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LES 2015 Annual Meeting

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Schedule

All LES educational workshops and sessions at the Annual Meeting are eligible for CLP credit.

Attorneys can earn up to 21 Mandatory CLE credits. The pre-conference Education Workshops and many of the Annual Meeting sessions will be eligible for CLE in a number of jurisdictions. Workshops and sessions that are eligible will be indicated on the final program. Visit the continuing education page for additional information.

Thirty - minute meetings by appointment only. Make appointments using the Mobile App.

Sunday, October 25, 2015

8:00 am - 5:30 pm

IP Business Basics 101 (Requires additional fee.)

This new, one - day, deal - centric course has been designed by experienced LES executives for business and licensing (newer to the field) professionals in USA & Canada.  Whether it is a trademark, international brand, copyright, patent, knowhow, trade secrets or a combination of some/all of these, recent transactions and auctions have confirmed the value of IP in business. This course is interactive and built around real - world examples and small group hands - on exercises.

Who Should Attend
There is no prerequisite for the course. It is designed for people who develop, market and manage (commercialize) creative, new solutions of all kinds. It shows you how valuable inventions and ideas work in business.

The key is having a diverse audience that includes entrepreneurs, scientists and engineers, private equity and venture capital investors, investment bankers, lawyers, graduate students, CPAs, various people from start - ups and established companies of all sizes, non - profit tech transfer offices, law firms, valuation firms, business and law school professors, professors in academic technical departments, etc.. The diversity in our classroom enhances discussion and comprehension.

Instructors
The course is taught by experienced business and legal licensing executives, all LES members and vetted instructors.

Course Details
The course is divided into the following topic areas:

Group hands - on exercise identifying trademarks, copyrights, and brands (using every day consumer items)
Group hands - on exercise defining intangible concepts, invention disclosures and elements of a patent
Reviewing a publicly available licensing agreement
Developing and using term sheets for intangibles
Determining value based on cost, income, and market approaches
Identifying elements of an intellectual asset strategy and relationship to a term sheet
Recognizing types and obligations  in fully executed non - disclosure agreements
Recognizing the role and value of trade secrets in certain technologies
Putting it all together, here’s why it matters
The course will not make you an expert, but you will learn how to recognize new elements of value in developing your business.

Speakers:
Ada Nielsen, Foodexus LLC
Matthew C. McNeill, Rite - Hite
Michael Fluhler, Fishman Stewart & Yamaguchi PLLC

8:30 am - 11:30 am

Chapter Leader Training Session

2:00 pm - 5:00 pm

Choose Your Own Misadventure: Tap Dancing In the Ethics Minefield of An Intellectual Property Transaction

This course is an interactive exercise that enables attorneys and business people to understand and explore the various ethical questions that can arise during the negotiation of an intellectual property transaction. Very loosely patterned after the beloved Choose Your Own Adventure® book series, the course participants are given a scenario framework at various stages of an intellectual property transaction and then develop their own detailed story. The scenes are then dissected and analyzed from an ethical perspective and different paths and outcomes are discussed. Each group will have a mix of attorneys and business people, and the ethical dilemmas will be viewed from both perspectives. This format will enable business people to better understand the ethics rules and regulations governing attorneys (The ABA Model Rules of Professional Responsibility) and, likewise, enable attorneys to understand how business people approach ethical dilemmas.

The course is broken down into three acts: 1) A Technology Is Born; 2) A Deal Is Done; and 3) A Deal Is Undone: War Declared. Act 1 enables the participants to explore ethical dilemmas surrounding early - stage technology development, including startup formation and obtaining patent protection. Act 2 centers upon ethical dilemmas arising during agreement negotiations. Act 3 explores the ethical dilemmas associated with a deal gone bad and the resulting litigation. Participants take on different roles throughout the acts, with attorneys playing the business person roles and vice versa. The ethical dilemmas, discussion, and analysis include:

  • Conflicts of interest
  • Attorneys’ confidentiality obligations to their clients
  • Conflicts arising from an attorneys’ representation of an organization
  • Truthfulness in statements to others; puffing versus false statements
  • Litigation conduct

Speakers:
Joseph T. Miotke, DeWitt Ross & Stevens
Ron Epperson, Intellectual Energy, LLC

2:00 pm - 5:00 pm

Getting a Workable License Agreement to Signature — Practical Tips for Drafting, Legal Review, and Negotiation

This workshop will be a cross between a review of key licensing basics and a master class of pro tips. It will use an innovative pedagogical technique, pioneered by a Harvard physics professor, in which students work in small groups to brainstorm problem sets based on frequently occurring negotiation challenges and then compare notes to share best practices. 

Extensive, easy - to - read written materials will be made available via the Web and students are encouraged to bring notebook computers or tablets for in - class access. 

This workshop will include:

A review and discussion on key issues, such as royalties and other compensation arrangements; audits; indemnities; limitations of liability; different ways of managing disputes to preserve the contract relationship; etc.

A discussion about various "canary - in - the - coal - mine" clauses to help identify potential trouble spots, as well as creative ways of getting a draft contract through legal review more quickly

Limited seating is available. Pre - registration is required.

Speakers:
D. C. Toedt III, Law Office of D.C. Toedt III
Paul A. Stewart, Pasco Ventures
Susan Stoddard, Mayo Clinic Ventures

2:00 pm - 5:00 pm

Cost, Market, Income – Valuation Frameworks For Licensing

Where do we begin in answering the question “What is it worth?” This interactive educational workshop will provide attendees with a battle - tested framework for evaluating their IP valuation questions. Through a combination of case studies, demonstrations, and facilitated group discussions, this workshop will focus on how licensing executives can deploy a combination of the cost, market, and income approaches to triangulate on defensible valuation conclusions. In addition to exploring the cost, market, income framework, this discussion will also address the theories underlying these approaches, the relative applicability of these approaches to various situations, and resources available to help mitigate information shortfalls. Attendees will be asked to share their experiences, expertise, and questions.

Speakers:
Chris Schulte, 284 Partners, LLC
Robert Goldman, Charles River Associates

5:30 pm - 6:30 pm

Sector Meet - Ups - Speed Mentoring

Please join us for the new members LES Speed Mentoring reception.  Through Speed Mentoring, new members (mentees) will be paired with LES board members, sector leaders and committee chairs (mentors).  Mentors and mentees will have a chance to meet in 10 - minute intervals to get to know one another and share experiences and advice.  Upon the conclusion of Speed Mentoring, all participants are welcome to join a general networking session with wine, cheese and light refreshments.

6:30 pm - 7:30 pm

Welcome Reception/ New Member Reception

Kick off your 2015 LES Meeting experience at the Welcome Reception in Westside Ballroom on the 5th floor. Enjoy food and drinks and get exclusive access to the exhibitors while networking with your peers.

2015 New Member Welcome Reception
First Time Attendee? Arriving on Sunday? No plans?
Join us for an informal, come as you are evening of conversation, networking, and fun at the New Member Welcome Lounge located in the exhibit hall.

Monday, October 26, 2015

7:30 am - 9:00 am

Continental Breakfast

8:00 am - 9:00 am

LES Strategic Planning Team - Role/Services/Resources Committee Meeting

8:00 am - 9:00 am

Education Committee Meeting

8:00 am - 9:00 am

LES Strategic Planning Team - Membership Size/Structure

8:00 am - 5:30 pm

Exhibit Hall Hours

8:00 am - 5:30 pm

One - on - One Networking Appointments

Thirty - minute meetings by appointment only. Make appointments using the Mobile App.

9:00 am - 9:15 am

Welcome and Opening Remarks

Speakers:
Pamela Demain, Merck & Co., Inc.
Scott Williams, InterDigital Holdings, Inc.

9:15 am - 10:45 am

Plenary Session - Big Money is Back

A cross industry panel of experts will explore and discuss how the changing financial climate is impacting innovation. There is money out there so, what are stakeholders doing and how is investment and licensing shaping innovation?

Speakers:
James Sledzik, Energy Ventures US, Inc.
Patrick Patnode, GE Ventures and Healthymagination
Sang Ahn, Samsung Electronics
Tom Heyman, Johnson & Johnson Innovation – JJDC, Inc. (JJDC)

Moderator:
Orin Herskowitz, Adjunct Professor, Columbia Business and Engineering Schools

10:45 am - 11:15 am

Networking Break

11:15 am - 12:15 pm

Spotlight Plenary - Big Ideas in the Big Apple

As home to numerous top tier academic institutions and medical centers and the second largest recipient of NIH funding in the US, New York City has long been a fertile source of scientific discoveries.  We are in a time where key stakeholders, such as pharma, venture capital and corporate venture, patient organizations, entrepreneurs and biotech start - ups are actively converging around early stage innovation.  This is where many key collaborations and deals begin and grow.  What are the changes over the past decade that has led to the enormous growth of the life science ecosystem in NYC?

Speakers:
Daniel P. Huttenlocher, Cornell Tech
Eric E. Schadt, Icahn Institute for Genomics and Multiscale Biology Icahn School of Medicine at Mount Sinai
M. Johnston Erwin, Eli Lilly and Company
Marc Tessier - Lavigne, The Rockefeller University
Samuel D. Waksal, Kadmon Corporation

Moderator:
Kathleen Denis, The Rockefeller University

11:15 am - 12:15 pm

Spotlight Plenary - Maximizing the Value of Your Spend – It is More than Royalties - It’s Investment Strategies

The decision making process unique to chemicals and oil and gas will be explored addressing when, what and why to spend with the goal of optimizing investment strategies.  An interactive panel discussion will be held followed by a roundtable discussion involving all of the attendees and the panelist whereby key questions arising from the panel discussion will be addressed at each roundtable. Each roundtable group will report out at the end of the session.

Speakers:
James Sledzik, Energy Ventures US, Inc.

Moderator:
Ada Nielsen, Foodexus LLC

11:15 am - 12:15 pm

Spotlight Plenary: Is Congress Building a "House of Cards"? How Legislation is Affecting IP and the Innovation Economy

The U.S. Congress continues to attempt to promote innovation through a variety of legislative efforts which will affect all aspects of the licensing world. Join industry experts to learn about pending and proposed patent, trade secret and tax legislation and then participate in the discussion on recent changes to the law and the anticipated impacts of pending bills and proposals on the innovation economy.

Speakers:
Jeff Kummer, Deloitte Tax LLP, US
Peter Harter, The Farrington Group
Terry Rea, Crowell & Moring LLP

Moderator:
David Haas, Stout Risius Ross

11:15 am - 12:15 pm

Spotlight Plenary - Mobile Payments:  Bitcoin and Other Mobile Payments – Creating an Ecosystem

With the advent of smartphones and other devices, a person’s option to pay for products and services has expanded exponentially. From PayPal to Bitcoin and all technologies in - between, companies and financial service firms are scrambling to develop new technologies to offer to consumers to make paying easier. The panel will discuss the various technologies available to consumers, including digital currency, as well as identify key issues facing them going forward.

Speakers:
Joseph Lubin, ConsenSys/Ethereum
Leonardo Renna, Google
Moshe Molina, Citi Ventures/Citigroup
Sean Reilly, Askeladden. L.L.C./ the Clearing House Payments Company

Moderator:
Claus Melarti, RPX Corporation
Mena Kaplan, Paul, Weiss, Rifkind, Wharton & Garrison, LLP

12:15 pm - 2:30 pm

Keynote Luncheon Featuring Dr. Siddhartha Mukherjee &  Frank Barnes' Award Presentation

Pulitzer Prize winning author Dr. Siddhartha Mukherjee will be the featured speaker during the luncheon.

The Emperor of All Maladies: A Biography of Cancer
Dr. Mukherjee is the author of The Emperor of All Maladies: A Biography of Cancer, which was the basis for a 2015 film documentary, Cancer: The Emperor of All Maladies, by Ken Burns for PBS Television. The book was named one of the 100 most influential books written in English since 1923 by TIME Magazine, and one of the 100 notable books of 2010 by The New York Times Magazine.

Dr. Mukherjee is an assistant professor of medicine at Columbia University and staff physician at Columbia University Medical Center in New York City. He has been the Plummer Visiting Professor at the Mayo Clinic in Rochester, Minnesota, the Joseph Garland lecturer at the Massachusetts Medical Society, and an honorary visiting professor at Johns Hopkins School of Medicine.

The Barnes Award was established in 2000 to memorialize Frank Barnes' extraordinary contributions to the field of licensing through mentorship. In his honor, the award is given annually to an LES member who has contributed significantly to the field of licensing and to the development of fellow licensing professionals through outstanding mentorship activities.

2:00 pm - 5:00 pm

Train - the - Trainer

Are you interested in teaching the IP Business Basics 101 for your Local Chapter or at LES Meetings? Now is your chance. LES (USA & Canada) Inc. is currently recruiting instructors. To be eligible, you will need to take the IP Business Basics 101 and attend the 3 - 4 hour Train - the - Trainer (TTT) workshop. Following your training, you will have access to course materials, coaching, & other resources to get you started.

Eligibility for 2015
In order to be eligible, you will need to have all the following:

Taken IP Business Basics 101.
5 or more years of fulltime work experience in IP/Licensing (IP, licensing, technology transfer, and business development professionals, as well as IP, patent, and transactional attorneys).
Current membership with LES (USA & Canada) Inc. for the IP Business Basics 101 course.

Copyright and Confidentiality
The teaching materials/artifacts for the IP Business Basics 101 courses (all courses offered through LES (USA & Canada) Inc./LES International) are LES copyrighted. Therefore, all the teaching materials/artifacts can be used only for the benefit of LES (USA & Canada) Inc./LES International) and are not to be shared.

The IP Business Basics 101 can be taught only in U.S.A. and Canada.

Why You Should Attend
Teaching the IP Business Basics 101 courses is a great way to develop your professional skills, make new connections and give back to the licensing profession. With our half day Train - the - Trainer workshop, you will learn to teach a standardized curriculum, as a team with another instructor supplementing the business or legal perspective. Sign up for a Train - the - Trainer workshop and join the elite group of world - class LES instructors.

Course Details for IP Business Basics 101

Target audience and group diversity
Sponsorship
Setting up a course
Budgeting and pricing assumptions
Materials/artifacts

Speakers:
Ada Nielsen, Foodexus LLC

2:30 pm - 3:45 pm

Defensive Strategies for Companies

The Panel will discuss how Operating companies can reduce their risk of being sued by Patent Assertion Entities. Companies have a number of legal tools at their disposal to reduce the cost and risk of litigation. Some include entities like Licensing on Transfer (LoT) and Open Innovation Network (OIN). The panel will delve into these tools and others to understand the benefits of each and how they can be used together in order to reduce risk and cost

Speakers:
Keith Bergelt, Open Invention Network (OIN)
Ken Seddon, LOT Network
Michael Cunningham, Red Hat, Inc.
Rodger Sadler, Canon U.S.A. Inc.

Moderator:
Brian O´Shaughnessy, RatnerPrestia

2:30 pm - 3:45 pm

Sourcing Assets: Strategies & Methodologies for Developing & Managing a Licensable Portfolio

Driving innovation to achieve business success is greatly dependent on getting the right IP positioning. Companies can greatly improve their IP positioning by employing innovative approaches to internal and external IP sourcing. Thinking creatively about IP assets and how they play into broader business goals allows companies to have a clearer vision of what IP they need to create, obtain, and what they can sell or license. To do this, higher levels of IP strategy and diligence are required. Panelists will discuss innovative approaches to sourcing IP assets internally and externally and share the lessons they've learned through their experiences.

Speakers:
Bob Held, CLP, TeleCommunication Systems, Inc.
Courtney Quish, Rovi Corporation
Jamie Kemler, CLP, Stryker Corporation
Jin Kim, United Technologies
Josue Ortiz, ClearViewIP Ltd

2:30 pm - 3:45 pm

Beyond Hybrid Licenses  - -   Strategies for Post Patent Expiration Payments

The US Supreme Court recently reiterated the long standing rule that hybrid licenses, which involve both patent rights and know - how, are an effective tool for structuring such deals.  In doing so, however, the Court also clarified that parties, no matter how informed and competent, cannot agree to patent royalties that extend after patent expiration.  Fortunately for those seeking alternatives to the traditional license structure, the Court explicitly left room for “other business arrangements” that would allow for post patent expiration payments.  The workshop will explore, from a US and international perspective, alternatives beyond hybrid licenses that would allow for parties to structure patent licensing deals that provide for periodic payments extending beyond patent expiration.

Speakers:
David Crichton, Johnson & Johnson
Rob McInnes, DibbsBarker (Australia)
Steven M. Ferguson, CLP, NIH Office of Technology Transfer

Moderator:
Patrick Gattari, McDonnell Boehnen Hulbert & Berghoff LLP  (mbhb)

2:30 pm - 3:45 pm

The Art of Striking a Deal in China

It is widely recognized that China has become a major force in the global economy in the past decade. It is considered not only one of the biggest exporters but also importer in the world. China has striven to be competitive in the global economy by nurturing and strengthening their Intellectual Property protection and enforcement through various programs.  The State Intellectual Property Office of the People’s Republic of China (SIPO) approved new batches of 28 intellectual property pilot or demonstration cities, 16 districts and 2 service industry cluster development experimental zones. SIPO also approved 33 demonstration analysis and evaluation institutions, and 46 brand service organizations.  By the end of 2014, there were over 80,000 professional intellectual property personnel in China, over 300,000 people working related to intellectual property field, and over 10,000 patents examiner. In 2014 alone, China received 2.361 million applications for invention, utility model and design patents. The resulting improvements have served as incentive for Chinese firms to invest in Research and Development, which has lead universities, scientific institutions and enterprises to experience a status boost as major contributors of technical innovation in China. With such endeavors, China has proven its desire to be competitive with other major economic giants.  A direct correlation can be seen between increased invention patent grants and the enhancement of the national economic development. Any multinational or foreign company wishing to take part in this economic opportunity needs to understand the intricacies that go into a making a contract with a Chinese company.  There are potentially complex ownership structures to consider, issues surrounding IP protection, and the assistance or hindrance that can come from the government. For those looking to strike a deal in China, this workshop will give an overview of the current market and climate for licensing deals and show how to navigate the field before seeking a local partner: help you understand statistical trends; identify the advantages, disadvantages; learn about the risks that come with this field and how to minimize those risks; relevant government laws and regulations (including the role of IP protection; government restrictions on technology being transferred; and the precautions to take when performing due diligence).  This workshop aims to illustrate the making of a successful deal in China, covering essential practical steps that should be performed and how they should be done.  Understanding the delicate differences in culture and expectations and the local laws and practices could be the key to successfully negotiating the deal you want.

Speakers:
Dr. Albert Wai - Kit Chan, Albert Wai - Kit Chan, PLLC
Dr. David Ai, City University of Hong Kong
Dr. Muhammed I. Hussain, International Intellectual Property Consulting Services (IIPCS)

3:45 pm - 5:30 pm

Foundation Board Meeting

4:15 pm - 5:30 pm

Opportunities for Human Drugs Repurposed for Animal Health, A Growing and Rapidly Evolving Industry

Human drugs re - purposed for animal health? Does your company or institution have assets that could be leveraged to generate value in Animal Health? If so, this session provides an overview of the Animal Health industry and breaks it down into its pieces and compares the similarities and differences to the Human Health market. The presentation provides examples where technology has been transferred to create successful products creating revenue for both parties.

Speakers:
Alan T. Taylor, Virbac Corporation
Lalit Gaur, LG Biopartners, LLC
Laura Winka, DVM, Phd, Zoetis
Peter Selover, ORIOLE ANIMAL HEALTH

Moderator:
Gregory J. Sumner, Merck Animal Health

4:15 pm - 5:30 pm

Managing Trade Secrets and Considerations in International Deals

Panel will discuss what trade secrets are, best practices on capturing and managing them and important considerations when licensing or transferring the trade secrets to foreign companies.

 

Speakers:
Jaimes Sher, Celanese International Corporation
Justin Krieger, Kilpatrick, Townsend & Stockton, LLP
Mike Gross, CLP, Kimberly - Clark Corporate Research & Engineering Global Licensing
Raul Montes, ExxonMobil Upstream Research Company

Moderator:
Nicoletta (Nicki) Kennedy, Kilpatrick, Townsend & Stockton, LLP

4:15 pm - 5:30 pm

Diagnosing the U.S. Supreme Court Alice Decision’s Effect on the Patent Industry; Licensing Strategies to Maintain Value and Mitigate Invalidity Risk Moving Forward

Please join us for a lively discussion on the post - Alice patent landscape to date. This panel will discuss the practical consequences of Alice on software patent owners and the industry generally, potential changes in value attributed to software - based patent assets, and actions licensing professionals can implement to ensure the validity of software - based patents moving forward. We will hear different perspectives on these issues from patent professionals from different sectors of the industry.

Speakers:
Adam Gill, Gerchen Keller Capital, LLC
Jonathan Suder, Friedman, Suder & Cooke, P.C.
Reza Sarbakhsh, IBM
Robert Greenspoon, Flachsbart & Greenspoon, LLC
Vladimir Elgort, Sony Corporation of America

Moderators:
Maulin Shah, Envision IP, LLC
Nicholas Dudziak, Global IP Law Group, LLC

4:15 pm - 5:30 pm

Best Practices in Brand Licensing Strategies

This seminar will explore some of the different trademark strategies utilized by licensors, licensees and retailers to grow their businesses. We will explore some of the current trademark licensing trends and discuss why some of the OLD trademark licensing strategies are not very effective today. The presentation will feature case studies of and best practices from some of the leading companies in the licensing industry. The material is gathered from a current 3 - credit class that I teach at NYU. If you own or touch a brand, this will be a very informative and educational seminar.

Speakers:
Glenn Neilson, ScottsMiracle - Gro Company
Liz Kalodner, CBS Consumer Products
Robin Sitver, Johnson & Johnson Consumer Products Company Division of Johnson & Johnson Consumer Companies, Inc
Stu Seltzer, Seltzer Licensing Group

4:15 pm - 5:30 pm

Challenges in Negotiating Global License Agreements: US v. European Jurisdictions

Global license and collaboration agreements in life sciences continue to increase in complexity.  Structuring and negotiating such agreements requires an understanding of business goals, needs, and the ever - changing legal landscape.  Regardless of deal terms, statutory regimes and public policy may render the terms unenforceable.

This panel will explore the legal landscape in U.S. and Europe in key areas affecting life sciences deals, suggest strategies to minimize unintended effects, and provide real - life examples showing how businesses are dealing with these issues.  Includes case studies, experiential fact patterns and audience participation to craft solutions and optimize the parties’ ability to achieve the business results desired.

Panelists:
Hayley French, Apitope Technology
Pamela Cox, Marshall Gerstein & Borun LLP

3:45 pm - 4:15 pm

Networking Break

5:30 pm - 6:30 pm

Emerging Enterprise Committee Off - site Reception

6:30 pm - 8:30 pm

Off - site Sector Networking Events

Life Sciences Sector - Kallari Taverna
CEEM | IUGI - Etcetera Etcetera
High Tech - Hudson Terrace

Tuesday, October 27, 2015

7:00 am - 8:00 am

Technology Branding and Trademark Licensing Committee Workshop/Meeting

Committee Chair Weston Anson will introduce the new Technology Branding and Trademark Licensing Committee, formerly known as the Trademark and Licensing Committee, and provide a workshop on the concepts behind the shift in the committee’s focus.

The focus of the committee, and LES, has always been to educate the membership about relevant topics in the licensing industry. The new committee will concentrate on the realization that the brands of tomorrow are in fact technologies, and that effective technologies in the marketplace are well branded before they ever go to market. This leading edge committee will zero in on adapting your IP strategy to the changing marketplace, and the ins and outs of technology branding, brand messaging, and brand delivery systems.

All LES members are welcome to attend.

Moderator:
Weston Anson, CONSOR

 

7:00 am - 9:00 am

Continental Breakfast

7:30 am - 8:30 am

Consumer Products Sector Breakfast

7:30 am - 8:30 am

Emerging Enterprises Committee Meeting

7:30 am - 8:30 am

Valuation & Taxation Committee Meeting

8:00 am - 5:00 pm

One - on - One Networking Appointments

8:00 am - 5:00 pm

Exhibit Hall

8:30 am - 8:45 am

Welcome and Opening Remarks

Speakers:
Michael Samardzija, Dentons US LLP
Pamela Demain, Merck & Co., Inc.

8:45 am - 10:30 am

Plenary Session - The Evolution of Big Data and Its Impact on Emerging Business Strategies and Innovation

 

"Big Data is touching every aspect of our lives and the amount of collected data continues to grow rapidly. This session will explore how organizations across multiple industries are capitalizing on the trend. Our cross - industry panel of experts will discuss:

- New business models to commercialize Big Data
- New technological innovations in Big Data
- Collaborations leveraging Big Data
- The impact of Big Data on licensing"

Speakers:
Alex Dickinson, Illumina
Bryan Spielman, Medidata
Duane Valz, Google

Moderator:
David Ewing Duncan, Arc Programs

10:30 am - 11:00 am

Networking Break

11:00 am - 12:15 pm

Spotlight Plenary - Licensing Issues in the Data Age – An examination of impact on data - related research activity and industrial collaboration

The pervasiveness of big data’s impact is rapidly changing industries across the global economic spectrum.  In the academic space, this has translated into the growth of data - related research activity and the focus on producing graduates equipped with the data and computer science capabilities to disrupt and transform industries and our world.  The demand for a data science literate workforce and the growth of data related research activity opens the door for the exploring a new model of university and industry partnership.  This panel draws from Lehigh University’s experiences in the implementation of the Data X initiative which infuses data analytics and computer science across multiple disciplines through a strategic faculty hiring plan and a comprehensive approach to industry engagement.  This new model of industry engagement, economic development foci, and entrepreneurial activity creates an environment ripe for active partnerships and increased industry licensing.  The panel will discuss the spectrum of challenges and opportunities including in - licensing, the commercialization of data related intellectual property, and how data science is driving the expansion of academic and industry partnerships.

Speakers:
Christopher P. Keefe, M&A and Corporate Transactions Group
Daniel Lopresti, Lehigh University
John Matranga, OsiSoft
Lisa Getzler, Lehigh University

Moderator:
Cameron McCoy, Lehigh University

11:00 am - 12:15 pm

Spotlight Plenary - Wearables: Data - Driven Improvements to our Lives

 

We spend much of our daily lives connected with consumer electronics – whether it’s the smartphone in your hand or the wearable tracking your steps. We will cover IP, business development and commercialization strategies. 


Discussion:
- Big Data is essential “more data than we know what to do with” – how do you manage data and provide meaningful information?
- How do you integrate data, user experience and economic proof of device capabilities?
- What is the commercialization process for digital health/wellness products?
- We now have proliferation of so many internet - connected devices from smartphones and wearables. What types of challenges and opportunities do you foresee for the future of consumer electronics and healthcare?

Speakers:
Geoffrey Hoggard, Microsoft
John Gannon, Blue Spark Technologies
Sridhar Iyengar, PhD, Misfit

Moderator:
Kevin Spivak, Vierra Magen Marcus LLP

11:00 am - 12:15 pm

Spotlight Plenary - Cloud and Confidentiality – Protecting Big Data and Risks (Look at typical cloud computing arrangements and data security considerations.)

The panel will discuss considerations important in maintaining confidentiality while sharing information in the cloud environment and using cloud - based resources. This interactive panel/audience session will address methods of maintaining confidentiality in a cloud - based world.  Lessons learned, pitfalls and future issues will be highlighted and discussed by the panel and the audience.

Speakers:
Jeffrey C. Thompson, IBM
Rich Eskew, Accolade
Wendy Callaghan, Esq., AIG

Moderator:
Ian G. DiBernardo, Stroock & Stroock & Lavan LLP

11:00 am - 12:15 pm

Spotlight Plenary - M&A Bulking Up Via Deal - Making - - When is Big "Too Big," Is it Ever?

What strategies are employed in each company’s behind - the - scenes discussions to reach “the goal”? Build for revenue growth or earnings growth? For Wall Street or stockholders? Build to enhance a therapeutic lead area or to compensate for an upcoming revenue loss? Build for the risky next therapeutic wave on the horizon, or build for a more certain incremental, but profitable advantage? Build for geographic expansion or build to spin - off? How to value an early opportunity with promising but ambiguous potential vs. a later stage more expensive proposition? Who's to say a deal is overpriced? What is a winning deal structure?

Speakers:
Doug Giordano, Pfizer
Haresh Mirchandani, Johnson & Johnson Innovation
John Poulos, AbbVie
Tariq Kassum, M.D, Takeda Millenium
Tim Wright, Teva

Moderator:
Christine Fischette, Ph.D., BioLinkUp, LLC

12:15 pm - 2:00 pm

Luncheon: Deal of Distinction Awards & Business Meeting

The LES Deals of Distinction (DOD) Award is an annual Industry Sector award program recognizing worthy licensing deals that promote creative and innovative solutions to business issues involving contracts.

2:00 pm - 3:15 pm

LES Standards:  A New Paradigm in IP Transactions & Management

This workshop will provide an overview of the direction and status of a new LES initiative designed to improve the practice of IP transactions & management through the creation and adoption of LES standards.  Leaders of the initiative will be on hand to describe the program and answer questions.  Workshop participants will be asked to contribute their ideas to the direction of this new resource for the IP licensing & management community.

2:00 pm - 3:15 pm

European patents – a discussion on the latest news on filing, maintaining and litigating a patent in Europe

 

The panel will address the current "hot topics" around patenting in Europe:
• The EPO as PCT Authority – some statistics, procedure, benefits
• Recent measures to improve the PCT procedure and other procedures at the EPO for its users (automatic debiting of PCT fees, early certainty from search, global dossier, ...)
• Update on the future Unitary Patent – fee level, state of play with ratification of the UPC Agreement
• Competence of the EPO’s Board of Appeal vs. the future Unified Patent Court

Speakers:
Christof Mathoi, European Patent Office
David Kuttenkeuler, Boehmert & Boehmert Anwaltspartnerschaft MbB

Moderator:
Michael Samardzija, Dentons US LLP

2:00 pm - 3:15 pm

Corporate and Government Collaboration - How to Make it a Win - Win

Panel will present typical government - funded research programs and discuss the range of IP rights that can be negotiated.  The panelists will discuss examples and how they were able to identify the authorized government, university and corporate stakeholders and get the IP rights they needed to further their commercial goals.

Speakers:
Diane M. Hart, Argonne National Laboratory
Geoffrey Pinski, University of Cincinnati
Larry Schroepfer, CLP, Schroepfer Technology Law
Robert R. (Bob) Gruetzmacher, PhD, CLP, TechIAConnect & Associates

Moderator:
Louise Levien PhD, CLP, ExxonMobil Upstream Research Company

2:00 pm - 3:15 pm

The BioPharma Industry in 2015 - - As Good As It Gets

What a spectacular run:  170+ Initial Public Offerings on US exchanges since January 2013, raising $13 billion and constituting our longest "IPO window" by far.  Then there's the 500 acquisitions and asset purchases totaling more than $700 billion in 2014 - 15, plus $100 billion in alliances with announced payments of $50 million or more over the same period.  This session will review what we've accomplished, consider where we are now, and peak around the curve at what may lie ahead.

Speakers:
Mark Edwards, Bioscience Advisors

2:00 pm - 3:15 pm

RPX/Rockstar Deal: Deal of Distinction Award (In - depth)

2:00 pm - 3:15 pm

Post - Grant Proceedings as the New Frontline: Impacts and future trends of legislation and case law on licensing and innovation

To date, more than 1000 petitions for Post - Grant proceedings have been filed, mostly by defendants in co - pending patent infringement actions, until recently. There are now organizations tied to private funds seeking to invalidate patents covering pharmaceutical products, urging the Patent Trial and Appeal Board to invalidate patents on FDA approved drugs. This panel will address current trends in Post - Grant Review and case law related to the same. As well as how corporations as well as universities are responding to these proceedings and changes.

Speakers:
A. Antony Pfeffer, Kenyon & Kenyon LLP
Brian LaCorte, Ballard Spahr LLP
Karl Fazio, Pearson
Scott D. Marty, JD, PhD, Ballard Spahr LLP
Steven P. Klocinski, MasterCard

3:15 pm - 3:45 pm

Networking Break

3:45 pm - 5:00 pm

Defining Patent Quality – Distinguishing Between Validity, Value and Invention Quality

Patent quality has become more than a simple black or white definition of validity. Patent quality is often in the eye of the beholder. Some believe there is an inevitable market component or need associated with patent quality, which affects its defensive, licensing and sales value. This workshop will look at the changing definition of patent quality and the role that the PTAB and recent decisions like Alice have played. The workshop also will examine the influence of market forces like demand on patent quality and in distinguishing patent quality from value.

Speakers:
Bruce Berman, Brody Berman Associates
Christi Guerrini, University of Houston Law Center
Julia Elvidge, Chipworks
Sean Reilly, Askeladden. L.L.C./ the Clearing House Payments Company

3:45 pm - 5:00 pm

More Big Ideas: Multi - Party Alliances Speed Biomedical Products to Market

Have you observed with awe the GSK, J&J and Merck driven alliances to bring Ebola vaccines to market? How did they come together in a matter of a few months? How have they taken vaccines through the FDA and into patients so quickly? How have these diverse parties joined forces, apportioned IP rights, allocated diverse obligations faster than it often takes to conclude an NDA? Representatives of several of the parties: companies, the NIH, PATH, funders like the Wellcome Trust,  will present a session moderated by a long - time LES member, now Co - Director of Global Health Innovation Alliances at Duke University.

Speakers:
Ana Santos - Rutschman, LLM, ITPLab at Duke University
Catherine Hennings, Path
Julia Barnes - Weise, JD, CLP, ITPLab at Duke University
Julian Bouchard, GSK
Steven M. Ferguson, CLP, NIH Office of Technology Transfer
W. Mark Crowell, King Abdullah University of Science and Technology (KAUST)

3:45 pm - 5:00 pm

Top 10 Court Cases of 2015 Affecting Licensing

This workshop, which is consistently standing room only, will identify and discuss the top 10 court decisions during the past year affecting licensing, and Mr. Levine, a past - President of LES USA & Canada, will discuss the implications of these decisions on the drafting and negotiating of license agreements.

Speakers:
Russell Levine, Kirkland & Ellis LLP

3:45 pm - 5:00 pm

Cross Industry Licensing as a Driver of Consumer Product Innovation

Licensing professionals and company innovation managers typically have lots contacts within their own industry verticals, whether through trade association meetings or from product, materials or technology suppliers.  But, if everyone gets their ideas for new innovation initiatives from the same industry veterans, then everyone's new product ideas may begin to look quite similar; or if anything, not veer too far from industry norms.  This interactive educational workshop will provide attendees with a framework for identifying and collaborating with companies in industries other than your own, through Joint Development Agreements or other means on novel, breakthrough transformative technologies, trademarks or new business models which have been validated in other industries.  Through a combination of research studies, case study examples and facilitated group discussions, this workshop will focus on how licensing executives can help organizations be more innovative and deliver compelling highly differentiated new products or services to their target markets, while at the same time reducing risks.  Attendees will be asked to share their experience, expertise, and questions.

Speakers:
Gene Slowinski, Rutgers University Business School - Newark and New Brunswick Campuses
Keith Lerner, JaMax Business Ventures Consulting LLC
Paul Walker, Clorox
Rajesh V. Potineni, Ph.D., PepsiCo Beverages

3:45 pm - 5:00 pm

LES Standards:  A New Paradigm in IP Transactions & Management - REPEAT SESSION

This workshop will provide an overview of the direction and status of a new LES initiative designed to improve the practice of IP transactions & management through the creation and adoption of LES standards.  Leaders of the initiative will be on hand to describe the program and answer questions.  Workshop participants will be asked to contribute their ideas to the direction of this new resource for the IP licensing & management community.

6:30 pm - 7:30 pm

Exhibit Hall Reopens

6:30 pm - 10:00 pm

LES 50th Anniversary Celebration

 

Cocktail Hour: 6:30 pm - 7:30 pm | Westside Ballroom - 5th Floor
Sit - Down Dinner: 7:30 pm - 10:00 pm | Broadway Ballroom - 6th Floor

Wednesday, October 28, 2015

7:30 am - 9:00 am

Continental Breakfast

8:00 am - 8:30 am

Nomination Committee Meeting

8:00 am - 9:00 am

Aerospace and Transportation Committee Meeting

8:00 am - 9:00 am

Women in Licensing Breakfast

8:00 am - 9:00 am

CEEM Sector Business Meeting

8:00 am - 11:30 am

Exhibit Hall

8:00 am - 3:15 pm

One - on - One Networking Appointments

Thirty - minute meetings by appointment only. Make appointments using the Mobile App.

9:00 am - 10:15 am

Diagnostics:  Patent Eligibility and the Industry Perspective

The seminar will cover and provide a discussion of the following topics and will include both industry and university perspectives: (a) Patent eligibility of diagnostics in the US in view of recent US case law, situation in other jurisdictions; (b) Filing strategies for the protection of biomarkers and diagnostics in the US and worldwide; (c) Claim strategies for satisfying current US patent eligibility; (d) Data, claims and development status that makes a biomarker or a diagnostic interesting to industry; (e) Ways in which the licensing professional should evaluate new diagnostic inventions; (e) Patentability of different types of biomarkers (case studies).

Speakers:
Dr. Sadhana Chitale, New York University
Melissa Hunter - Ensor, Ph.D., Saul - Ewing LLP
Monte Wetzel, Roche Molecular Diagnostics

Moderator:
Mark Messenbaugh, SomaLogic

9:00 am - 10:15 am

Developing a Uniform NDA for LES

Much time is often lost in the initial licensing process because of delays in negotiating and signing Non - Disclosure Agreements (“NDAs”), and LES formed a working group to create a Uniform NDA that we believe will help speed up this portion of the licensing process. This session will provide participants with the new IUGI Uniform NDA document that has resulted from months of diligent work by a team of experienced LES members who have collectively handled thousands of NDAs. The presenters will discuss the new Uniform NDA and the process that led to their recommendation of this new document.

Panelists:
Halina Dziewit, Squire Patton Boggs (US) LLP
Jay Reilly, Saul Ewing LLP
Julie Watson, Marshall Gerstein & Borun LLP
Paul A. Stewart, Pasco Ventures

Moderator:
Matthew Raymond, Kaenn Technologies;

9:00 am - 10:15 am

High Tech Sector Business Meeting

9:00 am - 10:15 am

Valuation from the Inside Perspective

 

Please join us for a discussion with several experts who value technology – for potential and actual intangibles – to make decisions such as:

In the R&D Phase,

  • Should we make - buy - license  (when there is a recognized science/engineering/technology gap)? What is the cost/value for each decision?
  • Should we collaborate? What is the cost? What is the value?
  • Should we halt the project? What is the value of the mid - project intangibles? Negative knowhow?

When the IP has been identified, how does the value inform the decision makers of the potential outcome of the various options?

  • Do we license it?
  • Do we keep it for ourselves alone?
  • Do we sell it?
  • Do we use it as the basis for a collaboration?

And other questions as well. It is hoped that we will be able to include small group discussions on the topic toward the end of the session.

Speakers:
Alex Tang, Gas Technologies Institute
Matthew Rappaport, IP Check Ups

Moderator:
Ada Nielsen, Foodexus LLC

10:15 am - 10:45 am

Networking Break

10:45 am - 12:00 pm

Resources for Developing Industry - University Partnerships to Drive Innovation

In this session, panelists representing organizations that are involved in promoting Industry - University collaborations will discuss best practices, problem areas and issues related to licensing of innovations that arise from a successful collaboration. They will discuss some of the resources that are available for parties in preparing for a collaborative discussion.

Speakers:
Christopher Molineaux, Pennsylvania BIO (PABIO)
James Barrood, New Jersey Tech Council (NJTC)
John Blaho, City Universities of New York
Lou Kassa, Baruch S. Blumberg Research Institute, and Hepatitis B Foundation
Stephen J. Susalka, Association of University Technology Managers (AUTM)

Moderator:
Matthew Raymond, Kaenn Technologies
Yatin Karpe, Lehigh University

10:45 am - 12:00 pm

Licensing Standard Essential Patents

The panel will discuss factors currently being considered in defining a FRAND royalty rate, ways in which standard setting organizations and patent pools can work together to address the FRAND issue and licensing in an efficient way, and enforcement of standard essential patents to avoid distortions on the market, including the use of injunctions against unwilling licensees.

Speakers:
Carter Eltzroth, DVB Project
John Paul, Finnegan

Moderator:
Roberto Dini, LES (Licensing Executives Society) Italy

10:45 am - 12:00 pm

Improv Theater:  Where is my Crystal Ball when I NEED it!

 

Please join us for another enactment of “real life intersecting with inventions, universities and business.” 

This time we feature a play in three acts where an assignment of patents, trade secrets, and confidential information is made to a start - up.

Act 1 – Big Company Carve - out
Act 2 -   Trade secrets:  Differing views on trade secrets between the business world and the world of academia
Act 3 – Time to work out

Both Acts 2 and 3 show the different worlds of the practical chemical engineer, accustomed to scaling up bench scale experiments and developments. The professor is accustomed to applying for grants and performing work against those monies. Understanding gross margins, EBITDA, customers, returned goods, and regulatory regimes is not for him. The chemical engineer is accustomed to finding ways to increase yield, reduce cost and produce merchantable product that is sold – and kept sold.

Please join us to see how this turns out.

Speakers:
Ada Nielsen, Foodexus LLC
Brian O´Shaughnessy, RatnerPrestia
Connie Cleary, Brookhaven National Laboratory
John Somich, BP
Louise Levien PhD, CLP, ExxonMobil Upstream Research Company
Timothy Kinn, CLP, ExxonMobil Upstream Research Company

10:45 am - 12:00 pm

Addressing Payers' Heightened Aggressiveness in Managing Price and Access in Forecasting, Valuations, and Deal Terms

While the Affordable Care Act became law five years ago, it will not be until 2020 before all the provisions of the law will be in effect.  The landscape is also changing in ex - US markets. Will your methodologies for forecasting, setting milestones, and conducting due diligence keep pace with the changes?  Hear about the shifting landscape from payers who are facing cost constraints in all markets and what you need to do.  Take advantage of the guidance or challenge the perspective of a C - suite payer who early on in his career was in a biotech company.

Speakers:
Michael S. Sherman, MD, MBA, MS, Harvard Pilgrim Health Care
Paul Gallagher, MBA, Compass Strategic Consulting, Inc.
Sam Rasty, Shire Pharmaceuticals

12:15 pm - 2:00 pm

IUGI Sector Business Luncheon

12:15 pm - 2:00 pm

High Tech Sector Luncheon - LES Policy & Standards

Discussion of LES Policy & Standards

Speakers:
Bill Elkington, Rockwell Collins, Inc.
Phil Hartstein, Finjan Holdings

12:15 pm - 2:00 pm

CEEM: Sector Luncheon

12:15 pm - 2:00 pm

The Future is Now:  Dealing in a Transformed Healthcare Environment - Luncheon

 

The long term symbiotic relationship between Pharma and Biotech has been driven by two seeming inexhaustible factors: Pharma’s quest for innovation and Biotech’s thirst for non - dilutive cash. Despite some increased complexity in deal structure and temporary fluctuation in market conditions favoring either buyers or sellers, this relationship has existed for so long that it is easy to take its permanence for granted.
Seemingly suddenly, however, a host of forces in science, technology, finance and the market environment are poised to act synergistically to cause permanent disruption to this long standing relationship.  Among these:  a number  of regenerative medicine platforms and cell and gene therapies nearing or passing PoC, major breakthroughs in personalized medicine, as well as an increasing focus on rare diseases and autologous care delivery (thus diminishing the advantage of traditional scale).
While Pharma’s thirst for innovation remains insatiable, Biotechs, especially those clearing the Proof of Relevance hurdle, increasingly view Pharma as just one of many options to bring the benefit of that innovation to patients.  Perhaps more importantly, investors in some of these companies are uninterested in traditional “pharma deals” as they now see Pharma as a value - stripping (and unnecessary) “middleman.”  The result is a meaningful disruption in some long held assumptions around cost of capital.  Importantly, this disruption, while obviously subject to market fluctuations, is likely to remain permanent.   The recent Juno and Celgene deal is one of what will be many examples of the changes this will create.  Consequently, if Pharma wishes to retain a prominent place in the market for scientific innovation, they must urgently rethink their long standing assumption that such innovation will always be available for purchase.  Instead, Pharma must scrutinize every aspect of their innovation sourcing strategy to ensure that access to the fruits of scientific progress remains possible.  Simultaneously, their business model faces an urgent need to evolve to remain relevant to care models of the future, which begins today.

Speakers:
Ed Saltzman, Defined Health

2:00 pm - 3:15 pm

IP Issues in Transfer Pricing

As our companies and clients increasingly operate across international boundaries, how do we best navigate the busy intersection of IP, valuation, tax, and transfer pricing issues?  With reference to their past experiences, our panelists will address critical issues related to intercompany IP transfer including – but not limited to – strategies for transfer price determination and documentation, regulatory agency review, potential implications for peripheral company operations, and lessons learned in addressing these issues.  While this presentation will provide veteran perspectives from our legal and financial experts, we will also invite questions and comments from an audience that is likely navigating similar waters.

Speakers:
Christopher P. Murphy, Skadden, Arps, Slate, Meagher & Flom LLP
Michael J. Lasinski, 284 Partners, LLC

2:00 pm - 3:15 pm

Living with the Deal Managing the Relationship Once the Signing Party is Over

The panel will discuss important aspects of maintaining the relationship between the parties to a deal once the negotiating teams have left the stage and the real work begins.

Speakers:
Bob Payne, IP Licensing Advisors, LLC
Bruce Orr, Grant Thronton LLP
John Somich, BP
Timothy Kinn, CLP, ExxonMobil Upstream Research Company

2:00 pm - 3:15 pm

Sports & Entertainment: Music Disruption: Digital Licensing Landscape

The recorded music industry has been the canary in the digital coal mine since the advent of Napster 1.0 in 1999.  Hear from a panel of experts who will explore fundamental topics that surround the disruption from CD - based consumption to a digital streaming world:

How does one acquire the needed rights for a new music service?  We will discuss the DMCA, statutory licenses, and direct deals.

What have we learned from fifteen years of upheaval in revenue models, consumer experiences and distribution?

How can we best navigate the current and proposed changes in US copyright law and music licensing, set for end of 2015? 

What are the biggest opportunities and challenges in the next 1 - 3 years?

Speakers:
Deborah Newman, Esq., MUSICSTRAT
Gary R. Greenstein, Wilson Sonsini Goodrich & Rosati, P.C.

Moderator:
Vickie Nauman, CrossBorderWorks Consulting and Advisory Firm