High Tech Sector: Aerospace and Transportation Subcommittee
Recent US Court Decisions and Development Affecting Licensing
- John Paul, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
- Brian Kacedon, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
The webinar will review and discuss recent US court decisions and developments affecting licensing developments including the following issues:
1. Employment agreements - rights to assert and assign patents
2. Arbitration agreements - infringement disputes
3. Most-favored licensee clauses - royalty refund
4. Agreements to outsource manufacturing - patent validity
5. Inventors - standing to sue
6. Assurances - loss of right to sue
7. Knowledge - enhanced damages and willful infringement
8. Licensing proposals - reasonable royalty calculations
9. Expert opinions - generic statistics
10. License defense - delay and prejudice
John Paul is a partner in the Washington, DC office of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. He has more than 30 years of experience in intellectual property licensing, litigation, and prosecution, with a focus on strategic planning, IP portfolio evaluation and development, complex transactions, due diligence investigations, and licensing and enforcement of IP portfolios to generate revenue. He leads the firm's IP management and transaction section, and is designated as a Certified Licensing Professional (CLP).
Mr. Paul analyzes patent portfolios for a wide range of companies and industries, including multimedia electronics, aerospace, medical devices, and consumer products. He develops strategies and creates systems to help companies understand and effectively communicate the legal and commercial significance of IP portfolios, develop more robust portfolios aligned with their business objectives, generate revenue by monetizing those portfolios, and enter into collaboration agreements. He has set up and directed licensing and enforcement programs that have generated significant royalty revenue for leading technology companies; set up and conducted multiple-round private auctions to sell patent portfolios; led negotiations related to IP issues in business divestitures and other complex transactions; conducted IP due diligence and negotiations for strategic acquisitions of patent portfolios; negotiated and drafted a wide range of agreements relating to the development and use of intellectual property; and litigated a wide range of IP issues relating to infringement and breach of agreements.
Mr. Paul serves as a board member and vice president of the Licensing Executives Society International. He previously served as counsel to the board, trustee, and vice president of the Licensing Executives Society U.S.A. and Canada. Mr. Paul lectures frequently on patent law, licensing, and IP management, and writes weekly articles for LES Insights on U.S. cases affecting licensing and other transactions.
Brian Kacedon is a partner in the Washington, DC office of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. His practice focuses on patent and technology licensing and litigation. In his transactional practice, Mr. Kacedon assists clients in conducting market assessments for their patents, conducts licensing negotiations, drafts licensing agreements, and participates in related litigations. Over the course of his career, he has drafted hundreds of patent, know-how, and software license agreements in many industries, including pharmaceutical, medical device, and consumer electronics. He has also assisted several leading technology companies in negotiating and drafting licenses for wireless technologies as well as navigating related standards-setting issues.
Mr. Kacedon has broad experience in all aspects of patent litigation, including drafting claim construction and summary judgment motions, examining and cross-examining witnesses, and managing day-to-day litigation activities. He also has extensive experience litigating agreement disputes, appearing as counsel in multiple arbitrations over the last several years. Mr. Kacedon has been retained as an expert witness relating to the interpretation of license agreements.
A frequent presenter at legal and industry workshops and conferences, Mr. Kacedon has lectured on drafting patent and know-how licenses for the Patent Resources Group and the Licensing Executives Society, as well as other organizations. He is a coauthor of a leading treatise on patent licensing, Drafting Patent Licenses, published by BNA Books.
Webinar registration is free to members and non-members.