Opportunities & Challenges of Licensing Programs in Operating Companies
Panel Discussion and Networking Lunch
Deadline for registration or cancellation: Tuesday, November 14, 2017.
Online registration automatically closes - please make your reservation online by the deadline as there are only a few extra spaces allotted at the meeting for walk-ins. The venue may not be able to serve meals beyond the guaranteed number expected for the meeting.
LES Student Member:$35.00
The licensing of technology and patents provides additional ways for monetizing intellectual assets beyond making and selling products. Trade-offs for licensors include enabling potential competitors and giving up the exclusive rights for using of their innovations. On the other hand, licensing innovations broadly – whether through standards mandated FRAND licensing or independent licensing programs - helps fund long term R&D initiatives that benefit broader industry ecosystems. These types of approaches have worked well for a long time in many markets, but have recently come under pressure as large adopters are pushing for ever lower cost access to third party innovations adopted in their products. The panel will examine the current state of play in licensing from an innovator’s perspective and will discuss the opportunities and challenges of such programs in the current environment.
MCLE: An application requesting MCLE credit for this activity is pending for approval by the State Bar of California.
Discussion will include:
- How the different laws of different countries are taken into account when building a patent portfolio - from harvesting to foreign filing, including an update of the upcoming UPC
- How soon the licensing team should cooperate with the prosecution team to optimize revenues. The discussion will cover specific examples on how the different teams are organized in different industries
Bill Goldman, Vice President, Intellectual Property, NAGRA/Kudelski
With close to two decades of patent experience under his belt, Bill is a seasoned IP veteran. Bill has a BS in Electrical & Electronics Engineering from Michigan State University and a JD from Syracuse University. Bill originally joined Limbach & Limbach LLP, a boutique patent firm in San Francisco, focusing on global patent prosecution and portfolio development strategies. He later joined the technology law firm Gray Cary which ultimately merged into DLA Piper, where Bill was a partner in the patent litigation group. After years of successfully trying patent cases to verdict before multiple district courts and the ITC Bill later joined Intellectual Ventures’ divestiture and licensing business helping IV achieve over $1B in licensing revenue in 2011. Since 2012 Bill has been VP of Intellectual Property for the Kudelski Group, a Swiss technology leader for over 65 years in video, pay television and over the top end-to-end content delivery and content security. He w as a co-founder of the licensing business at Kudelski and has helped lead the Group’s widely successful monetization activities leveraging a portfolio of over 5,500 patents and applications worldwide.
Craig Mitchell, President, Invensas
Craig’s responsibilities include the development, acquisition, and monetization of intellectual property in areas such as semiconductor circuitry, semiconductor processing, 2D and 3D packaging, memory technologies and other related technologies that enable mobile, server and consumer electronic devices. Craig, who was most recently senior vice president of business development, joined Xperi in May 1992, and he has served in a variety of senior roles in technology development, marketing, and licensing. He holds a B.S. in electrical engineering from Manhattan College in New York. Craig is a graduate of Stanford’s Executive Program for Growing Companies and Harvard Business School’s Advanced Management Program. He is also a named inventor on more than 60 U.S. patents.
Patrick Patnode, President, Licensing & Technology Ventures, GE Ventures
Pat is President of GE Licensing & Technology Ventures, leading a global team in developing new commercial opportunities for GE’s vast portfolio of intellectual property. The Licensing & Technology Ventures team provides business partners with access to GE’s technologies for them to use in innovative ways, helping them accelerate their own technology development and differentiating them in the marketplace through licensing, joint development partnerships and new company formation. Prior to becoming President of Licensing & Technology Ventures, Pat was GE Ventures General Counsel, managing the team responsible for all legal and compliance needs for the various Ventures business units. Pat’s experience spans numerous industries and subject areas including securities, intellectual property, complex commercial and licensing transactions and litigation. Pat joined GE Ventures from GE Global Research where he served as the Chief Compliance Officer, managing compliance for the GE Global Research Centers around the world. Pat received his Juris Doctorate from Albany Law School and his Bachelors in Mechanical Engineering from Clarkson University.
Stefan Tamme, VP IP Strategy & Licensing, Rambus
Stefan joined Rambus in 2004. He leads the strategic development of Rambus’s patent portfolio and the implementation of its IP monetization strategies through its licensing programs and solutions businesses. His responsibilities include outbound licensing, as well as acquisitions and divestitures. He has been involved in successfully negotiating and closing transactions that have generated over $1 billion in revenues for Rambus. Previously, Stefan served as Rambus’s director of global business enablement, where he led the strategic alliance partner program and the worldwide reseller channel. He has over 20 years’ technology and licensing experience in the electronics industry, ranging from semiconductors to systems and software. He is a frequent speaker at industry events and is chair of the Licensing Executive Society’s high-tech sector.
Moderator: Ron Laurie, Chairman, InventionShare; Managing Director, Inflexion Point Strategy
Ron recently became Chairman at InventionShare, a new kind of open innovation company that connects creators of broadly patentable, breakthrough technologies with leading product companies to globally deploy these technologies in a minimum amount of time, without having to build an operating company, by using a variety of creative deal structures including spin-outs, joint ventures, exclusive field-of-use licenses and early M&A exits. Ron is also the Managing Director of Inflexion Point Strategy, the first boutique IP Investment bank, which he founded in 2004 to assist technology companies and institutional investors around the world in IP-driven M&A transactions. He is a director at Wi-LAN, Inc., one of the oldest and most successful publicly-traded patent licensing companies and is on the advisory boards of the Hoover Institution Working Group on Intellectual Property, Innovation, and Prosperity (IP2) at Stanford, the Silicon Valley Chapter of the Licensing Executives Society, and the Certified Patent Valuation Analyst accreditation program.
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