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Workshops
Note: 7.5 hours of MCLE credit in TX has been approved for the legal workshops.
HEALTHCARE
1-A: Pharma-Biotech
Collaborations and M&A:
Protecting the Deal While
Protecting Your Interests
Monday, October 18, 2:00-3:15 p.m.
Randall B. Sunberg
Partner, Head, Life Sciences
Transactions Practice, Morgan,
Lewis & Bockius LLP
Christine Mayer
Vice President, US Group Head, Aventis
Pharmaceuticals Inc.
Linda C. Hogan
Vice President, Business Development, Clearview Projects
Joseph Brindisi, General Counsel and Vice President, Business Development, Kyowa Pharmaceutical Inc.
Advanced
Pharma and biotech collaborations and
M&A deals are setting records, not
only in terms of the amounts paid but
also in terms of the bidding frenzy of
potential partners and the ever-faster
timeframes for completing these transactions.
If the deal is successful everyone
wins, but under the surface both
sides are negotiating increasingly
sophisticated mechanisms to protect
their interests in case the outcome is
not as successful as envisioned. We will
examine the themes and concerns of
both pharma and biotech underlying
this trend and explore the best ways to
address these issues while still protecting
the deal and without causing
disalignment between the parties.
1-B: Becoming the
Partner of Choice
Monday, October 18, 2:00-3:15 p.m.
Robin S. Sitver
Senior Director, Global Business
Development and Strategic
Planning, Pfizer Inc.
Paul Hansen
Principal, Towers Perrin
Novice/Intermediate
This workshop will focus on ways to
improve the success of licensing/acquisition
programs by developing effective
techniques on how to best approach
potential partners. This will include a
discussion of how to refine the processes
for screening, evaluating and
negotiating agreements to improve the
likelihood of success of completed
transactions and alliances. Success factors,
areas of concern, potential deal
stoppers, and how to overcome them
will be discussed.
1-C: Repositioning In-Licensed
Assets to Increase Commercial
Potential
Monday, October 18, 2:00-3:15 p.m.
Ruth A. Plager
Senior Director, Business Development
& Strategic Marketing, Enzon
Pharmaceuticals
David I. Stirling, Ph.D.
Chief Scientific Officer, Executive Vice
President, R&D, Celgene Corporation
All Levels
In contrast to promotion sensitive
products, there are some intriguing
examples of products with heretofore
limited profiles or utility that have
been in-licensed and then developed
for indications with tremendous upside
commercial potential.
1-D - ROUNDTABLE:
The Challenge of Licensing
Synergistic Technologies
Monday, October 18, 2:00-3:15 p.m.
Bruce Leicher
VP and Chief Pharmaceutical Counsel, Millennium Pharmaceuticals, Inc.
Brenda Herschbach Jarrell
Patent Attorney and Chair,
Life Science Group, Choate, Hall & Stewart
Lita Nelsen
Director, Technology Licensing Office,
MIT
Larry Steranka
Executive Director, Office for Technology Licensing,
Brandeis University
Eric Marandett
Litigator, Choate, Hall & Stewart
Christoph Westphal
General Partner, Polaris Venture Partners
Advanced
"The Challenge of Licensing Synergistic Technologies" will explore the legal and business issues related to new ventures and collaborations. A panel comprised of academic, corporate and legal professionals willÊshare theirÊstrategies and experiencesÊrelating to collaborative projects. This roundtable will exploreÊissues relating toÊ"synergistic technologies" such as joint ownership,Êprotection and valuation. Audience participation on lessons learned and best practices will be encouraged.
2-A: The Negotiation and
Drafting of Collaborative Drug
Development Agreements
Monday, October 18, 3:45-5:00 p.m.
Beth E. Arnold
Partner, Foley Hoag LLP
Dan Darnley
Associate General Counsel, Biogen Idec
Jim McLoughlin
Director, Strategic Alliances, Pfizer, Inc.
Intermediate
R&D collaborations are assuming
increasing importance in drug development.
Advances in the understanding
of disease processes have yielded a
variety of new tools (genomic and proteomic
targets, animal models, assays,
etc.) that can be deployed to identify
and validate safer and more effective
drugs. Critical issues for drug development
companies are how best to access
the right tools, effectively implement
their use and appropriately compensate
the tool owner for their contribution.
In addition to partnering for tools,
companies are increasingly collaborating
in drug development to produce
combination therapeutics or drug cocktails.
This workshop is intended to
raise the issues and facilitate a discussion
among panelists and the audience.
2-B: Pharmaceutical Product
Life Cycle Enhancement
Monday, October 18, 3:45-5:00 p.m.
Martin A. Voet
Senior Vice President and Chief IP
Counsel, Allergan, Inc.
Steve Johnson
Vice President, Legal Counsel for
Regulatory Affairs, Allergan, Inc
Hans Peter Pfleger
Vice President, Global Marketing,
Allergan, Inc.
Advanced
This workshop will feature a multi-disciplinary
approach to enhance branded
pharmaceutical product life cycles
through creative application of patents,
trademarks, FDA regulatory submissions
including Orange Book listings
and Citizen Petitions, cycled new product
improvements and litigation tactics
under Hatch Waxman Act.
2-C - ROUNDTABLE:
Drug Hunting
Monday, October 18, 3:45-5:00 p.m.
Richard Brudnick
Director, Corporate Development, Biogen IDEC
Mary Ellen Myers
Director, Business Development and Licensing, Chiesi Pharmaceuticals, Inc.
All Levels
This roundtable will focus on the
efforts by specialty pharmaceutical
companies, large pharmaceutical companies,
and international pharmaceutical
companies to find appropriate
products for their companies' pipelines.
The strategies they use, the types of
products they look for, general licensing
terms, and agreement structures
will all be discussed. Audience
participation on best practices will
be encouraged.
Tuesday, October 19
3-A: Deal-Killers in
Healthcare/Biotech Licensing
Tuesday, October 19, 3:45-5:00 p.m.
Gary M. Nath
Managing Partner, Nath & Associates
Ross Epstein
Managing Partner of the San Diego
Office, Nath & Associates
Novice/Intermediate
This workshop will explore the "dealkillers"
in healthcare/biotech legal and
business matters that frequently arise
during licensing negotiations. Real life
experiences coupled with identifying
unrealistic expectations will be
explored. The presentation will cover
the principal provisions of the "Make
or Break" contract terms and conditions,
the parties' tactics and behavior,
communications skills and key factors
leading to a successful arrangement.
3-B: Perspectives on Licensing
at the Delivery/Pharma Interface
Tuesday, October 19, 3:45-5:00 p.m.
James E. Hattersley
Senior Director Business Development,
Eurand, Inc.
Herman (Hank) S. Weisman, Sr.
Consultant, Eurand, Inc.
All Levels
This workshop will feature parameters
and structures of licensing deals which
occur between specialty drug delivery
and multinational pharma.
Transactions in today's evolving marketplace
and the role of specialized
technology in creating significant value
is presented. This particular workshop
is designed for business and licensing
professionals. However, other corporate
executives within the healthcare sector
will find the material relevant. After
completing this workshop, participants
will have a better understanding of
licensing objectives and deal structures
when considering relationships at the
drug delivery and pharma company
interface.
3-C: Licensing Winners and
Losers: Secrets from the Inner
Sanctum
Tuesday, October 19, 3:45-5:00 p.m.
Larry A. Risen
President, BioTrak Consulting Group
Richard Stern
Executive Vice President, BioTrak
Consulting Group
All Levels
This workshop offers a "peek behind
the curtain" revealing little told secrets
for truly successful licensing and
opportunity assessment.
Pharmaceutical and biotechnology
licensing and market modeling experts
will disclose their proprietary "trade
secrets" for gaining competitive edge
and navigating for maximum deal
potential, and as an added bonus will
reveal the "top ten comebacks for
venture capitalists."
3-D - ROUNDTABLE:
Are Recent U.S. Decisions
Driving Biomedical Research
to Distraction or Out of Town?
Tuesday, October 19, 3:45-5:00 p.m.
Joseph Contrera
Law Offices of Joseph G. Contrera, Esq.
Patrick Waller
Wolf Greenfield & Sacks, P.C.
Novice
A panel will discuss the ramifications
of three recent decisions by the
U.S. Court of Appeals for the Federal
Circuit. These decisions are: 1) Madey
v. Duke University, 2) Integra v. Merck;
and 3) Bayer v. Housey Pharmaceuticals.
These changes lead to discussions in a
number of areas. What is/was the
research exemption and what is the
scope of research activities available to
biomedical research companies/institutions
using patented materials as a
result of these cases? What are the
relative infringement risks of specific
research activities? Can my
company/institution send research
work outside the U.S. without fear of
infringing U.S. patents? Is the risk
different for a commercial company
versus a non-profit?
Wednesday, October 20
4-A: Going Against the Grain:
When Ignoring Conventional
Wisdom is the Stronger
Strategy
Wednesday, October 20, 2:00-3:15 p.m.
Annette Fisch
Special Counsel, Kalow & Springut
Kevin Nash
General Counsel, Dharmacon, Inc
Barry Cash
In-House Counsel, Pharmacopeia, Inc.
Novice/Intermediate
This session will examine healthcare
intellectual property issues from a new
angle and from the perspective of a
wide array of industry players. The
workshop will seek to disabuse conventional
wisdoms regarding "licensing
away the store," protection of trade
secret versus patent, and dedicating
patents to the public domain. Emerging, "adolescent" and mature
companies will benefit from a practical
discussion that will educate on the circumstances
under which such companies
should consider "out of the box"
alternatives with respect to their patent
and licensing strategies. Recent case
examples (e.g., Cipro patent protection
and the Amgen/J&J transaction) will be
discussed, as well as the practical
impact on converging technologies
such as nanotech and hot new fields
such as siRNA.
4-B: Preserving IP Rights and
Sharing Profits in Licenses for
Transgenic/Transchromosomal
Animals
Wednesday, October 20, 2:00-3:15 p.m.
Joseph Ferraro
Partner, Clifford Chance US LLP
Maria Sendra
Partner, Baker and McKenzie LLP
Maya R. Tanaka
Director, Business Development,
Gemini Science, Inc
Intermediate
This workshop will examine the special
issues that arise in licensing transgenic/
transchromosomal organisms
that are useful in identifying and generating
drug candidates. Drawing on
their experiences in licensing transgenic
animals, the speakers will discuss
IP and practical considerations that
determine whether the licensor should
transfer the technology used in generating
the animals to the licensee, or
should simply provide the animals;
how to define warranties, delivery
terms, and fields of use; how to deal
with potential breeding or cross-breeding
by the licensee; how to determine
what products or potential products
will be generated by the use of the animals
and how to structure royalty and
other payment schemes to insure that
the licensor receives compensation for
any ultimate commercial product;
whether to grant exclusivity, and on
what basis; and the essential role of
scientific advisors in defining the scope
and terms of the license.
4-C - ROUNDTABLE:
Asia Pacific: Winning
Strategies for Life Science
Global Partnering and Licensing
Wednesday, October 20, 2:00-3:15 p.m.
Zhu Shen
Chief Executive Officer,
BioForesight, Inc.
Panelists:
Kevin Chen, Ph.D.
President of Shanghai South Gene Technology Co. and
President of Shanghai IgCon
Yiyou Chen, Ph.D.
President and CSO
StarVax Inc.
James Foley, Ph.D.
Vice President,
Business Development - Japan/International
Bristol-Myer Squibb
Robert Gould, Ph.D.
Vice President, Licensing and External Research
Merck & Company
Tao Min
CEO
Bio-Research Inc.
Doug Olson
Partner
Paul Hastings law firm
Alan Paau, Ph.D., MBA
Assistant Vice Chancellor
UCSD
Neil Solomon, Ph.D.
President
Neil Michael Group (Exec Search Firm)
All Levels
This panel of expert practitioners of
international life science deal-making
will discuss for the very first time,
opportunities and challenges of incorporating
the Asian partnering and
licensing strategy in today's increasingly
global community of life science companies,
with the objective to maximize
value creation and stay ahead of your
competition. Strategies for protecting
your IP in your partnering deals in this
challenging market will be discussed.
5-A: Big Pharma and Research
Perspectives on Developments
in Reach-Through Rights
Wednesday, October 20, 3:45-5:00 p.m.
Robert B. McInnes
Principal, Spruson & Ferguson
Frank P. Grassler
Vice President, Intellectual Property
Biotechnology, GlaxoSmithKline, Inc.
Mark J. Nuell
Birch Stewart Kolasch & Birch, LLP
Mark G. Bloom
Associate General Counsel and Chief
Intellectual Property Counsel, The
Cleveland Clinic Foundation
Masau Takayanagi
Associate Director and General
Manager, Intellectual Property,
Mitsubishi Pharma
Intermediate/Advanced
This workshop will explore developments
in the validity, enforcement and
licensing of reach-through claims.
There has been recent judicial consideration
of reach-through claims in the
case of University of Rochester v. GD
Searle & Co, and of the enforcement of
rights in information generated using
patented technologies in the case of
Bayer v. Housey Pharmaceuticals. What
are the implications of these developments
for researchers, particularly
developers of research tools and platform
technologies? What are the implications
for users of platform technologies
and research tools, such as Big
Pharma? How will the international
business and regulatory environment
deal with the clash of interests involved
in these issues, and to what extent will
the major world economies differ on
how these issues are to be treated? This
workshop will combine legal analysis
of significant recent U.S. judicial decisions
with commentary on international
public policy issues.
5-B: The Perks and Perils of
Profit Sharing Collaborations
Wednesday, October 20, 3:45-5:00 p.m.
Judith A. Hasko
Partner, Cooley Godward
Brad Middlekauff
General Counsel, Medarex, Inc.
Intermediate/Advanced
Life sciences collaborations in which the
parties each share substantially in the
economics of, and responsibilities for,
product development and commercialization
efforts can be attractive, but they
also present unique challenges. Before
pursuing such a strategy, a life sciences
company should consider the particular
risks and rewards of these types of deals
from both business and legal perspectives.
This workshop would provide
examples of the circumstances under
which a profit-sharing collaboration
may and may not make sense, and offer
alternatives for handling particular
challenges of these deals.
HIGH TECHNOLOGY
Monday, October 18
1-H: How Nanotechnology
will Rock the High Tech Sector:
Strategies for Nanotech in the
High Tech Sector
Monday, October 18, 2:00-3:15 p.m.
Nila D. Bhakuni
Technology Licensing Officer,
Harvard University
Robert Paul
Managing Partner, Lux Capital
Michael R. Knapp, Ph.D.
President and Chief Executive Officer,
Semzyme, Inc.
Christopher B. Murray
Manager, Nanoscale Materials &
Devices, IBM Corporation
Intermediate
Nanotechnology is all-encompassing
because of the convergence of technologies
in so many sectors: biotechnology,
electronics, materials, and
more. This workshop will focus on the
commercialization of nanotechnology
as it relates to the high tech sector. It
will focus on three companies and their
commercialization efforts with respect
to nanotechnology in the high tech
sector. It will also explore issues such
as: the role of intellectual property,
sources of competitive advantage,
business and licensing strategies, and
focus on the high tech applications
of nanotechnology.
1-I: Contemporary Practices in
Software Commercialization
Monday, October 18, 2:00-3:15 p.m.
David L. Snyder
Director, Business Development,
Science Applications International
Corporation
Alan Poskanzer
Director, Technology Licensing,
The Boeing Company
Laurie DeJack
Licensing Manager, Ford Global
Technologies
Intermediate
Patents Ð how to get them, use them,
market them and license them Ð
consume a great deal of IP discussion
time. But non-patented IP assets often
comprise the bulk of a firm's IP cache.
In particular, many leading firms develop
software tools to solve valuable
problems because suitable commercial
offerings are not available. What of
these assets? In this workshop, practitioners
from three prominent firms
explain the contemporary techniques
they use to market software assets for
license. Case histories and lessons
learned will cover: 1) What makes a
software asset marketable? 2) How do
you prepare the asset and the development
team for a marketing effort? 3)
What resources are used to find candidate
licensees? and 4) Use of software
assets as a business development tool.
Finally, a practicing IP attorney with
software licensing experience will be
on hand to answer questions that may
arise about legal pitfalls in marketing
software.
1-J - ROUNDTABLE:
Can't Anybody Agree
Anymore? Negotiation
vs. Litigation
Monday, October 18, 2:00-3:15 p.m.
Charles Neuenschwander
President, Patent Solutions
Thomas Sanchez
Vice President, Licensing and
Standards, Research in Motion
Mr. Emmett J. Murtha
President & CEO, Fairfield Resources International, Inc.
Dirk D. Thomas Esq.
Robins Kaplan Miller Ciresi L.L.P.
All Levels
Reaching a patent license agreement in
assertive or infringement related negotiating
rooms is far more difficult today
than ever before. It seems that lawsuits
must be filed and a lot of money and
management time must be spent before
the parties concur. Why is that? This
roundtable will explore a series of
questions such as: Who, if anyone, is
to blame - patent holders, infringers,
courts, lawyers, the economy? What
should (or can) be done about it? Will
the situation get better or worse? Add
your question. Voice your opinion.
2-H: Protecting and
Commercializing Digital Assets
in Cyberspace
Monday, October 18, 3:45-5:00 p.m.
Arthur S. Rose
Partner, Knobbe, Martens,
Olson & Bear, LLP
Panos Malamis
Partner, Malamis & Malamis,
Athens, Greece
Dwight Olson
Vice President, DSI Technology
Escrow Services
Intermediate
The ease of making and disseminating
identical copies of information implemented
in a digital manner, be it software,
literary works or music, is probably
one of the most significant features
of what is frequently called the digital
age. Another is that national borders
are virtually non-existent when it
comes to the internet. Creative solutions
are called for if information is the
asset you deal with, which may be
legal, technical, business related or a
combination of all. This workshop is
intended to provide a comprehensive
picture of dealing with digital assets,
covering legal, business and technical
aspects. Key topics will be digital rights
management and the enforcement of
associated intellectual property rights.
The workshop will not only discuss the
legal and technical means available for
protecting digital assets with regard to
their strengths and weaknesses, but
also trends and strategies for doing
successful business in the field.
2-I: Software Technology
Licensing Fundamentals
Monday, October 18, 3:45-5:00 p.m.
Michael W. Ward
Director, Licensing,
Microsoft Corporation
All Levels
Businesses have invested more than
a trillion dollars developing software
over the last decade. Senior management
in virtually every company has
funded software projects to support
a wide variety of internal needs.
Applications, extensions to purchased
software, tools, operating systems, programming
languages and other kinds
of software technology were developed
to support products, services, e-business,
internal processes or other
requirements. Some projects produce
substantial bodies of software technology.
Licensing professionals are being challenged to find ways to convert
these investments in software technology
into revenue producing assets. How
do you select the best candidates for
licensing from your pool of software
assets? What are the unique concerns
about software that determine suitability
for licensing? Who should you target
for licensing your software? How do
you value your software?
2-J: David vs. Goliath:
Real Lessons of Semiconductor
Licensing Methodologies
Monday, October 18, 3:45-5:00 p.m.
Steven Adam
Vice President, Sales, Chipworks
Rich Donaldson
Retired Senior Vice President
and General Patent Counsel,
Texas Instruments
Mark Grant
Attorney, Grant & Associates
All Levels
What happens when the big guy goes
after the little guy in an adversarial
licensing negotiation? This workshop
will give opposing views of how a
large, aggressive company and a smaller
defensive competitor behave in
licensing negotiations. What are the
dynamics? What methodologies are
used? Most discussion will center
around semiconductors, but can equally
be applied to electronics and other
facets of Licensing.
The Workshop will involve these
two sides sharing experience and
expertise and will allow 50% of the
allotted time for audience questions
and participation. Each side will define
strategies they can employ in their
respective roles, including portfolio
considerations, royalties and willingness
to litigate, if necessary.
Tuesday, October 19
3-H: Different Day, Same
Rules: Negotiating Recognizable
Revenue Deals in a Post-Enron
World
Tuesday, October 19, 3:45-5:00 p.m.
Mary R. Norris
Partner, Wiggin & Dana LLP
Richard L. Green
Associate, Wiggin & Dana LLP
All Levels
"Sorry, rev rec." This seemingly mystical
incantation is invoked against every
technology licensing specialist at least
once. For customers, it happens in the
dark hours of the last day of the quarter
when the vendor's procurement specialist
refuses all reasonable efforts at
compromise because of "rev rec"
concerns. For vendors, it's spoken by
the despondent CFO informing you
that the big deal you closed didn't help
with the quarter-end numbers after all,
because the auditors rejected it under
the "rev rec" rules. Revenue recognition
rules have always driven the negotiating
behavior of vendors and customers
in the technology sector but
never has this been more true than in
this post-Enron environment of heightened
scrutiny. Often referenced but
rarely cited, what and where are these
rules? The workshop will describe the
source and substance of revenue recognition
rules for information technology
transactions and how they drive negotiating
behavior, giving equal time to
vendor and customer perspectives.
3-I - ROUNDTABLE:
Do Patents Matter Anymore
for Software Companies?
How Experienced Companies
Structure Their Patents
Tuesday, October 19, 3:45-5:00 p.m.
E. Robert Yoches
Partner, Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP
Timothy Crean
Chief Patent Counsel, SAP
Michael J. Schallop
Chief Patent Counsel,
Symantec Corporation
Ronald E. Myrick
Partner, Finnegan, Henerson, Farabow,
Garrett & Dunner, LLP
Intermediate/Advanced
Given what many perceive to be
hostility to patents for software in the
USPTO and courts, patent departments
for software companies have found
ways to protect their investments in
software and reap rewards from that
investment.
Wednesday, October 20
4-H: Quash: Infringement
and Cybersquatting
Wednesday, October 20, 2:00-3:15 p.m.
Anne E. Gold
Partner, Morgan, Lewis & Bockius LLP
Ron Dreben
Partner, Morgan, Lewis & Bockius LLP
Novice/Intermediate
The workshop will focus on the protection
of trademarks and domain names
from infringement and cybersquatting
and international protection and use
issues. The workshop will also address
keyword ad buys and search engines;
framing, linking and data scraping
issues; website terms and conditions
and privacy policies; and fair use.
4-I: The State of On-line
Technology Transfer
Wednesday, October 20, 2:00-3:15 p.m.
Brenda Uhlenhopp
General Manager, TechEx.com,
UTEK Corporation
Craig Zolan
General Manager, UVentures.com
Deborah Day Barbara
The Johns Hopkins University
Caroline S.A. Baker
Maryland Department of Business and Economic Development, Division of Technology Strategy and Business Development
All Levels
The workshop will present and discuss
resources available for on-line technology
transfer, features, benefits and
shortfalls. A brief history of on-line
technology transfer services, the current
state of these services and predictions
for their future use. Features and
benefits of the various sites will address
how the internet is being used to
increase the information flow between
universities and government labs and
corporations to make contacts
which lead to deals.
4-J: Adding Value to License
Transactions: Creating a
Compelling Value Proposition
for Licensees
Wednesday, October 20, 2:00-3:15 p.m.
Walter Copan
Principal Licensing Executive,
National Renewable Energy Laboratory,
U.S. Department of Energy
Sanjay Sharma
Director, Business Development,
Engelhard
Peter Chant
Founder and Principal, FreMCo
All Levels
This workshop will provide best practices
and case studies from a variety of
perspectives, with lessons learned in
delivering value-added contributions to
license relationship. Examples include
access to enabling capabilities, support
services, extraordinary assets, emissions
trading, and other compound licenses.
5-H: Patent Purchasing:
Maximizing the Value for
Buyer and Seller
Wednesday, October 20, 3:45-5:00 p.m.
Derek Nuhn
Senior Vice President and Chief Operating Officer
Semiconductor Insights Inc
Donald Merino
General Manager, Intellectual Property
Intellectual Ventures
Charles Eldering
President
Technology, Patents and Licensing
Intermediate
Assertive licensing, mergers, acquisitions,
insolvency - all these
factors have contributed to an active
and thriving marketplace for selling
technology patents. But there are best
practices useful to observe as a seller,
how do you get the attention of buyers
and how do you show the true value of
your IP? As buyers, how do you filter
the deluge of useless IP available to
you and find the gems that have real
value to your business? This workshop
will focus on best practices, benefits
and pitfalls of patent purchasing
from all perspectives buyer, seller,
and broker.
5-I: Analysis of a High Tech
Nanotechnology Start-up:
Nantero-Lessons Learned
Wednesday, October 20, 3:45-5:00 p.m.
Nila D. Bhakuni
Technology Licensing Associate,
Harvard University
Greg Schmergel
Chief Executive Officer, Nantero
Tim Oyer
Partner, Wolf Greenfield & Sacks, P.C.
Douglas W. Jamison
Vice President, Harris & Harris
Group, Inc.
Intermediate
Nantero, Inc. is building a high density
nonvolatile random access memory
chip, which can replace DRAM
(dynamic RAM), SRAM (static RAM),
flash memory, and ultimately hard disk
storage, in other words, a universal
memory chip suitable for countless
existing and new applications in the
field of electronics. Nantero's product is
called NRAMª (Nanotube-based/
Nonvolatile RAM), developed using
proprietary concepts and methods
derived from leading-edge research in
nanotechnology. With technology
licensed from Harvard University,
Nantero's disruptive technology will
make its NRAM faster and denser than
DRAM, substantially lower power consumption,
portable, and highly resistant
to environmental forces like heat,
cold, and magnetism. This workshop
will serve as a case study to understand
Nantero's competitive advantage, their
business strategy, and the role of intellectual
property and licensing in their
overall strategy.
5-J: SCO v IBM and the World
Wednesday, October 20, 3:45-5:00 p.m.
Heather Meeker
Shareholder, Greenburg Taurig LLP
Daniel Egger
Chairman, Open Source Risk Management
All Levels
Litigation currently filed by software
company SCO against IBM and others
may well have profound impact upon
the entire industry as SCO attempts to
enjoin all users of Linux in its infringement
case. In addition, related suits
have been filed by Red Hat against
SCO, by SCO against Novell, and others.
This workshop will provide an
objective review on the facts and status
of this "tangled web" of interrelated
cases and the peripheral effects on all
software users around the world. Also,
up-to-the-minute information will be
covered on major developments,
including the various legal defense
funds being prepared for Linux users
by Intel, IBM, RedHat, Novell and others.
INTERNATIONAL
Wednesday, October 20
4-S: U.S.-Canada Cross-Border
IP Litigation: Distinctions,
Litigation Strategies and
Litigation Management
Wednesday, October 20, 2:00-3:15 p.m.
Richard S. Sanders
Partner, Sullivan & Worcester LLP
Bob H. Sotiriadis
Partner, ROBIC
Intermediate/Advanced
In this workshop, two experienced
intellectual property litigation counsel,
one from Canada and one from the
U.S., will discuss the major distinctions
between litigation proceedings in intellectual
property matters in Canada and
in the U.S. The workshop will focus on
Patent Litigation, and, given the particularities
of patent law in each country,
will also provide some insight into the
main distinctions in the substantive
law of patents which impact on litigation
strategy. Of importance also is the
question of the management of crossborder
litigation. The differences in
each country's Court system and the
applicable substantive law create a
need to develop litigation strategies
that are in line with the legal and procedural
reality prevailing in the jurisdiction
that is host to the litigation.
4-T: New EU Competition
Rules and Their Implication
for Licensing
Wednesday, October 20, 2:00-3:15 p.m.
Buno Vandermeulen
Partner, Bird & Bird Simon Topping, SJBerwin
Nigel Jones
Partner, Intellectual Property, Linklaters
James Leavy
Partner, Weil, Gotshal & Manages, LLP
All Levels
On 1 May 2004 the new legislative
framework for technology licensing
entered into force. At the same time,
a modernization package leading to
decentralized application of the EU
competition rules became applicable.
The new system leads to increased
responsibility for companies and their
counsel (self-assessment) and adopts
a much more economic approach
towards licensing and its impact on
competition. The LESI European
Committee has contributed to the legislative
process of the new rules via
submissions and a face-to-face meeting
with the EU competition authorities.
The workshop will focus on the practical
consequences of the new EU legislation
for the licensing community. A
comparison with certain aspects of U.S.
antitrust laws will be given also.
5-S: Developing a Winning
Opposition Strategy in the EPO
Wednesday, October 20, 3:45-5:00 p.m.
Jay Simon
Consultant, JS Consulting
Nick White
Director, Rouse International
All Levels
Valuable U.S. patents can be lost or
severely limited in post-grant EPO
opposition proceedings if the person
with decision making power is not
aware of the traps that exist in these
proceedings. U.S. practitioners responsible
for worldwide patent protection
may not be familiar with oppositions
and the applicable rules, particularly
the nature of amendments that can be
made during the proceedings, the treatment
of prior art, and the limited role
of the U.S. attorney/agent.
5-T: Crossing the Atlantic
Successfully: How European
Companies Can Optimally
Navigate the U.S.
Pharmaceutical Market
Wednesday, October 20, 3:45-5:00 p.m.
Beat H. Leber
Vice President and Managing Director,
The Mattson Jack Group
Christian K. Weimar, Ph.D.
Director, Corporate Licensing,
Altana Pharma AG
All Levels
Although the over-arching corporate
goals of European and U.S. pharmaceutical
companies are commonly similar,
business practices and cultural manners
that lead to success in their home
areas are often quite different. The
workshop will open by discussing past,
present and future licensing opportunities
involving mid-sized European
pharmaceutical companies. From there
the workshop directs the focus on the
unique key objectives that European
and U.S. pharmaceutical companies
seek. Next, the focus sharpens on specific
assessment and deal-making related
issues that are critical in European/
U.S. alliances. The workshop closes
with a session outlining obstacles to
watch for and lessons learned from
actual European/U.S. alliances.
5-U: The Chinese Economic
Tiger Awakens: It's Implication
for IP Activity and Protection
Wednesday, October 20, 3:45-5:00 p.m.
Walter Bratic
Managing Director, InteCap, Inc,
Art M. Nutter
President and Chief Executive Officer,
TAEUS International Corporation
David L. McCombs
Haynes and Boone, LLP
Intermediate/Advanced
LEGAL
Monday, October 18
1-E: Recent Developments
in Contract Law: Article 2 and
New Case Law
Monday, October 18, 2:00-3:15 p.m.
Raymond T. Nimmer
Professor of Law, University of Houston
Holly K. Towle
Partner, Preston Gates & Ellis
All Levels
The workshop will examine newly promulgated
Article 2 and both its potential
direct and indirect impacts on licensing
practice. This statute revises contract law
in all fifty states. The workshop will also
give an overview on recent case law
developments on contract obligations,
liability risk and the like.
1-F: Top 10 Court Decisions of
2003-2004 Affecting Licensing
Monday, October 18, 2:00-3:15 p.m.
Russell E. Levine, P.C.
Partner, Kirkland & Ellis LLP
Intermediate
This workshop will highlight cases
decided in the 12 months prior to the
LES Annual Meeting that affect licensing
and will also discuss the implications
of each decision on licensing.
1-G: Can You Get Away
With It? (Part I)
Monday, October 18, 2:00-3:15 p.m.
Anthony P. Venturino
Partner, Stevens Davis Miller
Mosher, L.L.P.
Jay Simon
Consultant, JS Consulting
Jon D. Wood
Patent Attorney, Eastman Chemical
Intermediate
Off-the-record legal advice for IP and
licensing is the focus of this workshop,
with a provocative series of topics
regarding certain classes of activities
that are, or once were thought to be,
exceptions to patent infringement. For
example, exceptions to the Chemical
Process Patent Protection Act (35 USC
271(g)) and the demise of the research
exemption will be covered. University
licensing groups will find the research
exemption issue especially relevant.
(See 2-G for Part II)
2-E: Trademark Licensing Best
Practices: Negotiating the
Contract and Implementing
the Deal
Monday, October 18, 3:45-5:00 p.m.
Mary R. Norris
Partner, Wiggin and Dana LLP
Myung Kang-Huneke
Vice President, Legal and Business
Affairs, Product Licensing, Sesame
Workshop
All Levels
This workshop will educate the less
experienced, and invite comment from
the more experienced, as we discuss
from both a licensor's perspective
(Sesame Workshop) and a licensee's
perspective (Team Products), best practices:
1) when negotiating a trademark
license; and 2) to build the relationship
once the contract is signed. The workshop
will then provide tips for maintaining
and building a strong relationship
while performing under the
license, including the do's and don'ts of
licensor/licensee interactions.
Throughout the workshop, the audience
will be invited to share their experiences,
to develop licensor and licensee
"best practices" for negotiating and
operating under a trademark license.
2-F: Top 10 Court Decisions
of 2004 Affecting IP Valuation
and Damages
Monday, October 18, 3:45-5:00 p.m.
Brian R. Oliver
Managing Director, InteCap, Inc.
Intermediate
This workshop will discuss the top
10 recent court decisions that affect IP
valuation and damages. Discussion of
each case will include handouts.
2-G: Can You Get Away
With It? (Part II)
Monday, October 18, 3:45-5:00 p.m.
Anthony P. Venturino
Partner, Stevens Davis Miller Mosher, L.L.P.
Jay Simon
Consultant, JS Consulting
Jon D. Wood
Patent Attorney, Eastman Chemical
Intermediate
(See 1-G, Part I for description)
Tuesday, October 19
3-E: Strategic Use of USPTO
Proceedings to Neutralize
Competitor Patents
Tuesday, October 19, 3:45-5:00 p.m.
Bruce H. Stoner, Jr.
Of Counsel, Greenblum & Bernstein, PLC
Phil McGarrigle
Chief Intellectual Property Counsel,
Affymetrix
Intermediate/Advanced
The workshop will provide perspectives
on the use of available procedures
at the United States Patent &
Trademark Office to neutralize competitor
patents impeding marketplace
objectives. Specifically, the workshop
will discuss the strategic and practical
considerations involved in seeking to
neutralize U.S. patents via reexamination
and interference proceedings
presently available through the USPTO.
Additionally, the workshop will provide
insights on the likelihood that the U.S.
will adopt a post-grant patent cancellation
proceeding and how such a proceeding
might impact corporate "thinking"
about the use of an administrative
remedy to achieve strategic objectives.
3-F: Uses and Abuses of
Checklists
Tuesday, October 19, 3:45-5:00 p.m.
Thomas J. McNaughton
Vice President, Intellectual Property,
Zyomyx, Inc.
John Ramsay
Partner, Gowling Lafleur Henderson LLP
All Levels
Do checklists coach or corral the user?
This interactive workshop session will
ask if we need two sets of checklists,
one to map out the business reasons
and strategy for the deal, and one to
map out the document. Should these
two checklists co-relate to the appropriate
questions in a "due diligence
checklist" which the user employs for
completed agreements? How de we
avoid mind-numbing indemnity clauses
that have nothing to do with our
deal? How do we design grant clauses
that have something to do with our
deal and a payment clause that corresponds
to the rights granted?
Participate in this workshop to work
out methods of taking the "artificial"
out of "intelligence" in the tools
we use.
3-G: Negotiating Strategic
Alliances: Do You Know Where
Your IP Is?
Tuesday, October 19, 3:45-5:00 p.m.
Adam V. Petravicius
Partner, Jenner & Block LLP
Intermediate/Advanced
Strategic alliances are now widely recognized
as a legitimate, if not essential,
tool for achieving corporate goals and
are often driven by intellectual property
or technology. They are often used
to create synergies between companies
in different industries or with different
resources. This workshop will briefly
lay a foundation for discussing strategic
alliances and then explore the myriad
of intellectual property issues that
often arise in strategic alliances.
Participants will gain an in-depth
understanding of these issues as well as
practical advice for handling them.
Wednesday, October 20
4-E: License Drafting: The
Quest for the Plain English
License (Part I)
Wednesday, October 20, 2:00-3:15 p.m.
Timothy M. Lowman
Partner, Sim & McBurney
D. Patrick O'Reilley
Partner, Finnegan, Henderson, Farabow,
Garrett & Dunner, L.L.P.
John Lerwill
Partner, Thornton, A.A. & Co.
All Levels
This unique two-part workshop will
provide instruction and advice on plain
language drafting. The emphasis will
be on the development of simple, clear
and unpretentious writing. The faculty
will cover the use of both language and
structure to draft "plain English"
licenses for the relevant readers, the
initiators, the implementors (business
and legal), the advocates and the Court. The consecutive workshop segments
will provide lecture and interactive
sessions with Q and A, small group
work, and discussion using samples of
actual license provisions. (See 5-E for
Part II)
4-F - ROUNDTABLE:
Governance of the Internet
Wednesday, October 20, 2:00-3:15 p.m.
David Maher
Chairman of the Board, Public Interest
Registry
John Palfrey
Executive Director, The
Berkman Center for Internet & Society,
Harvard Law School
John Klensin
Liaison, Internet Engineering Task
Force, Internet Corporation for Assigned
Names and Numbers
All Levels
The roundtable will offer discussion
and Q&A over the role of governments
vs. private sector and civil society in
the technical administration and policy
issues facing the Internet and its users.
The controversy over the roles of
national governments versus U.N.
bodies will be included.
5-E: License Drafting:
The Quest for the Plain English
License (Part II)
Wednesday, October 20, 3:45-5:00 p.m.
Timothy M. Lowman
Partner, Sim & McBurney
D. Patrick O'Reilley
Partner, Finnegan, Henderson, Farabow,
Garrett & Dunner, L.L.P.
John Lerwill
Partner, Thornton, A.A. & Co.
All Levels
(See 4-E, Part I, for description)
5-F: The CFO/CTO Guide
to Managing IP Litigation
& Liability Risk
Wednesday, October 20, 3:45-5:00 p.m.
Melvin F. Jager
Managing Director, ICMB Ocean Tomo
Robert J. Block
Managing Director, ICMB Ocean Tomo
James Bolman
Director, Corporate Risk Management,
Ameritrade
Intermediate
The Sarbanes-Oxley Act of 2002
requires senior corporate officers to
attest to the adequacy of internal controls.
For innovative companies, internal
controls should address IP litigation
risk. The workshop will lay out a
comprehensive, strategic approach to
third-party IP risk, including specific
threats such as serial litigation,
submarine patents, and catastrophic
damages. The workshop will also
describe the steps that can be taken in
IP portfolio management (e.g.,
bundling, pooling), as well as cutting
edge risk-transfer and risk-finance
structures, and competitive monitoring
that can mitigate litigation risk. In
summary, the workshop offers a transparent,
balance-sheet-focused Sarbanes-
Oxley compliant system for identifying
and controlling financial risk related to
the corporate IAM program.
STRATEGIES/IA MANAGEMENT
Monday, October 18
1-K: Strategic Management of
Intellectual Assets: Beyond
Mere Management to
Measurable Impact
Monday, October 18, 2:00-3:15 p.m.
Molly O. Dix
Commercialization Manager,
RTI International
Nermien Al-Ali
Intellectual Capital Institute
Sharon Oriel
Director IA/IC Competencies Center,
Dow Corporation
Hank Henry
Vice President, Corporate Technology, Whirlpool Corporation
Intermediate/Advanced
Given increased appreciation of intellectual
property as an integral value
driver in the knowledge economy, most
companies have implemented programs
to manage their intellectual assets.
However, mere management of the
assets is defensive in nature and does
not optimize the value of the assets to
the business. Strategic management of
the assets as internal and external business
resources can have direct impact
on an organization's bottom line. This
workshop will present a framework for
discussion of strategic management, as
well as meaningful, concrete recommendations,
and real-world examples
of successes and pitfalls.
1-L: From Life Sciences to
Telecom: What You Need to
Know About Standard Setting
Organizations and Consortia
Monday, October 18, 2:00-3:15 p.m.
Edward Kahn
President, EKMS, Inc.
Andrew Updegrove
Partner, Gesmer & Updegrove
Gordon Bremer
Technology Development Director, Paradyne
Intermediate
The recent surprise decision of a patent
appeals court in Infineon v. Rambus
underlines the risks as well as the benefits
that can result from taking part in
this type of activity. Whether or not a
given organization will offer an opportunity
to enhance or jeopardize your
IPR is determined by the IPR Policy
and the procedures that the organization
has adopted. Participants will
learn: (1) how to evaluate the policy of
an organization; (2) what the most
important terms are that you should
look for; (3) how to train your representatives
in SSOs so that your IPR
isn't jeopardized; (4) how to evaluate
whether a given organization's specifications
are wise to implement; (5) do's
and don'ts to ensure a happy, rather
than an unhappy, result. A case study
will be utilized to demonstrate how
standards licensing affects the daily life
of the business strategist and licensing
practitioner.
1-M: Identifying Key Patents
in a Crowded Landscape
Monday, October 18, 2:00-3:15 p.m.
Bruce Rubinger
Managing Director, Global Prior Art
Gerald Sewack
Head, Biotechnology Group
Chris Stow
Head, Mechanical Engineering Group
All Levels
Corporate IP departments and Intellectual Capital Management firms require a reliable means to assess broad IP portfolios in order to identify key patents that licensing activities should emphasize. The workshop will discuss the above issues in the context of two studies. The first involved creation of a GlobalMap covering the IP landscape for NMDA Receptor Targeted Drugs. Key patents are identified along with competitive trends and emerging opportunities. The talk will also describe highlights from a study that involved identifying and mapping all relevant patents germane to high performance compact heat exchanger technology. More than 600 distinctive patents were identified by the search process, and then analyzed by technology, product attributes, and the underlying technology, business trends, and IP issues. These specialists were asked to select 5 patents on the map that they considered most valuable. The key patents identified by the experts had a number of common traits. They included strong claims that provided patent coverage over an important emerging technology. Implications for effectively identifying key patents are discussed.
1-N - ROUNDTABLE:
Patent Strategy: License,
Exclude or Defend
Monday, October 18, 2:00-3:15 p.m.
Gene Potkay
Vice President, Intellectual Property,
Avaya Inc.
Sharon K. Grosh
Director, Strategic Intellectual Asset Management, 3M
André-Pascal Chauvin
VP Business Licensing, Alcatel
Robert Barr
VP, Intellectual Property Worldwide Patent Counsel, Cisco Systems
Mark W. Lauroesch
Division Vice President & Director, Intellectual Property Law, Corning, Dow Chemical
Daniel Alderman
Intellectual Capital Management, Core R&D, Hydrocarbons & Energy, Chemicals and Technology Licensing
Keith Hughes
Director, Technology Commercialization, Ford
Alan Haggard
Assistant General Counsel, Intellectual Property, Hewlett Packard
Diana Dorr
Sr. Director of Intellectual Property Licensing, Microsoft
Neill Taylor
ÊVice President Cellular Licensing, Motorola
Mark Hearn
Technology Licensing Lead and Senior Counsel, Nortel
Tony Tangena
Senior Vice President, Patent Portfolio Director, Philips Intellectual Property & Standards, Philips
Jim O'Shaughnessy
VP Chief Intellectual Property Counsel, Rockwell Automation Inc.
All Levels
What patent strategy makes sense in
today's environment? Why get patents?
Defend against incoming attacks,
license for value, exclude to keep others
from using your inventions, or
some combination thereof? Does it
depend on the business strategy it supports,
and if so, how? Industry experts
will face off to debate the merits and
issues of each strategy (defend, license
or exclude) that may best align with
different business strategy and industry
scenarios. Prepared materials defining
the business scenarios and pros and
cons for each patent strategy will be
available to set the stage. Is there a
conclusion? When does it make sense
for a company to simply play defense,
always exclude whenever possible or is
licensing always the right answer?
Are there industry norms?
2-K: Implementing the
Strategic Plan through
Licensing
Monday, October 18, 2:00-3:15 p.m.
James F. Farrington
Partner, Wiggin and Dana
Sumy Daeufer
Associate General Counsel,
Millennium Pharmaceuticals
Intermediate/Advanced
Many biotech companies have established
strategic plans to forward integrate
so that they may realize a greater
share of the value chain. Licensing can
be an effective part of implementing
this strategic plan. The presenters will
share some of the insights and key deal
terms of two recent transforming
licensing transactions that helped the
licensors carry out their strategic plans:
1) Millennium's out-license of its
Velcade product to Ortho Biotech; and
2) Biovitrum AB's out-license of a novel
Phase II diabetes compound to Amgen.
2-L: Patent Interference:
A Recent Case History
Monday, October 18, 3:45-5:00 p.m.
Jeet S. Hothi
Manager, Technology Transfer Office,
Communications Research Centre
Intermediate/Advanced
This workshop will describe the patent
interference process and related legal
aspects through a recent case history in
which CRC's patent was in interference
with patents from Lucent and Corning.
It will illustrate the process by first giving
a general background of the technology
and how interference was
invoked and then discussing various
motions that were put forth by the
three parties. These include derivation,
acts of diligence to reduce invention to
practice, invention and conception
dates, patent validity, enabling description
arguments, lack of written description,
and use of re-issue. It will also
discuss the role of expert witnesses and
their usefulness to the interference
process.
2-M: Designing and
Implementing an Effective
License Compliance Program
Monday, October 18, 3:45-5:00 p.m.
David L. Marston
Partner, PricewaterhouseCoopers LLP
Neil Hargreaves
Partner, PricewaterhouseCoopers UK
Anthony Higgs
Head, Intellectual Property, QinetiQ
Mark Palethorpe
Head, Intellectual Property, QinetiQ
Intermediate/Advanced
The workshop will focus on maximizing
the economic impact of a portfolio
of licensing agreements. Discussion
points will include: 1) why a License
Compliance Program is important for
licensors; 2) benefits of such a
Program; 3) key steps to achieve a successful
Program; 4) revenue leakage
issues and solutions for licensors; and
5) how to settle findings while at the
same time maintain the long-term
licensee relationship.
Tuesday, October 19
3-K: Financial Trends in
the Knowledge Economy:
Innovative Strategies for
Monetizing IP
Tuesday, October 19, 3:45-5:00 p.m.
Edward R. Gates
Managing Partner, Wolf Greenfield &
Sacks, P.C.
Todd Rice
President, Instrumental Capital LLC
Liza Vertinsky
Associate, Wolf Greenfield & Sacks, P.C.
Advanced
From "Bowie" bonds to patent backed
loans, strategies for monetizing intellectual
property are developing as rapidly
as the underlying technologies. Creative
financial strategies are playing a growing
role in unlocking resources for
intellectual-property intensive companies,
institutions and individuals, both
through securitizing future cash flows
associated with IP and using IP as collateral
for loans. As financial players
become more confident and IP owners
more sophisticated, new ways of financing
and commercializing IP will continue
to evolve. This workshop will explore the current trends in monetizing
IP through a series of case studies.
3-L: Understanding Sources of
Negotiation Power: Avoiding
the Top Two Negotiation
Stumbling Blocks
Tuesday, October 19, 3:45-5:00 p.m.
Paul Germeraad
President, Intellectual Assets Inc.
Russell Bishop
Partner, Vantage Partners
Arlene Morris
President and Chief Executive Officer,
Affymax
Intermediate/Advanced
Research at the Harvard Negotiation
Project suggests that two sources of
power in negotiation that are most
often lacking are a clearly defined set
of alternatives and "standards of legitimacy."
In this interactive forum, we
will share with you a methodology of
identifying your alternatives, how to
use them in negotiation, and how to
apply "standards of legitimacy to
strengthen options placed on the table.
We will present these sources of power
with the framework of the "Circle of
Value." Concepts and materials used in
this forum are extracted from the new
LES Negotiation Course jointly developed
with LES and Vantage Partners,
co-founders of the Harvard Negotiation
Project and authors of Getting to YES.
3-M - ROUNDTABLE:
Is the Obvious Licensee
the Best One?
Tuesday, October 19, 3:45-5:00 p.m.
David Braunstein
Vice President, Fairfield Resources
International, Inc.
Walter G. Copan
Principal Licensing Executive, National
Renewable Energy Laboratory, U.S.
Department of Energy
Arthur M. Nutter
President and Chief Executive Officer,
TAEUS International Corporation
Daniel M. McGavock
Managing Director, InteCap, Inc.
Allen R. Baum
Partner, Hutchison and Mason PLLC
Intermediate
This roundtable forum will bring
together leading practitioners who are
involved in global deal making to discuss
the successes and failures of deal
making. It will include the assessment,
valuation, and negotiation aspects and
the pitfalls to avoid.
Wednesday, October 20
CANCELLED - 4-K: Creating Synergy in IA
Management and Accounting:
The Real Story
Wednesday, October 20, 2:00-3:15 p.m.
Russell J. Barron
Partner and Chair INTX Group,
Foley & Lardner
Harry Gwinnell
Vice President, Intellectual Property,
Cargill
Advanced
The workshop will highlight creating
synergies for effective IA management
and IA accounting, including successes,
failures, and lessons learned. Checklists
for creating synergy in IA management,
accounting, team building, tolls and
other practical issues will be addressed,
along with a brief instruction on
Sarbanes-Oxley and FASB 141/142.
4-L: Licensing Department
Metrics: Survey Results and
Panel Discussion
Wednesday, October 20, 2:00-3:15 p.m.
Paul Germeraad
President, Intellectual Assets Inc.
Mildred Hastbacka
Director, TIAX LLC
All Levels
For the last two years the Intellectual
Capital Management Committee of LES
(U.S.A.-Canada) has conducted surveys
on licensing metrics. Over 200 individuals
responded. Topic areas were quantitative
metrics such as number of
patents under management to qualitative
such as the sophistication level of
the corporation in managing intellectual
assets. The unexpected results such
as the portfolio size distribution and
relative even distribution of sophistication
level will be discussed.
4-M: Maximizing the Value of
the Alliance: How Not to Lose
the Money You Won in the
Negotiation
Wednesday, October 20, 2:00-3:15 p.m.
N. Peter Kostopulos
Partner, BioAlliance Practice, Womble
Carlyle Sandridge & Rice PLLC
Neil L. Brown
Vice President, Licensing and Acquisitions, Prosklia
All Levels
This workshop will review the variety
of risks that arise during the implementation
of alliances, often unexpected,
that cause the alliance to underperform
or, worse, fail altogether. Case
studies, as well as agreement clauses,
due diligence practices, and governance
solutions will be discussed to
demonstrate how problems with
alliance partners can be avoided or
resolved to keep the alliance on track
or terminate, if necessary, in ways that
protect a party's investment and the
manager's reputation.
5-K: Trade Secret
Identification, Safeguarding,
Exploitation and
Management Decisions
Wednesday, October 20, 3:45-5:00 p.m.
David Tyrrell
President, Vertex Intellectual Property
Strategies Inc.
David VandenEinde
Senior Intellectual Asset Manager,
Cargill Incorporate
John Ramsay
Partner, Gowling Lafleur Henderson LLP
Novice/Intermediate
The workshop will focus on trade
secrets, the component of intellectual
assets which is often poorly understood
and unmanaged. A considerable
portion of a business transaction can
often be attributed to its intellectual
assets, e.g., patents, trademarks, copyrights, and trade secrets. While the
patent, trademark and copyright elements
of intellectual assets are generally
clearly identified and catalogued,
trade secrets are generally not effectively
identified nor catalogued. As a
result, trade secrets are not adequately
safeguarded nor fully exploited, despite
being a significant business asset that
provides a considerable competitive
business advantage. This session will
discuss protocols to address the identification
and safeguarding of trade
secrets as well as processes for making
and carrying out decisions related to
the management and exploitation of
trade secrets.
5-L: Intellectual Property
Strategies: Product Development
and Technology Licensing
Wednesday, October 20, 3:45-5:00 p.m.
John E. Cronin
Managing Director & Chairman,
ipCapital Group, Inc.
Peter Stanforth
CTO, Mesh Networks, Inc.
Intermediate/Advanced
The decision to license in or out
intellectual property requires thoughtful
consideration of one's business
objectives and a determination of how
licensing IP will further those objectives.
An initial step towards the
licensing decision is the integration of
IP strategy with business objectives.
Licensing of IP requires a comprehensive
review of business objectives followed
by a similarly comprehensive
analysis of the IP. This workshop will
explore both the integration of IP management
tactics under the umbrella of a
business strategy and the development
of an IP story that effectively demonstrates
the real value of the IP you plan
to license in or out.
5-M: Deal-Makers & Deal-Breakers: Overcoming Obstacles to IP Financial Transactions
Wednesday, October 20, 3:45-5:00 p.m.
Bruce Berman
President, Brody Berman Associates
Keith Bergelt
Senior VP, IPI Financial Services
Robert W. D'Loren
President, UCC Capital
Richard D. Rudder
Partner, Baker & McKenzie
Robert Horowitz
Director, Credit Suisse First Boston
Ray I. Throckmorton
Vice President, Inavisis, Inc.
Closing IP-based financings, such as securitizations, sale-license backs and loans, requires sensitivity to the needs and knowledge base of diverse managers and financial advisors. Impediments to monetizing IP assets often differ from those of traditional asset-based or receivables transactions, like mortgages and auto loans. A panel of transaction experts familiar with the concerns of CFOs, underwriters, and patent counsel, as well as purchasers of IP-based debt, will discuss and debate the characteristics unique to this asset class using as examples recent transactions, and ways to establish comfort levels with key participants.
VALUATION/FINANCE
Monday, October 18
1-O: Effective IP Due Diligence
Monday, October 18, 2:00-3:15 p.m.
Michael Lasinski
Managing Director, InteCap, Inc.
Gregory G. Hillebrand
Manager, Technology Donations,
Procter & Gamble
Intermediate
The most important aspect of conducting
an appropriate IP valuation is the
due diligence performed on the underlying
IP assets. Without proper due
diligence the financial models used in
IP valuations yield meaningless results.
This workshop focuses on understanding
the IP assets of interest at a level
necessary to perform a valid IP valuation.
This includes obtaining an understanding
of competitive technologies,
technical hurdles, market dynamics,
royalty rates, etc. The workshop will
focus on how to obtain appropriate
information, use of market and technical
experts and development of appropriate
business cases.
2-O: Valuation by Real
Option Method: How Can
We Determine Volatility?
Monday, October 18, 3:45-5:00 p.m.
Richard Razgaitis
Managing Director, InteCap, Inc.
Advanced
Real Options Methods are powerful
tools for dealing with high potential,
but high risk (and especially longterm)
opportunities. However, for
licensing situations the dilemma is
developing estimation for volatility.
The objective of this workshop is to
explore how such volatilities might be
estimated and applied to calculating a
licensing opportunity option value.
2-P: Unlocking the Technology
Asset Value of the Firm:
Emerging Trends in IA
Monetization
Monday, October 18, 3:45-5:00 p.m.
Keith Bergelt
Senior Vice President, Intellectual
Property, IPI Financial Services
Robert Ashcom
Vice President, SunTrust Bank
All Levels
The workshop will discuss the following
monetization arenas - securitization,
collateralization, factoring, licensing,
technology transfer/JDA, and
sale/license back transactions.
Monetization should be viewed in a
holistic manner to have the participant
understand that licensing, factoring,
technology transfer/JDA, securitization,
collateralization, and sale/license back
transactions are all arrows in a strategic
intellectual asset manager's quiver. To
lead IP from cost center to a profit center
status, SIAM leaders must have a
frame of reference and commercial
approach that countenances this holistic
perspective.
2-Q - ROUNDTABLE:
Valuation Hardball: Why
Do So Many IP Valuations
Provide Misleading Results?
Monday, October 18, 2:00-3:15 p.m.
Daniel M. McGavock
Managing Director, InteCap, Inc.
All Levels
This roundtable will provide an open
dialogue about the primary challenges,
common misconceptions and troublingly
recurring flaws in IP valuations.
The objective of the roundtable is to
identify three key issues and then
encourage audience members to share
their views, experiences and any constructive
input. Some discussion topics
will likely be: 1) properly accounting
for risk (e.g. discount rates, cash flow
adjustments, probability analysis); and
2) apportioning value/profits among
complementary assets (e.g., the use and
misuse of the "25% rule of thumb").
Tuesday, October 19
3-O: Watching Your Licensees:
Program Creation through
Ongoing Monitoring
Tuesday, October 19, 2:00-3:15 p.m.
Sidney Blum
Partner, KPMG
Reny Mathew
Director, Walt Disney Consumer
Products Royalty Auditing,
Walt Disney Company
All Levels
This workshop brings value to the
licensor and not the auditor. It starts
with getting company support for a
licensee monitoring program and what
goes into a successful program. With a
view from both a leading outsourcing
royalty auditing program and a leading
internal royalty auditing program, this
workshop will highlight leading practices
in royalty auditing.
3-P: Strategic Venture
Financing in an Improving
Market
Tuesday, October 19, 3:45-5:00 p.m.
William Perrone
Partner, Wiggin and Dana
James F. Farrington, Jr.,
Partner, Wiggin and Dana
Intermediate/Advanced
Many biotech and other high tech
companies have struggled over the last
two or so years following the bubble's
burst. As the rare IPO has given way to
the more occasional ones, particularly
for biotech companies, private equity
funds are loosening their purse strings
so start-ups may stop singing the
"down round" blues. Biotech companies
continue to accept equity investments
from their corporate partners as
a means of "validating" the company's
business model or its technology, in
addition to a source of funding. The
strategic use of equity investments in
licensing transactions will be discussed
in an interactive format and the key
deal terms will be explained.
Wednesday, October 20
4-O: IP Holding Company
Update: Legal and Economic
Trade-Offs
Wednesday, October 20, 2:00-3:15 p.m.
Gary Abdalla
Director, Hill Schwartz Spilker Keller
Eric Wade
Partner, Porter & Hedges
Intermediate/Advanced
IP holding companies are part of the
structure of many companies owning
valuable intellectual property. They are
established to enable focused technology
commercialization and to take advantage
of regional tax differences. In the
U.S., high-tax states have become
aggressive in their challenges to such
tax-advantaged structures. In this workshop,
we will discuss recent developments
in judicial activity and state legislation.
Among others, we will discuss
Sherwin-Williams v. Massachusetts
Commissioner of Revenue. Many find
the Supreme Court's decision a roadmap
of how to effectively establish an IP
holding company structure. The workshop
will discuss specific limitations on
the parent company's ability to participate
in the protection of patents in an
infringement suit, to seek preliminary
injunctive relief, and to recover lost
profit damages.
4-P: Patent Valuation
Wednesday, October 20, 2:00-3:15 p.m.
Alexander Poltorak
Chief Executive Officer, General Patent
Corporation
Weston Anson
Chairman, Consor
Paul Lerner
Senior Vice President and General Counsel,
General Patent Corporation
Bruce Beron, Ph.D.
Founder, Litigation Risk Management
Institute
Novice
Traditional valuation methods are
hardly appropriate for valuing patents
which are, by definition, exclusionary
rights. A consistent approach to valuing
patents as sanctioned market
monopolies is the focus of this workshop.
The topics explored will include
(1) various approaches to patent valuation;
(2) the value of patent portfolios
as an exclusionary right and the incremental
value of a market monopoly;
(3) Patent Portfolio Matrix as a snapshot
of a patent portfolio; (4) patent
value in the context of the inherent
uncertainties of patent enforcement;
(5) valuing market monopolies; (6)
litigation risk analysis and how it
affects the value of patents, licenses
and settlements in light of patent
litigation statistics; (7) theoretical and
practical considerations, as well as
some pitfalls in modeling IP value; and
(8) cash flow models, decision trees
and Monte Carlo simulations.
5-O: Industry Standards and
Pool Licensing: Who Gets What
Wednesday, October 20, 3:45-5:00 p.m.
Andrew Carter
Managing Director, ICMB Ocean Tomo
Mark Ick
Director, Licensing and Business
Development, Motorola
All Levels
Companies frequently pool technology
assets as a way to develop standards,
generate revenue, and form competitive
alliances. How should any gains (royalties
or other revenues) from these
pools be allocated? Several methods
are used, from a simple count of
patents up to a complex analysis of
claims (and even threatened litigation).
This workshop will look at the ways in
which different companies and groups
approach this question and why different
strategies may or may not work.
The workshop will also offer a guide to
maximizing a company's stake during
any pool valuation exercise. In addition,
the workshop will discuss the
strategic issues in dealing with sharing
technology through participation in standard
setting bodies.
INDUSTRY/UNIVERSITY
Monday, October 18
1-R: Open Source Licensing
and Patents
Monday, October 18, 2:00-3:15 p.m.
Katharine Ku
Director, Technology Licensing,
Stanford University
Jim DeGraw
Counsel, Ropes and Gray
Advanced
Open-sourcing is gaining increasing
popularity in many places, including
academia. In keeping with the
"Creative Commons" philosophy or the
Public Library of Science movement,
many academic researchers have taken to "publishing" software research
under open source licenses. Yet most
do not realize that doing so may have
consequences on both the institution
and future users of the software. Also,
there are many kinds of open source
licenses, and not all of them are the
same. Universities need to make considered
decisions about whether or not,
and - if so - how to "open source"
research software. If a researcher publishes
software under an open source
license, does that mean the university
has licensed the software or ceded
ownership? Can it do so under sponsorship
arrangements or Bayh-Dole?
Should it? Can a university allow opensource
publication of software and file
a patent on the algorithm embodied in
that software? Is this consistent, or
does it matter? If it does, can the
patent ever be effectively enforced?
Should the university "relinquish" its
interest in the open-sourced code to
the creators if the university wants to
file a patent? Should a university adopt
a preferred open-sourced licensing
regime? If it does, can it effectively
prevent proprietary exploitation of its
open-sourced software?
2-R - ROUNDTABLE:
The Two Toughest Issues:
Improvements and Unlicensed
Infringers
Monday, October 18, 3:45-5:00 p.m.
Lawrence Schroepfer
Vice President, BTG International
William J. Fields
Vice President, Licensing, Science
Applications International Corporation
Michael J. Martin
Executive Vice President, Virginia Tech
Intellectual Properties, Inc.
Mark Allen
Business Development Manager, Sandia National Laboratories
Intermediate
So all the financial terms have been
agreed to, everybody's shaken hands,
and now it's just up to the lawyers to
iron out some "minor details," right?
Wrong. There are still some key nonfinancial
issues that are really important,
but really tough, and they could
still torpedo your "done deal." They're
tough precisely because both the licensor
and licensee have legitimate interests
to protect. This roundtable will
examine two of the toughest issues:
rights to improvements, and rights/
duties to assert the licensed patent
against unlicensed infringers. The
emphasis will be on trying to find ways
to reach a "middle ground" that
accommodates both parties' legitimate
needs and makes for a win-win transaction.
The roundtable will be highly
participatory, and audience members
will be urged to share their ideas and
experiences.
Tuesday, October 19
3-R: Technology Marketing:
State of the Art
Monday, October 18, 3:45-5:00 p.m.
Catherine E. Vorwald
Assistant Director Technology
Development, Johns Hopkins University
Andrea Doering
Manager, Technology
Commercialization, University of
Maryland, Baltimore
All Levels
Technology transfer begins with the
marketing of non-confidential information
pertaining to inventions to the
public sector. On the surface this seems
so easy but in reality it is a daunting
task, due to the magnitude of discovery
occurring in our universities and companies
every day. Companies are bombarded
by intellectual property push
sites; universities have numerous
early-stage inventions to promote.
Universities are fiscally unable to convert
every provisional patent hoping to
secure a licensee that will eventually
assume patent costs. Companies need
the patent protection for their strategic
positions. The need for effective marketing
is clear. The goal of this workshop
is to discuss technology marketing
programs from an operations point
of view and highlight those tools and
tactics that make for successful technology
transfer.
Wednesday, October 20
4-R: Federal Technology
Transfer and Government
Licensing
Monday, October 18, 2:00-3:15 p.m.
Jacob (Jesse) N. Erlich
Partner/Patent Attorney, Perkins,
Smith & Cohen, LLP
Randall Bergmann
Regional Manager, Defense Technical
Information Center
All Levels
This workshop will cover many aspects
of federal technology transfer under
the Federal Technology Transfer Act as
well as government licensing. The
Federal Technology Transfer Act forms
the basis for cooperative research and
development agreements,(CRADAs)
with government laboratories.
5-R: Technology Assessment
Committees
Monday, October 18, 3:45-5:00 p.m.
Marie G. Talnack-Moffett
President, Talnack and Associates
Richard Rettig
Senior Researcher, RAND Corporation
Blain Tomlinson
Director, Mission Innovation Institute
Novice
This workshop is intended to provide
information and resources to those
involved in Technology Assessment
Committees. Perhaps you serve on a
TAC and would like to know how to
gather information to make better decisions
about technologies, equipment
and procedures. Or your organization
may provide information and support
services to a TAC. In any case, you may
want to learn more about how such
committees obtain high quality, relevant
and objective information to make
decisions about what technologies and
procedures to adopt. This workshop is
designed to provide information and
resources as well as share experiences
of others that have built effective and
innovative Technology Assessment
Committees.
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