outcome
is not successful. The workshop
will examine these provisions,
how they come into the negotiation
process and how they
play out in the implementation
of the deal.
Friday, February 13 - 3:30-5:00 p.m.
Workshop 14: Materials Technology Transfer: Filling the Opportunity Gap
David Braunstein, Vice President,
QED Intellectual Property
G. Alan Osan,
McKinsey Consulting
Walter Copan, Principal
Licensing Executive, National
Renewable Energy Laboratory
Robert Gruetzmacher, Director,
Technology Commercialization,
DuPont Company
The workshop will focus on
the current trends and case
histories dealing with IP and
licensing for the current and
emerging new materials
sectors. The need for IP due
diligence, structuring of deals,
pitfalls to avoid, and value
of strategic alliances will also
be addressed.
High Technology
Thursday, February 12 - 1:30-3:00 p.m.
Workshop 3:
Nanotechnology IP
Licensing: Think Big,
But Keep Your Feet on
the Ground!
Donald Featherstone, Director,
Sterne, Kessler, Goldstein &
Fox PLLC
Matthew Murphy, Nanosys
Jennifer Fonstad, Draper Fisher
Jurvetson
Michael Specht, Sterne,
Kessler, Goldstein & Fox PLLC
With all the excitement and
hype surrounding nanotechnology,
how can companies and
universities implement effective
nanotechnology licensing
strategies? The answer: Think
Big, But Keep Your Feet on
the Ground. This workshop
explores what this means in
the context of nanotechnology
IP licensing. The workshop
will compare and contrast the
evolution of biotechnology
IP licensing to that of the early
stages of nanotechnology
IP licensing.
Friday, February 13 - 1:30-3:00 p.m.
Workshop 11: Special Topics in Applying Open Source Methods and Licensing
Don Jarrell, President,
Digital Thinking, Inc.
Lawrence Rosen,
General Counsel,
Open Source Initiative
Mike Michalyshyn,
General Counsel,
QNX Software Systems Ltd.
Embedded systems pose issues
regarding delivery; publication
requirements; flow-through
rights (to modify); and others;
that are very different from the
desktop and server market and
often are bound in characteristics
that seem antipodal to
Open Source. Under some
business models, it may be
more profitable to give some
of your IP away than to sell it.
For example, "Give away the
razors, sell the blades" is an
archetypal example among
patentable subject matter;
"Give away the music, sell the
concerts and t-shirts" is a
current model for copyright.
The workshop will address
these special considerations.
bitration should you use?
Friday, February 13 - 3:30-5:00 p.m.
Workshop 15: How to Write a Compelling Business Plan Involving Substantial IP Licensing Issues
Linda Chao, Associate, Stanford University
Ada C. Nielsen, Manager, Commercial Development, BP Chemicals
Arthur M. Nutter, President and CEO, TAEUS International Corporation
Dwight C. Olson, Vice President, DSI Technology Escrow Services
LES members will share their experiences in preparing and presenting business plans for start up companies which involve significant IP licensing issues. Specific examples of successful business plans will be presented and techniques used to catch the attention of investors and venture capitalists will be discussed. The Workshop is being put on in collaboration with the LES Graduate Student Licensing Competition Award Recipients. The team that won the LES Graduate Student Licensing Competition Award will give us their perspective on preparation of a business plan that involves substantial IP licensing and management components.
Industry/University
Thursday, February 12 - 3:30-5:00 p.m.
Workshop 7: The Courts Giveth,
the Courts Taketh Away:
Recent Litigation
Affecting Industry-
University Relations
John Wetherell, Pillsbury
Winthrop LLP
The value of your intellectual
property can be changed dramatically
by court decisions.
This session will review recent
decisions including Integra
Lifesciences I, Ltd. v. Merck
KgaA,which affect the value of
your patents, especially those
of the type commonly held by
universities and small companies.
Learn about what you
may have been given, what
may have been taken away
and how to go forward licensing
and enforcing your IP.
Legal
Thursday, February 12 - 1:30-3:00 p.m.
Workshop 4: You Want How Much?!: Elements of a Business Savvy IP Strategy
Joseph Yang, Counsel,
Skadden, Arps, Slate, Meagher
& Flom LLP (Moderator)
Kent Richardson, Vice
President, Intellectual Property,
Rambus, Inc.
Ron Epstein, CEO, IPotential
This workshop will focus on
using IP to protect, grow and
add value to your business.
Wondering how to sign a
multi-million dollar patent
license with a customer?
Hear an insider's view into
how companies that have been
successful at doing this have
created real, sustained-value
licensing programs. The presenters
will share their experiences
on how (1) to build a sustainable
business model addressing
a company's business objectives
and market realities,
(2) building a sales presentation
that will really sell, and
(3) working with executive
management to ensure their
commitment to the completion
of the process (especially when
the realities of litigation set in).
A portion of the workshop will
be presented in 3-D.
Thursday, February 12 - 3:30-5:00 p.m.
Workshop 8:
Latent Semantic Analysis:
New Intellectual Property
Data Search Technology
for Non-Obvious
Licensing Opportunities
Mark Holmes, President,
IP Venture Group LLC
(Moderator)
Andy Gibbs, President and
Chief Executive Officer,
PatentCafé.com, Inc.
Thomas Colson, President
and Chief Executive Officer,
IP.com, Inc.
Jack Skeels, Chief Operating
Officer, Vice President, Product
Development, PLX Systems, Inc.
This workshop will present a
number of case studies where
LSA technology and other
progressive search approaches
are being deployed in the
intellectual property industry
for competitive advantage in
the identification of licensing
opportunities, relevant patent
and non-patent prior art,
and infringement / invalidity
analysis. The panelists will cite
various attributes of important
next-generation search
approaches that are being
applied today in the intellectual
property industry, compare the
various approaches, and field
specific search methods questions
from attendees.
Friday, February 13 - 1:30-3:00 p.m.
Workshop 12: Arbitration Provisions
in License Agreements:
Domestic and
International Arbitration
Rod Berman, Chair, Intellectual
Property Department,
Jeffer, Mangels, Butler &
Marmaro LLP
The workshop will address
selected arbitration provisions
and key issues.Why are arbitration
provisions in license agreements?
Why you should spend
time negotiating them? What
in general are the upsides of
arbitration provisions? What in
general are the downsides?
What vehicle for arbitration
should you use?
Friday, February 13 - 3:30-5:00 p.m.
Workshop 16: Boilerplate Provisions:
Are They Worth Fighting Over?
Russell Levine, Partner,
Kirkland & Ellis LLP
Jonathan Retsky, Vice President
& Director, Patent Operations,
Motorola, Inc.
William Hodkowski, Attorney,
Agilent Technologies, Inc.
The workshop will address and
debate the pros and cons of
boilerplate provisions in license
agreements. The clauses that
likely will be addressed include
choice of forum, choice of law,
entire agreement clauses, no
waiver clauses, notice provisions
and numerous others. The
workshop will also discuss and
explain how such clauses are
treated in litigation, and reveal,
perhaps to the surprise of
attendees, that such clauses
are being enforced by the
Courts.
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