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TUESDAY, April 11, 2006

The San Diego Chapter of the Licensing Executives Society
Panel Discussion Featuring:

"Enhancing & Defending I.P.of High Technology Companies"

Sponsored by:
McDermott Will & Emery

SPEAKERS:

William "Bill" J. Decker, Ph.D., Assistant Director, Physical Science Licensing  Technology Transfer & Intellectual Property Services (TechTIPS) UCSD 
Robert W. Gustafson, Senior Counsel  Midway Games Inc.
Neal Svalstad, General Counsel Hitachi Home Electronics (America), Inc.
Sam Talpalatsky, Chief I.P. Counsel  Conexant Systems, Inc.

Moderator:
Joseph J. Daniele, PhD, Chief Operating Officer Acorn Technologies, Inc.

PROGRAM DESCRIPTION:
The recent Research in Motion (RIM) payment of $ 612.5 million to NTP to settle all patent infringement claims related to RIM's Blackberry device highlighted once again the Midas touch of solid intellectual property (I.P.). However, high technology companies in such industries as telecommunications, enterprise software, consumer & defense electronics and personal entertainment face unique challenges in defending and enhancing the value of their I.P. versus other industries.  Particular concerns include counterfeiting prevention, copyright violations, black-market or parallel imports, reverse engineering, clean-room clones and compromised data-encryption algorithms.

On the plus side, strategies for accelerating IP value creation are available to high tech industries that are not generally possible in other fields. Examples include co-opting or influencing industrial and governmental standard-setting organizations, import/export restrictions, and aggressive licensing & sub-licensing campaigns. Can you say Qualcomm? But can today's companies realistically expect this kind of global I.P. hegemony?  Or really just purple haze?   

Come hear our pan-industry powwow of high tech mavens opine and prognosticate on "Enhancing & Defending I.P. of High Technology Companies".

PANELISTS BIOGRAPHYS:

William "Bill" J. Decker, Ph.D.  Assistant Director Physical Science Licensing Technology Transfer & Intellectual Property Services (TechTIPS)
 University of California, San Diego - Panelist

Prior to joining UCSD, Bill Decker was employed for five years at a small biomedical device start-up - formerly called ChromaVision Medical Systems and now called Clarient (CLRT) - first based in Florida, then in Orange County, California, where he held positions that were cross-functional between business and R&D.  Bill's work at the company resulted in five issued US patents and two issued non-US patents, with other patents still pending.

While at UCSD, he has helped negotiate many licensing deals, including the following selected highlights: UCSD Jacobs School of Engineering Internet security start-up and acquisition. UCSD Jacobs School of Engineering video compression start-up, Outlicense of database software from the San Diego Supercomputer.

Over the years he has delivered talks at meetings of the American Physical Society, the American Nuclear Society, the Society for Industrial and Applied Mathematics, the International Society for Analytical Cytology, the Association for Women in Science, and the National Association of College and University Attorneys. He received his Ph.D. from the University of Virginia in Engineering Physics, with a dissertation entitled "Numerical Studies of Bifurcations and Chaos in Natural Convection."  He has received training from the MIT Sloan School of Management in both managing corporate innovation and negotiation, and the American Management Association on managing technical professionals. Bill has either sat on the board or served as an officer of several non-profit organizations. He is active in San Diego's World Team Tennis league, and the San Diego Astronomy Association.

Robert W. Gustafson    Senior Counsel   Midway Games Inc. - Panelist

Rob Gustafson is Senior Counsel at Midway Games Inc., a video game development and publishing company.  He is responsible for creating development contracts for the creation of video games by independent developers and licensing intellectual property both into and out of the company.  He is responsible for minor consulting contracts for the creation of small parts of intellectual property incorporated into video games and reviews content for potential infringement prior to commercial publication of the company’s products.

Prior to working for Midway,  Mr. Gustafson worked at the law firm  Jenner & Block, practicing patent litigation and, to a lesser extent, prosecution.

Neal Svalstad, Esq. General Counsel   Hitachi Home Electronics (America), Inc.- Panelist

Hitachi Home Electronics (America), Inc. manufactures Hitachi brand products, including plasma, flat panel and projection televisions for the US market.  Prior to joining Hitachi, Neal was Corporate Counsel for Vivendi Universal Net USA Music & Media Group.  As In-house attorney, he was responsible for structuring, negotiating, drafting and overseeing implementation of all commercial transactions, including a wide range of complex intellectual property licensing, custom software/development, promotional, hard goods purchase/sale and online consumer relationships. 

Through out his career, Neal has acquired a broad range of experience in both legal and business relationships.  He founded and acted as General Counsel for his own start up company following several years at Latham & Watkins.  Thereafter, he became CEO for Digital Provide where he directed development of a reliable, low-cost, turnkey technology platform for deployment in facilities of non-profit organizations.

Neal obtained his law degree from Northwestern University School of Law and is admitted to practice in California.

Sam Talpalatsky   Chief I.P. Counsel  Conexant Systems, Inc.

Sam Talpalatsky is Chief Intellectual Property Counsel at Conexant Systems, Inc., a semiconductor design company in solutions for broadband communications and

the digital home.  He is responsible for the harvesting, prosecution, management and enforcement of the company’s intellectual property portfolio.  His responsibilities further include management of a number of worldwide patent assertions and actions against the company, its customers and distributors. Mr. Talpalatsky represents the company in its significant licensing matters, joint ventures, acquisitions, mergers and divestitures.   

Prior to Conexant Mr. Talpalatsky served as patent and general counsel at Directed Electronics, Inc., where he was lead litigation counsel in many patent infringement actions and leveraged the company’s patent portfolio to advance the company’s business objectives. 

In addition, Mr. Talpalatsky is an adjunct professor at Thomas Jefferson School of Law, where he teaches intellectual property and technology licensing courses.  Mr. Talpalatsky also chairs the intellectual property special interest group at American Corporate Counsel Association; co-chairs the intellectual property special interest group at ComNexis (formerly San Diego Telecom Council); and is a former board member and president of the San Diego Intellectual Property Association.

Joseph J. Daniele, PhD   Chief Operating Officer, Acorn Technologies, Inc. - Moderator

Joe Daniele is Chief Operating Officer of Acorn Technologies, Inc., an R&D and IP Transactions company with a focus in semiconductors and telecom. An expert in Intellectual Property (IP) and technology commercialization, he has led R&D efforts and completed nearly 400 IP arrangements. Previously, he was Senior Vice President of IP and Technology Commercialization at SAIC, a $7 billion San Diego-based company. There, he established the IP Management and Technology Commercialization function and generated significant revenue and equity through mining and commercializing the IP portfolios of SAIC and its wholly owned subsidiary Telcordia (BellCore). Before joining SAIC, Joe held senior positions at Xerox.  There, he established and headed Xerox' Intellectual Capital Business Unit and the Corporate Office for Management of Intellectual Property, and was responsible for licensing and commercialization of Xerox’ IP portfolio including 8,000 US patents and related know how.  His responsibility included the Corporate Infringement Lab, IP Strategy, and worldwide licensing/sales.  In his Xerox career, he was a partner in what was later known as Xerox New Ventures, was Corporate Strategist for Xerox’ core products, and was Corporate Technology Advisor to senior management.  Prior to Xerox, he was at NA/NV Philips where he held line management positions in R&D.  He earned a BSEE and PhD in Physics of Solids from MIT and an MBA from University of Rochester.  He has published more than 25 papers and holds 22 patents.

For additional information, please contact:
Ross A. Epstein, Chair
Tel.  (858) 792-8211
Fax  (858) 792-8946
e-mail: repstein@nathlaw.com

or

Kasia A. Epstein, Event Coordinator
Tel. (619) 944-1628
e-mail: Kasia-Epstein@sbcglobal.net