LES Foundation | LESI | Print Page | Contact Us | Sign In | Join
LES 2016 Spring PanAm Meeting Preliminary Schedule
Share |
2016 Spring Meeting
Meeting Home Registration Schedule at a Glance Register Online
Hotel Information Sponsors Off-Site Events

LES 2016 Spring PanAm Meeting Preliminary Schedule

Theme: Energize Your Licensing: Solutions Across The Americas
MONDAY, APRIL 25, 2016
11:00 am - 5:00 pm Final Round LES Foundation 2016 International Business Plan Competition Berkeley Research Group
700 Louisiana Street
Suite 2600
Houston, TX 77002 
9:00 am – 3:00 pm
*Bus Departs Hotel at 7:15 am*
ExxonMobil Site Visit and Workshop on Premises
Big Data and Applications/Challenges in the Energy Sector
Timothy F. Kinn, IP and Licensing Associate, ExxonMobil
Thomas Halsey, Chief Computational Scientist, ExxonMobil Upstream Research Company
Lapi Dixit, Chief of Products & Enterprise Software, Landmark Software and Services
ExxonMobil Houston
22777 Springwoods Village Parkway
Spring, TX 77389
10:30 am - 4:00 pm
*Bus Departs Hotel at 9:15 am*

JLABS at TMC Site Visit and Concurrent Workshops on Premises
Workshop: Energizing Your Patent Strategies: How to Leverage IP Landscapes to Gain a Competitive Advantage
*2.75 hours of MCLE approved
Shayne Phillips, Senior IP Manager, Intellectual Asset Management, Halliburton
Marc S. Kaufman, Partner, Reed Smith
This workshop will give attendees insights into how to use off-the-shelf patent landscaping tools to help them gain a competitive advantage with regard to their IP strategies. At least three third-party patent landscaping search tools will be shown, and others will be mentioned where applicable. A real-world IP landscape work product, consisting of thousands of patent records, will be walked through from beginning to end, with valuable insights and points to look out for to be highlighted along the way. Finally, the mechanics of putting together your own IP landscape presentation for your formal audience will be discussed. The workshop has been designed by experienced LES members, both from a corporate Intellectual Asset Management group function and from outside counsel. There is no prerequisite for the course. It is designed for people who help develop, manage and monetize technologies of all kinds, both for lawyers and non-lawyers (whether in-house or with outside counsel).
The course is divided into the following topic areas:
• Learn what an IP landscape is, types of landscapes, and what they are/are not
• Requesting a landscape on behalf of your organization or of a client (audience, purpose, etc.) Beginning a landscape on your own (real-world example will be illustrated)
• Analyzing landscape outputs for strategic and IP planning purposes
• Putting together a final IP landscape work product/presentation for your audience
• Questions to ask third parties when commissioning a landscape from a third party provider
The course will not make you an expert, but you will learn how to begin working on your own towards creating IP landscapes for your organization or for your customers. It will also give you the background knowledge required to commission a landscape from a third party provider that will meet or exceed your expectations.
Workshop: Getting a Workable Contract to Signature Sooner
*2.75 hours of MCLE approved
DC Toedt, ‎Law Office of D. C. Toedt III and Adjunct Professor, University of Houston Law Center
Susan Stoddard, Senior Licensing Manager, Mayo Clinic Ventures
Jonathon Hance, Attorney, Bracewell Law
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.

Texas Medical Center
Johnson & Johnson Innovation Institute
2450 Holcombe Blvd, Suite J
Houston, TX 77021
6:00 pm - 7:30 pm Welcome Reception - Celebrate World IP Day with LES
Opening Remarks:
Hope Shimabuku
Regional Director, USPTO – Texas Regional Office
Margarita Competition
Sponsored by: IPFC and Vinson & Elkins, L.L.P.
Fountain/Ultimate Ransom
Lobby Level
8:30 am Opening Remarks
LES Chairman of the Board:
Jeffrey Whittle
Phantom Ballroom
Lobby Level
8:45 am - 10:15 am Plenary Session
Innovating the Unknown
Speaker: Scott Jewett, Element-Y Engineering
Phantom Ballroom
Lobby Level
10:15 am - 10:45 am Networking Break Fountain/Ultimate Ransom
Lobby Level
10:45 am - 12:00 pm Concurrent Spotlight Sessions
Wireless Charging – Electric and Parallel Hybrid Vehicles and the Hand Held Devices Inside– Emerging Technology, IP and Standards
Session Description: Hear from experts and practitioners representing various sectors of the wireless charging about the latest intellectual property licensing trends.
Topics discussed by the panel include:
o Quick review of the drive for vehicle electrification and technologies available for wireless charging for vehicles.
o How does the industry need for interoperability impact the standard setting and for the industry associations and the role of Society of Automotive Engineers?
o What is the impact of growing importance of EV/PHEV in global markets, such as China, on IP development and Global standards setting?
o How does IP contribute to the developing global vehicle standards?
John Carney, Director Commercialization & Licensing, Delphi Automotive Systems, LLC
David Schatz, Vice President Business Development, WiTricity
Michael Fluhler, Partner, Fishman Stewart PLLC
11th Floor
The Defend Trade Secrets Act
Session Description: The panel will include a discussion of proactive tips for protecting trade secrets as well as options to address trade secret misappropriation in the U.S. The panel will also discuss the effect of proposed legislation with regard to trade secret litigation. When the panel concludes their presentation, they will present a hypothetical situation for roundtable discussion.
James Pooley, former Deputy Director General of WIPO
Kurt Jones, Celanese International Corporation
Gary Haag, Gary L. Haag Consulting
Nicki Kennedy, Associate, Kilpatrick Townsend & Stockton LLP 
Lobby Level
Innovating the Unknown - Innovative and Fresh Ideas for Licensing Products and Developing "White Space" Growth Opportunities
Session Description: Where do you find the next blockbuster product or idea? How do you identify the next rocket startup and protect it? Expect a dynamic discussion in this session on how to create, protect and bring to market innovations in markets where no product has tread before. We will discuss where to find these growth opportunities, the intellectual property protection issues, ways to drive meaningful innovation, and how to bring these unique products to market.
Joseph M. Casino, Partner, Wiggin and Dana
William Cory Spence, Attorney, SpencePC
Ted Curtin, Chief Marketing Officer, LMCA 
Richard Baker, President, New England Intellectual Property, LLC
The Prop Shop
The Gallery
12:00 pm - 1:30 pm Luncheon with Featured Speaker
Powering Growth
Keynote Speakers: Rosemarie Truman, Founder and Chairwoman, The Center for Advancing Innovation, Inc.
Sourav Sinha, Founder and CEO of Oncolinx
Special LES Standards Update with remarks given by Phil Hartstein
Phantom Ballroom
Lobby Level

2:00 pm - 3:15 pm Concurrent Spotlight Sessions
Bad Faith Assertions
pending 1 hour of Ethics MCLE
Session Description: Ms. Munck will open the discussion with an example enforcement action against "bad faith assertion" (MPHJ Matter). Activities addressed included (among others) (i) no assertion without a good-faith basis, including adequate due diligence on the accused infringer (ii) 'reasonable specificity' in infringement claims, (iii) disclosure of ancillary Court and USPTO questions of validity and (iv) support for proposed license fees.
Senator Nichols will then discuss his personal background in technology development, patenting and licensing and assignments. He will address passage of Texas law (effective 9/1/15) "Bad Faith Claims of Patent Infringement" which he sponsored and the logistics associated with same.
Mr. Skarvan will then provide a summary of laws regarding bad faith infringement claims issued or pending in over 30 states. He will address issues that Licensors may consider when asserting patents in different states.
Peter Harter then will lead a closing discussion of international issues Licensors may consider when asserting patents outside the USA. He will wrap up the discussion with an overview of proposed LES standards and other policy considerations for the USA and elsewhere.
Suzanne Munck, Deputy Director, Chief Counsel for Intellectual Property in the Office of Policy Planning at the US Federal Trade Commission
Robert Nichols, Texas State Senator
Dennis C. Skarvan, Deputy General Counsel, Caterpillar’s law and public policy division
Peter Harter, Founder, The Farrington Group
Moonshots – Accelerated New Drug and Vaccine Developments
Session Description: Can you fill the unforgiving minute with 60 seconds of development run? Learn about accelerated discovery programs for cancer drugs and Zika vaccines, and the infrastructure for rapidly commercializing these findings. You’ll hear about MDAnderson Cancer Center’s Moon Shots program and the University of Texas Medical Branch’s Sealy Center for Vaccine Development – one of only two World Health Organization Collaborating Centers for Vaccine Research, Evaluation and Training on Emerging Infectious Diseases in the Western Hemisphere. Panel participants from the FDA and the pharmaceutical industry would share perspectives on accelerated regulatory options. The panel features inspired scientific minds and leaders of the efficient use of development time revolution. You’ll walk away with ammo useful in accelerating your own life science IP development efforts.
Phil Jones, Head of Drug Discovery, Institute for Applied Cancer Science, MD Anderson
Pei-Yong Shi, I. H. Kempner Professor of Human Genetics, Professor, Department of Biochemistry & Molecular Biology, University of Texas Medical Branch
Leigh Marcus, Medical Officer, Division of Oncology Products 2, Office of Hematology and Oncology Products, Office of New Drug Center for Drug Evaluation and Research, U.S. Food and Drug Administration
Karthika Perumal, CLP, Dentons US LLP
Internal Valuation and Competitive Intelligence
Session Description: Please join us for a discussion with several experts who use/provide competitive intelligence as a major element in valuing technology & IP.
• Are you entering a new market (for you) with established market players?
• Are you creating a new market?
• Are you looking to improve your existing positioning?
Can you use existing agreements (in addition to royalty rates and other tools) to determine competitive market moves?
What other tools/techniques are there that you need to understand?
Without real-time information about competitive forces in any existing or prospective market, it is possible to make big, strategic valuation/pricing errors?
Please join us for a robust discussion – and small group discussions on this topic towards the end of the session.
David Jarczyk, President and CEO, ktmine
Alex Tang, Licensing and Commercialization Manager, Gas Technology Institute
Ada Nielsen, Chief Executive Officer of Foodexus, LLC

3:15 pm - 3:45 pm Networking Break
Sponsored by: Duff & Phelps
3:45 pm - 5:00 pm Concurrent Spotlight Sessions
Oil & Gas v. Life Sciences: A Comparison of IP Valuation and Licensing Best Practices Across Industries
Session Description: Hear top in-house, legal and valuation professionals discuss key differences that impact licensing in the Oil & Gas and Life Sciences industries. Learn best practices for crafting your license agreements in these industries and the impacts they have on license value and potential future damages.
Wes Anson, Chairman, CONSOR Intellectual Asset Management
Scott Weingust, leader of SRR’s Intellectual Property Valuation practice, Stout Risius Ross, Inc. (SRR)
Albert Shung, Chief IP Counsel, Total Refining & Chemicals
Emmanuelle Schuler, Head of JLABS@TMC
Erin Ator Thomson, Counsel, Vinson and Elkins, CoChair – IPO Licensing Committee
Energizing Pan Am License Closings and Payments: IP Business in Brazil and Mexico
Session Description: This panel will discuss opportunities and related strategic issues in cross-border transactions when expanding into Pan Am countries from the USA/Canada. "Common deal needs" for expedited patent procurement, project finance, payment remittance, extended secrecy, and IP tax optimization will be addressed, using Mexico and Brazil as examples. Panelists will distill complex factors to provide guidance for decisions related to technology development investment and IP licensing in Mexico and Brazil.
Virginia Herrera Lario, Manager of Science & Technology Knowledge Management, PEMEX, Mexico
Jesus Hernandez, Patent Attorney, USPTO Office of Policy and International Affairs
Andreia de Andrade Gomes, Head of Intellectual Property and Fashion Law practice group, TozziniFreire, Brazil
Hector Chagoya, Partner, Director of Patents and Technology, Becerril Coca & Becerril, Mexico
Tom Pruitt
New Deal Models for Creating Efficiency in Academic/Industry Collaborations
Session Description: There are important differences in culture between academia and industry. While industry desires to identify new sources for innovation and increase competitive advantage to grow shareholder value, the mission at higher education institutions is to enable faculty and students to learn, advance, and share their knowledge with society. Join our panelists, who have experience in both academia and industry, in an interactive discussion on "New deal models for creating efficiency in academic/industry collaborations”. Following the panel discussion, we will break into facilitated roundtable discussions on the topic with the tables all reporting back on their findings at the end of the session.
Vasiliki Anest, Ph.D., Sr. Director, Corporate Collaborations, USC Stevens Center for Innovation
Tim Kinn, Commercial, IP and Licensing Associate, ExxonMobil Upstream Research Company
John Gebhard, Ph.D, Senior Executive Director, Office of Technology Commercialization, University of Texas Health Sciences Center at San Antonio
Amany Kandil, Associate Director Licensing, Merck
Jennifer Dyer
6:30 pm - 9:00 pm LES Gala Dinner at the Houston Museum of Natural Science  


8:30 am Opening Remarks
LES Chairman of the Board:
Jeffrey Whittle
8:45 am - 10:15 am Plenary Session
Fueling Ideas
Speaker: Virginia Herrera Larios - Administration Manager of Scientific Knowledge and Technologies at PEMEX
10:15 am - 10:45 am Networking Break
10:45 am - 12:00 pm  Concurrent Spotlight Sessions
Extincting Dinosaur or Re-emerging Phoenix: The Future Role of NPE in Patent Market and Patent Litigation
Session Description: PATB petitions, the Alice decision, LOTNET, and patent reform bills ... It’s certainly an understatement to say that NPEs have been facing fierce headwinds; they have been besieged by forces from legislative campaign, market mechanism, and court rulings. However, boiling down to the effects of all of these, the evidences are mixed or even contradicting, leaving all of us wondering whether NPEs are on the verge of extinction or have adapted, evolved, and re-emerged. On the one hand, we saw that 75% of the challenged patents failed to survive PTAB, patent market depth has been reduced dramatically, and the stock prices of publicly-traded NPEs. NPEs plummeted 50% to 95%. On the other hand, we were told that NPE lawsuits reached another record-high in 2015 and that patent price may have been on an upward trend.
So how have NPEs actually fared so far? What are the roles of NPEs and what are their true effects on patent transactions and lawsuits? What are the potential effects of SCOTUS decision in Cuozzo Speed and the patent reform bills pending in Congress? Most importantly, if NPEs are here to stay, what are the strategies for operating companies to deal with NPEs in the future? Our panel will bring together a group of industry insiders to address these issues, explore solutions, and outline strategies. The panel, moderated by a well-published IP economist and financial analyst, will present balanced views from panelists practicing in different IP segments, including “one of the most notorious patent trolls in America”; the CEO of a network created by certain frequent targets of NPE lawsuits to preempt NPEs; a veteran IP licensing executive who has monitored NPEs for years; and a partner of a well-known law firm that represents mostly patent owners and NPEs.
Kevin Burgess, PhD, Principal, McKool Smith
Kevin Klein, PhD, PVP & GM/Products and Licensing, VORAGO Technologies
Kurt Brasch, Senior Patent Licensing Manager, Google
Erich Spangenberg, CEO, nXn Partners
Jack Lu, PhD, CFA, Partner & Chief Economist, IPMAP, LLC
Public Policy Update – LES Appearances on the Hill and in the Courtroom
Session Description: LES continues to be active in IP-related public policy debates. Rachel Kreppel, Purdue Pharma, and Chair of the LES Public Policy Committee, will moderate a panel discussing the Committee’s activity. The panel will include LES Chairman-elect, Brian P. O’Shaughnessy, discussing his recent testimony before the Senate Committee on Small Business and Entrepreneurship on the effects of patent law changes on the small business community.
Other panelists will discuss recent LES activity as amicus curiae at the Supreme Court, including Dan Stringfield, Steptoe & Johnson, on the LES brief in Halo Electronic, Inc.. v. Pulse Electronic Inc. and Stryker Coproration v. Zimmer, Inc. (standard for enhanced damages for willful infringement); and Gary Fedorochko, Banner & Witcoff, on the LES brief in Cuozzo Speed Technologies v. Lee (standard of review in Inter Partes Review proceedings). Both firms prepared the briefs pro bono, and under the direction of the LES Board.
Brian P. O'Shaughnessy, Shareholder, RatnerPrestia
Daniel Stringfield, Of Counsel, Steptoe & Johnson LLP
Gary D. Fedorochko, Shareholder, Banner & Witcoff Ltd.
Rachel Kreppel, Senior Assistant General Counsel, Purdue Pharma, Chair of the LES Public Policy Committee
The Value of Creative Innovation Strategies 
Session Description: Hear from leaders in the innovation space discuss new methods for innovating in a rapidly changing global marketplace. Learn new ways to drive and create transformative innovation within your organization. The panel will discuss current models of real time innovation with the associated legal and value implications.
Darius Sankey, General Partner, Accelerate-IT Ventures
Greg Austin, Vice President, ThoughtWorks
Ted Curtin - EVP Marketing and Innovation, ProdigyWorks
Justin Barnes, Counsel, Troutman Sanders
Justin Lewis, Managing Director, Ocean Tomo
12:00 pm - 1:30 pm Luncheon with Featured Speaker
Igniting Solutions
Keynote Speaker: Brad Cochrane - Marketing Strategist, Story First Marketing
2:00 pm - 3:15 pm
Concurrent Spotlight Sessions
Judicial Viewpoints: Eastern District Judges
Session Description: A panel of Federal District Court Judges discuss what they view as the current topics in patent law and related intellectual property areas.
John D. Love, Magistrate Judge, Eastern District of Texas
K. Nicole Mitchell, Magistrate Judge, Eastern District of Texas
Louis Brucculeri, Partner, Blank Rome, LLP
SPACE RACE Innovation Challenge – Building an Innovation Ecosystem
Session Description: You have an incredible portfolio of discovery. Now how do you connect to experienced, consensus-building leaders who will place your IP on a sustainable trajectory towards the market? How do you avoid engine failure on your mission to Mars? Learn from experts who have spent decades building programs to seed successful, high-risk technology ventures. Understand the models for cultivating your own ecosystem and launching products into profitable orbits. Life science, device, and high-technology perspectives.
Rosemarie Truman, Founder & Chairwoman of the Center for Advancing Innovation
Atul Varadhachary, MD, PhD, Managing Partner at Fannin Innovation Studio
Ticora Jones Ph.D., Division Chief, Higher Education Solutions Network, U.S. Global Development Lab, USAID
Anna Benefiel, MS, Licensing Business Specialist, Office for Technology Development, University of Texas Southwestern Medical Center
Securing the Industrial IoT: Security Challenges and Solutions in the Petroleum Industry
Session Description: The oil & gas industry, which is one of the largest segments of the Industrial Internet of Things (IIoT), is facing increasingly growing security challenges as the pace of technological advancement is accelerated. All layers of security: data storage, physical access and network connectivity, represent some of the primary concerns of the Industrial IoT ecosystem. The use of sensors and actuators in the field, the security of data and application workflows, and the safety of pipelines, ships and ports, are some of the unique IIoT security challenges facing the petroleum industry.
Our panel features some of the Houston-area most prominent security and policy experts, who will highlight the challenges associated with IIoT security. The panel will address some of the existing solutions and policies in place, as well as existing gaps and opportunities for new solutions to be created and deployed and for companies to create and leverage new technologies and intellectual property.
Earl Dodd, President & Supercomputing Strategist, Ideas & Machines, Inc.; President, Society for High Performance Computing, Houston
Michael (Mike) K. Fithen, Cyber security Analyst (Former US Secret Service)
Angela Haun, Special Agent/InfraGard Coordinator, FBI Houston Division
Efrat Kasznik, President, Foresight Valuation Group LLC (Co-Chair, IoT committee)
3:15 pm - 3:45 pm Networking Break  
3:45 pm - 5:00 pm
Concurrent Spotlight Sessions
Pumps, Pipes and Progress: How Good Neighbors Make Good Business
Co-Sponsor: LES Houston Chapter
Session Description: Pumps & Pipes is an association of Medical, Energy, Aerospace, Academic and Community professionals and leaders. Founded in 2007, our core essentials are Education, Communication and Collaboration. Its guiding principle to problem solving is exploring “The Other Guy’s Toolkit”.
Pumps & Pipes Mission: Provide a platform to bring together professional groups who may not otherwise have the opportunity to interact for the transfer of knowledge and technology knowhow. Be the leader in promoting cross-industry collaboration to solve challenging Pumps & Pipes problems. Help strengthen the educational offerings in Science, Technology, Engineering and Mathematics (STEM).
William E. Kline, Ph.D, Manager, Drilling & Subsurface, ExxonMobil Upstream Research Company (retired 2016), Director Pumps & Pipes
Frank D. Perez, Chairman & CEO, Sfile Technology Corporation
Joy Kelly, VP of Jacobs Engineering
Steve Igo, Executive Director of Pumps & Pipes
Jonathon Hance, Attorney, Bracewell Law
Inter Partes Reviews - The New Form of Patent Litigation
Session Description: A panel of experienced IPR practitioners discusses current IPR topics, including Supreme Court cases and pending litigation.
James Smith, former Chief Patent Judge of PTAB, and Chief IP counsel of Ecolab, Inc.
Celine Crowson, Head of IPMT, Hogan Lovells
Georgianna Braden, Administrative Patent Judge
Emily Hostage, RPX Corporation, Director, Corporate Development & Policy Counsel
5:00 pm - 6:30 pm  Closing Reception
6:30 pm - 8:30 pm
Sector Networking Events

FRIDAY, APRIL 29, 2016

8:00 am - 5:15 pm IP Business Basics 101
4.0 hours MCLE approved
8:00 am - 5:00 pm CLP Review Course
7.0 hours of MCLE approved