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Prior Events at the Orange County Chapter
2008 2007 DATE/TIME: Thursday, November 16, 2006/ 12:00 - 1:30 p.m. DATE/TIME: Thursday, October 19, 2006/ 12:00 - 1:30 p.m.. Intellectual property due diligence is an essential part of any strategic alliance, venture funding, or corporate acquisition. Its importance has given rise to an emerging specialty in the field of intellectual property law. Thorough preparation for this key event is essential to expedite negotiations with third parties or expedite funding. This presentation will provide a relatively detailed look at the essential elements of a due diligence investigation to assist smaller companies in preparing for an IP due diligence. The presentation will touch on a variety of challenging issues arising during due diligence including contractual issues affecting IP as well as difficult patent issues including inventorship and freedom-to-operate, and provide specific recommendations to avoid problems in the due diligence process. DATE/TIME: Thursday, September 21, 2006 / 12:00 - 1:30 p.m. Date/Time: Thursday, April 20, 2006 / 12:00 - 1:30 p.m. Summary: With recent accounting regulations requiring companies to test their intangible assets for impairment, as well as corporate balance sheets burgeoning with these assets, companies big and small are looking for ways to monetize their Intellectual Property. Acacia Technologies Group is in the business of acquiring, and/or partnering, licensing and enforcing patents. With more than 400 licenses, it has a long track record of success in helping patent owners turn their patents into revenue. Date/Time: Thursday, March 23, 2006 / 11:30 a.m. - 1:00 p.m. (David’s talk will begin promptly at noon) Topic: Drafting Intellectual Property Licensing Agreements: Pitfalls for the Unwary Featured Speaker: David Weiss, Intellectual Property Attorney - Knobbe, Martens, Olson & Bear, LLP David Weiss is managing partner in our Los Angeles office. David represents e-commerce companies, medical device manufacturers, telephony and communication firms, memory manufacturers, movie studios, and online media distribution firms with respect to their intellectual property matters. David’s practice is concentrated in strategic counseling, licensing, and domestic and international patent prosecution for both early stage and established companies. He has extensive experience in developing strategies to protect a market niche, conducting venture capital due diligence, preparing non-infringement opinions, and dealing with the intellectual property challenges that face new and established companies. In addition, David has extensive experience in copyright protection and trade secret matters. His practice focuses on e-commerce, software, communication technologies, computer-related technologies, optical technologies, and media distribution. Prior to joining the firm, David worked for Hughes Aircraft, Lockheed Electronics, and Smiths Industries, where he was section head of their microprocessor and digital design group, as well as project manager of their flat panel display systems product line. David received his engineering degree from UCLA and his JD from Rutgers School of Law. Date/Time: Tuesday, January 24, 2006, 11:30 a.m. - 1:00 p.m. (Gary’s talk will begin promptly at noon) Gary Augusta is executive director of Orange County Technology Action Network ("OCTANe"), an organization which strives to encourage venture-capital investment in O.C. technologies. Gary brings over 15 years experience to his role as executive director of OCTANe. He has experience in business consulting, technology start-up as well as Fortune 500 corporate venture and development experience. As a corporate officer of Fluor, Gary focused on identifying acquisitions, leading due diligence and managing integration efforts for several acquisitions. As a senior executive with a CRM technology start-up in Silicon Valley, Gary was responsible for developing the business plan and operating model, venture fundraising and establishing technology alliances with companies such as PeopleSoft and Siebel. Gary has a BS in Mechanical Engineering from the University of Rhode Island and a Masters of Science and Management (MSM) from Georgia Tech. Licensing Executives Society (U.S.A. & Canada), Inc.certifies that this activity conforms to the standards for approved education activities prescribed by the rules and regulations of the State Bar of California governing minimum continuing legal education. Date/Time: Friday, November 18, 2005 - 12:00 - 1:30 p.m. Topic: Optimize Your Next Licensing Deal: Advanced Tools of the Trade Featured Speaker : Larry A. Risen, President and Senior Consultant Pharmaceutical, Diagnostic, and Biotechnology Markets Goals:
This presentation will demonstrate how to use model inputs derived from both primary and secondary market research data to build highly confident estimations of Expected Net Present Value (ENPV). Decision Tree Analysis is often incorporated for sensitivity analysis to investigate the effect of development risk upon deal terms and for optimizing terms yielding the greatest ENPV. Many modeling approaches are limited by simulation based upon secondary data alone. This presentation will cover how to combine techniques such as Decision Tree Analysis (DTA), Monte Carlo simulation, Real Options, and quantitative risk analysis to maximize Discounted Cash Flows (DCF) and Expected Net Present Value (ENPV) from your next deal. Speaker Bio: Mr. Risen has over 20 years of industry experience in medical marketing, market research, product planning, licensing and acquisitions in pharmaceutical, diagnostics, and biotechnology. Prior to forming BioTrak, Mr. Risen held various senior level positions in marketing and business development for pharmaceutical and diagnostic product companies including Cypros Pharmaceutical Corporation (Questcor), Gen-Probe Inc., and Molecular Biosystems Inc.. Mr. Risen received his Bachelor of Science degree in Biology from the University of Iowa and completed his MBA studies at the University of San Diego. He has been a featured speaker for the Licensing Executive Society, Medical Market Association, and several other key conferences. DATE: Thursday, February 17, 2005 TOPIC: ANTITRUST ISSUES IN INTELLECTUAL PROPERTY LICENSING FEATURED SPEAKER: James Hill, M.D., Knobbe, Martens, Olson & Bear, LLP Even though both parties may be in agreement, antitrust laws can affect the validity and interpretation of an agreement in a way that neither party intended. Dr. Hill's presentation will focus on general antitrust principles, as well as specific things to keep in mind, such as the FTC/DOJ reporting requirements (Hart-Scott-Rodino), licenses in drug patent settlements under Hatch-Waxman, and implications of refusals to license, license restrictions, patent pools, royalty structure and price restrictions, package licenses and tie-ins. James Hill, M.D. is a partner at Knobbe, Martens, Olson & Bear, LLP, in its Orange County office. He specializes in patent prosecution, litigation, and client counseling for the medical device and life sciences industries. He currently holds a position as Clinical Assistant Professor of Radiology at the University of Southern California School of Medicine in Los Angeles. Dr. Hill obtained his medical degree from the University of Southern California and law degree from Boston University. He did his residency training in internal medicine at Huntington Memorial Hospital in Pasadena and USC. He did further residency training in diagnostic radiology at the Massachusetts General Hospital and Harvard Medical School. DATE: April 22, 2004 TOPIC: TAKING TAX INTO ACCOUNT - ADDING EFFICIENT TAX STRUCTURING INTO THE DEAL EQUATION FEATURED SPEAKER: Ronda Sroka, DeLoitte & Touche Download Ronda Sroka's Presentation When structuring a licensing deal how can companies both protect and maximize the value of their intellectual property (IP)? Tax is a critical factor to address when choosing where to grow IP and in developing an overall IP licensing strategy. By properly structuring IP, a company can effect significant tax savings and grow value. In this presentation, we will discuss the financial and tax consequences that arise from licensing deals and efficient strategies to deal with them, including how to protect valuable credits and incentives, untangle the web of transaction taxes, take a tax holiday and use government programs to maximize corporate returns from intellectual property. Ronda Sroka specializes in serving life science companies at all stages of development. She brings a deep understanding of the business issues facing the industry to her work with biotechnology, biopharma, and medical device companies. Using insights and knowledge gained through industry experience, Ms. Sroka helps clients develop sound growth and capital optimization strategies. She has worked extensively with mergers and acquisitions, credits and incentives, stock compensation planning and strategic partnerships. Ms. Sroka has over 14 years of experience in public accounting. She specializes in tax, and serves both public and emerging companies in the life science and technology sectors. Ms. Sroka assists clients through effective tax rate planning, business structuring and compensation/benefits planning. In addition, she has published articles on tax accounting methods and gives seminars on current tax topics.
DATE: February 19, 2004 TOPIC: INTERSECTION (COLLUSION?) OF BANKRUPTCY AND PATENT LAWS FEATURED SPEAKER: James W. Hill, Partner, Sullivan Hill Lewin Rez & Engel Mr. Hill's presentation will examine some of the basic interrelationships between bankruptcy and patent law. Because the Bankruptcy Code and the Patent Code are parallel federal statutes, our federal Constitution's Supremacy Clause does not dictate that one body of law governs over the other. The intersection of these two federal schemes creates a number of unsettled issues when determining the treatment of patent rights in bankruptcy cases. In some cases, the amount creditors recover from a bankrupt debtor depends on the treatment of the debtor's intellectual property assets. Often, the results dictated by the Bankruptcy Code are seemingly directly at odds with the policy concerns of the Patent Code. Mr. Hill's presentation will focus on the problem of "back door" assignments of patent licenses when one of the parties to a patent license agreement files bankruptcy. James P. Hill is a shareholder and founding member of the San Diego-based law firm of Sullivan Hill Lewin Rez & Engel. He heads up the firm's Bankruptcy, Insolvency and Commercial Law Group. His bankruptcy practice experience includes representation of creditors, bankruptcy trustees and examiners, and bankruptcy debtors in Chapter 11 reorganization and other complex bankruptcy cases. He works regularly with clients on asset sales and acquisitions and on business workouts and dissolution matters, among other commercial law matters.
DATE: January 22, 2004 TOPIC: Innovative Approaches to University/Industry Agreements FEATURED SPEAKER: David G. Schetter, Assistant Vice Chancellor Office of Technology Alliances, University of California, Irvine Assistant Vice Chancellor Schetter will present a solutions-oriented overview of the principles, priorities and processes that underlie successful university/industry research and technology collaborations. As UCI's Office of Technology Alliances (OTA) is entering its tenth year of independent operation, the OTA has developed creative and flexible approaches to challenging issues raised by its industry partners. Mr. Schetter's career spans thirty years at the University of California in various research and administrative capacities, including Assistant Director of a large interdisciplinary Organized Research Unit and Assistant Dean of Graduate Studies & Research for the UCI campus. In 1990, David G. Schetter established UCI's Office of Technology Alliances to serve as a focal point for campus intellectual property administration and corporate/university interactions involving research and technology transfer. He serves on the boards of a number of industry trade groups and is an advisor to the UC President on technology transfer matters. As it is vital for the University of California to work well with industry if the state is to reap the economic benefits of the massive public investment in UC research, Mr. Schetter is particularly interested in responding to specific issues and concerns of LES members. If you would like a specific issue or concern addressed, please email your questions/comments to Dave at schetter@uci.edu by close of business January 20 or to Lori Yamato at lyamato@kmob.com.
DATE: November 20, 2003 TOPIC: Tailoring a Patent Portfolio to Increase Licensing Revenue SPEAKER: John R. King, Partner - Knobbe, Martens, Olson & Bear, LLP The program will focus on patent strategies for targeting a direct infringer, developing cost-effective patent thickets, and obtaining royalty-enhancing patent claims. In addition, Mr. King will provide techniques that help identify and protect a company's commercially viable technologies. John King is a partner with the law firm of Knobbe, Martens, Olson & Bear where he specializes in patent, trademark and copyright matters. A significant part of Mr. King's practice includes counseling computer software and computer hardware companies regarding how to protect their intellectual property assets. Mr. King received his Juris Doctorate, with honors, from the University of Texas Law School in 1993. Prior to attending law school, he obtained a B.S. in Electrical Engineering and worked as a design engineer developing software and hardware for computer graphic workstations. DATE: October 16, 2003 - 12:00 p.m. - 1:30 p.m. SPEAKER: Jesse W. Markham, Partner - Orrick, Herrington & Sutcliffe LLP TOPIC: IP Licensing - Antitrust Traps for the Unwary The program will pinpoint key problem areas in intellectual property licensing and identify some solutions in these areas. Mr. Markham will also discuss current enforcement approaches of the antitrust agencies and the courts. Mr. Markham is a litigation partner with the San Francisco office of Orrick, Herrington & Sutcliffe, LLP. Mr. Markham is a recognized authority on antitrust law, handling mostly large, complex matters. He represents clients before enforcement agencies on civil and criminal investigations and proceedings. The majority of Mr. Markham's practice is focused on the representation of technology clients. On the international front, Mr. Markham participated in the effort to establish antitrust enforcement mechanisms for Russia and the Ukraine, and he has also represented clients in international cartel investigations.
DATE: October 17, 2002 SPEAKER: Ian Joseph, Senior Vice President, The Geneva Companies
PROGRAM: In this presentation, Mr. Joseph will discuss a number of key strategies for positioning one's business to demonstrate growth opportunities and some key strategies for reducing perceived risk. Mr. Joseph will present examples from recent mergers and acquisitions that demonstrate the positioning strategies discussed. The examples will include experiences from a broad spectrum of business sales, including sales involving companies specializing in biological material manufacturing, medical equipment, software development, and general manufacturing. Ian Joseph is Senior Vice President, Mergers and Acquisitions for The Geneva Companies, Inc., a subsidiary of Citigroup. He is responsible for managing client accounts in acquisitions/divestitures from initiation to closing as an agent of the principals. DATE: Thursday, May 9, 2002 TOPIC: "Selling The Company" A Special Dinner Presentation by the Orange County LES Chapter Please join us for a special Licensing Executive Society Dinner Meeting. We will be featuring Mr. Richard Nichol and Mr. James C. Peacock III, Esq., who will be speaking about their experiences and lessons learned when "Selling the Company." Mr. Nichol is the Ex-President of IBRD and CoCensys and Mr. Peacock III is the Ex-Vice President and General Counsel of Atrionix, Inc. Schedule 6:00 PM Registration 6:30 PM Dinner Program Location THE AIRPORT HILTON 18800 MacArthur Blvd., Irvine, CA 92612
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