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The 2011 IP100 Executive Forum Program
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The IP100 Executive ForumThe 2011 IP100 Executive Forum
April 7-8, 2011
New York, NY

Meeting Home Program Valuation Workshop Speakers Presentation



10:00am – 11:00am Registration
11:00am – 11:15am Welcome Remarks
11:15am – 12:30pm Luncheon & Keynote Speaker: Marshall Phelps, former Corporate Vice President, MICROSOFT CORPORATION
12:30pm – 12:45pm Networking Refreshment Break
12:45pm – 1:45pm PANEL #1: The 25% Rule is Dead; Long Live the 25% Rule
In their January 2011 Uniloc v Microsoft decision, a Federal Circuit Court of Appeals panel decided "the 25 percent rule of thumb is a fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation."  In an industry that has accepted the 25% rule for more than a decade, this is a fundamental change.  This session will discuss:
  • Did the Federal Circuit get it right?  
  • What impact will this ruling have for tax valuations, licensing discussions, and litigation damages cases?  
  • What will this mean for the licensing executive?

Daniel McGavock, Vice President, Intellectual Property Practice Leader, CHARLES RIVER ASSOCIATES

Jason Albert, Associate General Counsel for IP Policy & Strategy, MICROSOFT CORPORATION
William Elkington, Senior Director, Intellectual Property Management, ROCKWELL COLLINS
Lou Faber, Associate General IP Counsel, XEROX CORPORATION
Don Merino
, Senior Vice President of Licensing, INTELLECTUAL VENTURES

1:45pm – 2:00pm Break to Roundtables
3:00pm – 3:30pm Networking Refreshment Break
3:30pm – 4:30pm PANEL #2: Valuation of IP in Collaborations
There are many varieties of collaborations, including companies in the same space, players in different parts of the value chain, non-profit and for-profit organizations, a set of companies, and other structures.  One size does not fit all.

Collaborations typically assume that all parties contribute to the effort. Money's value is obvious; more frequently there is the challenge of valuing background information contributed to the project such as patents, trademarks, copyrighted materials, know-how in experienced personnel, reports, and data.  Then there are also the challenges of ownership and valuation of project information if the project is successful, successful to the point of being disruptive, or stopped before completion. 

During this session, panelists will discuss:

  • What kind of collaborations they have participated in and observed?
  • What role is played by collaborations in their industry, and why there are so few or many?
  • When and how they value background information contributed to the relationship?
  • How and when they determine the value of the resulting or project or foreground information?
  • How does all of this translate into licensing terms?
  • How do they determine if the collaboration has been successful?

Ada Nielsen
, Director, Intellectual Asset Strategy for Exploration and Production Technology, BP AMERICA,INC.

Marc Alexander, Director – Technology Licensing Group, INTEL CAPITAL
Kathleen Denis, Associate Vice President of Technology Transfer, THE ROCKEFELLER UNIVERSITY
Lesley Millar, Director, Office of Technology Management, UNIVERSITY OF ILLINOIS AT URBANA-CHAMPAIGN
Charlotte Rutherford, Deputy General Counsel for Intellectual Property, SCHLUMBERGER LIMITED
Marc Schwartz,
Chief Operating Officer, BOB MACKIE DESIGN GROUP, LTD.
Ashley Stevens, Special Assistant to the VP of Research & Senior Research Associate, Institute for Technology Entrepreneurship and Commercialization School of Management, BOSTON UNIVERSITY

4:30pm – 4:45pm Break to Roundtables
5:45pm – 6:00pm Day One Summary and Closing Remarks
6:00pm - 7:00 pm Cocktail Reception
7:30 pm Dinner
McCormick & Schmick's
1285 Avenue of the Americas

Featured Speaker:
Mervyn Turner
, Chief Strategy Officer, MERCK & CO., INC


8:30am – 9:30am Networking Breakfast
9:30am – 10:00am Welcome & Day One Recap

10:00am – 11:00am PANEL #3: Valuation of IP in M&A Deals
As companies sell, divest or purchase IP assets or acquire businesses, proper valuation of the overall asset package or its constituent parts often becomes integral to the prospective deals. This panel will discuss valuing brands, trademarks, know-how, trade secrets, copyrights, and patents. The panel will also address various models of how an IP professional within a company works with its M&A team, which usually resides in the Finance function. The panelists will also discuss when they drive deals and what type, and when and how they support.

Some of the questions will be as follows:

  • What types of M&A transactions do you typically get involved in and how?
  • What is the division of roles and responsibilities between the IP team and the M&A team in your company?
  • What role does the IP valuation play, IF any, in a straight M&A deal such as an acquisition of a business or a divestiture of one?
  • Do you differentiate between purchasing an asset from a long-standing concern vs. an early-stage business and how?
  • Do you look at the ways in which IP from the buying company or the target company can be combined in novel ways or exploited to launch new offerings and/or products?
  • Do you ever buy assets purely for their assertion value?

Tanya Moore, GM, Outbound IP Licensing, Corporate Intellectual Property & Licensing, MICROSOFT CORPORATION

Robert Colao, Director, Outbound Licensing - IPR, NOKIA
Rimma Driscoll, Director of Alliances, Licensing and Acquisitions, THE PROCTER & GAMBLE COMPANY
Peter Holden, Head, IP Investment Group, COLLER CAPITAL
Lawrence Senour, Executive Director, Corporate Development, MERCK & CO., INC.

11:00am – 11:15am Break to Roundtables
12:15pm – 1:30pm

Networking Luncheon

Rep. Bob Goodlatte (R-VA)
, Chair, Subcommittee on Intellectual Property Competition, and the Internet Committee on the Judiciary, U.S. HOUSE OF REPRESENTATIVES

1:30pm – 2:00pm Summary and Closing Remarks
2:00pm – 5:00pm

Structuring the "Deal" Process to Unlock IP Value
(Optional Workshop)

This 3-hour interactive session will allow participants to continue with key thoughts and concerns raised during the three panels from earlier in the meeting.  Additionally, we will supplement those discussions with an open discussion on deal structures and processes that allow IP professionals and deal makers to isolate the value of intellectual property through unique deal processes and structures.  We will also invite discussion on the increased liquidity in the deal marketplace for quality IP.

Key Take Aways from this Session Include:

  • Concluding thoughts, take-aways and concerns about IP valuation, including ideas for future IP 100 valuation topics
  • Ideas on how deal processes can be implemented to isolate IP value from deal value
  • Understanding of how liquidity is growing (and may continue to grow) for quality IP
Organized and Led by:
Robert Goldman, Principal, CRA INTERNATIONAL
Michael Lasinski, Managing Director, 284 PARTNERS

William Elkington, Senior Director, Intellectual Property Management, ROCKWELL COLLINS
Tanya Moore
, General Manager, Outbound IP Licensing, Corporate Intellectual Property & Licensing, MICROSOFT CORPORATION
Ada Nielsen
, Director, Intellectual Asset Strategy for Exploration and Production Technology, BP AMERICA, INC.

5:30pm – 6:30pm Networking Reception