Workshops by Track
Track #1:
Development & Deals
A-1: Licensing vs. New Venture - The Anatomy of a Start-Up
The workshop will include and compare the ingredients and requirements for creating a new venture and the similarity between the decision to license the IP created or to start the long process of building a new business. It will detail the variations in the planning process for the greatest return on the investment. Also, speakers will discuss the potential for collaborations based upon the perceived value of the IP, along with the research required to make intelligent decisions and the management/founding teams' levels of commitment to achieve the objective based upon their decision and potential rewards.
Speakers:
- Damon Matteo, VP & Chief IP Officer, Palo Alto Research Center
- Larry Udell, Executive Director, Intellectual Property International
B-1: Developing & Licensing "The Next Big Thing"
Every business dreams of marketing the next billion dollar product. The challenge is to get each aspect of bringing a product to market just right. The reality of today's market place is that big companies with the financial wherewithal to market and advertise a product rarely have efficient or successful grassroots research and development capabilities. That reality transcends industry sectors from the pharmaceutical industry to the telecom space all the way to consumer products. Join us for this unique workshop where you will have an opportunity to hear from an inventor who has had the products he has invented and developed taken to market several times over. Robson Splane will discuss how he selects inventions to develop, how he takes those inventions through the development process and then his strategies on licensing those products to key partners who can take them to market.
Speakers:
- Ross Epstein, Partner, TechLaw, LLP
- Robson Splane, President & CEO, Splane Design Associates, Inc.
C-1: Executing an Expedited and Elevated IP Transaction – 15 "Must-Do" Items
The IP market has gained considerable attention in recent months. All indicators point toward increased activity in this arena. The goal of most buyers is to create or enhance an existing IP portfolio while most sellers seek to improve their financial position or cash out a failed business or cleaving of a business division. While many aspects of buying/selling IP are similar to those of a regular property transaction, there are several things buyers and sellers can do to expedite, exalt and enhance the experience of each party. This workshop highlights at least 15 "must-do" items that both buyers and sellers can and should implement to execute a smooth, superior and above all, a successful transaction.
Speaker:
- Sandeep Agarwal, Tessera
- Keith Woomer, IP Sales & Acquisitions, LSI Corporation
Track #2:
Value & Valuation
A-2: IP Licensing and Value Issues in Bankruptcy
The presence of IP in companies undergoing bankruptcy proceedings gives rise to many unique issues that the IP professional must consider. This workshop will address those issues from both a financial and legal viewpoint, as well as from the viewpoint of the IP owner, and answer questions such as: What are the risks and rewards of purchasing IP from a bankrupt entity? What issues surrounding IP in bankruptcy give rise to value considerations and/or licensing considerations? Do companies in bankruptcy present good opportunities for entities looking to acquire additional or complementary IP?
Speakers:
- Mike Annis, Partner, Husch Blackwell
- Vic Michaels, VP, Jarden Consumer Solutions
- Michele Riley, Managing Director, Invotex Group
B-2: The Use of Consumer Surveys in Patent Cases for Damage Apportionment
Recent court decisions have emphasized how consumer perceptions and behavior impact damages in patent infringement cases; and how professionals responsible for maximizing the value of their intellectual property – both in licensing efforts and at trial – can utilize consumer surveys to assess and demonstrate the value of their technology. This workshop will present a practical approach to effectively using consumer surveys directed at assessing the value of patented technology, and will include a discussion of real-world examples of various consumer survey methodologies. Topics will include the selection of experts, how to avoid common pitfalls when developing survey evidence, and the effective presentation of survey evidence.
Speakers:
- Ran Kivetz, Professor of Marketing, Columbia University Business School
- Christopher K. Larus, Attorney, Robins, Kaplan, Miller & Ciresi, LLP
- Bryan J. Mechell, Attorney, Robins, Kaplan, Miller & Ciresi, LLP
- Andrew D. Sorensen, Chief Patent Counsel, Ecolab
- Michael Wagner, Managing Director, LitiNomics, Inc.
C-2: Make Your Portfolio Pay – Maximizing Returns on Large and Medium-Sized Patent Portfolios
Worldwide patent grants have exceeded 750,000 annually since 2006. In this environment, organizations can struggle to identify the sets of patents that can have a significant impact on their business. Organizations with a structured portfolio and a process for identifying patents that can drive value have a significant advantage. This workshop will explore: IP lifecycle overview; organizing a patent portfolio into a structure that is relevant to a specific business; identifying patents that can drive value; and experiences from managing large portfolios.
Speakers:
- Daniel O'Neill, Senior Manager, IP & Strategic Technology Agreements, Northrop Grumman
- Van Thompson, Principal, Professional Services, UBM TechInsights
- David Wright, VP-TS Patent Portfolio Management, Cypress Semiconductor
Track #3:
Updates in Patent Law
A-3: New Strategies for Handling Provisional Patent Applications in Light of the AIA
The America Invents Act (AIA) is a complex piece of legislation; however, for this workshop, the primary focus will be on two specific, but important, aspects: (1) "new section 102"; and (2) transition provisions regarding the change in law from "old section 102" to "new section 102." The workshop will concentrate on how provisional applications might be affected by these two aspects and possible strategies for obtaining patent protection using provisional applications in light of these recent changes.
Speaker:
- Howard Skaist, Member, Berkeley Law & Technology Group
B-3: Effective Utilization of Patent Searches in the Wake of AIA Patent Reform Act
The Leahy-Smith America Invents Act was passed by Congress and signed into law on September 16, 2011. This new law is certain to profoundly impact not only patent prosecution and litigation procedures, but also many tangential business decisions regarding strategies for protection of patentable inventions. Most IP professionals have begun to analyze the implications associated with switching from a "first-to-invent" to a "first-to-file" system, but few have likely fully considered the future adjustments that will be required in order to maximize the effectiveness of in-house or outsourced patent prior art searches. This workshop will provide a comprehensive update regarding adjustments to patent searching procedures, as well as the continued advantages of utilizing patent searches as a strategic weapon, in view of the new America Invents Act.
Moderator:
Kathryn Odland, Registered Patent Agent, Global Patent Solutions, LLC
Speakers:
- Jason Jardine, Partner, Knobbe Martens Olson & Bear LLP
- Michael Lang, Attorney at Law, The Noblitt Group, PLLC
- David Odland, Founder, Principal & Registered Patent Agent, Global Patent Solutions, LLC
- Eric Wrzesinski, Attorney, Global Patent Solutions, LLC
C-3: Beyond Business Method Patents: AIA, The Patent Landscape After Section 18
Section 18 of the America Invents Act (AIA) creates a new and specialized post-grant review process to invalidate business method patents involving financial services. The USPTO has until September 2012 to create key definitions to make this provision operable. Specifically, the USPTO must define "technological inventions" as they are not subject to the reach of Section 18. Even the definition in Section 18 of "covered method patents" is ambiguous. Practitioners may at first blush think Section 18 only applies to patents covered by Section 705, the class code typically associated with business method patents. This workshop will help the LES audience better understand the scope of Section 18 and the challenges that lie ahead in the implementation by the USPTO and the interpretation by the patent and licensing communities.
Speakers:
- Chip D'Angelo, Principal, 1790 Analytics
- Sanjay Prasad, Licensing Executive, Intellectual Ventures
Track #4:
Hot Tech Topics
A-4: Trends in Wireless Patent Licensing: Patent Pools
The rapid ascendance of wireless technologies in consumer and enterprise smart devices has created a strong industry dependence on IP. Specifically, telecom and consumer electronics companies must aggregate licensing rights from disparate sources for all of their form factors, which can be time consuming, complex, and expensive. This workshop highlights trends in wireless IP licensing with a focus on patent pools. Specifically, it describes the type of market conditions favorable to patent pools, how modern patent pools address the antitrust considerations arising from the pooling of many influential industry licensors, and several of the key trends present in current patent pool efforts.
Speakers:
- Scott Forbes, VIA Licensing
B-4: Open Source Software: Your Client is Using it. Now What?
As enterprise use of open source software approaches 100%, it's more imperative than ever for businesses to determine what open source software is being used, establish open source policies, and ensure license compliance. Litigation, loss of revenue, and compromised bargaining position are some of the risks associated with lack of license compliance. As a result, open source audits are becoming common requirements in a wide variety of scenarios, including mergers and acquisitions, financing, and distribution deals. This workshop will include a brief overview of open source software and licensing and then provide a description of what an open source audit entails and why audits are necessary. Topics covered include what audit methods are available, what issues can arise as a result of an audit, who should be involved, and how to leverage the resulting audit report.
Speakers:
- Jilayne Lovejoy, Corporate Counsel, OpenLogic
- Heather Meeker, Co-Managing Shareholder, Greenburg Traurig, LLP
- Esteban Rockett, Senior Counsel, Motorola Mobility Holdings, Inc.
C-4: Beyond PIPA/SOPA: How can Legislators deal with Piracy?
This panel discussion will explore US legislative attempts to deal with counterfeiting and piracy of music, movies, and software, including discussions of the present laws, PIPA, SOPA and the ACTA treaty. The panelists will discuss the pros and cons of various ways to deal with off-shore web sites that offer unlicensed media. We expect to have a spirited and lively discussion between the internet community and the media content providers.
Moderator:
Richard Baker, President, New England Intellectual Property, LLC
Speakers:
- Chris Katopis, Executive Director, Association of Mortgage Investors
- Mitch Stoltz, Staff Attorney, Electronic Frontier Foundation
- Brian O'Shaughnessy, Regional Vice President, USA, LES (USA & Canada); International Delegate, LESI