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Best Practices in Licensing Instructors
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Best Practices Course Instructors

May 2-3, 2018
8 am- 5 pm
Manchester Grand Hyatt Hotel, San Diego
One Market Place
San Diego, California  92101
United States
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Michael Baniak, CLP,General Counsel & Chief IP Counsel Global, EOS of North America
Michael Dansky, Managing Director, BRG Corporate Finance
Ruben Flores-Saaib, Director of Commercialization for the Office of Innovation and Commercialization (OIC), UC San Diego
Robert F. Held, CLP, President, Held Intellectual Property
Mike Lasinski, Managing Director, 284 Partners, LLC
Matthias Meyer, Ph.D., Partner, Bird & Bird
Tanya Moore, Principal, T.K. Moore Associates, LLC
John Paul, CLP, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Tom Pruitt, Senior IP Counsel, Tom F. Pruitt, PLLC
Tari Suprapto, Ph.D, RTTP, Senior Director, Strategic Alliances & Business Development , Salk Institute for Biological Studies

Michael Baniak, CLP  
Michael Baniak, CLP
Mike Baniak is a highly experienced Intellectual Property attorney.  On the transactional side, Mr. Baniak has provided counsel on, and negotiated and written, hundreds of technology transfer agreements and arrangements of virtually all types. This includes invention and innovation ownership agreements, trade secret and proprietary information protection agreements, in employment, independent development and joint venture situations. 

Mr. Baniak now continues that practice as the Chief IP Counsel Global for EOS, an international company engaged in the additive manufacture industry (often referred to as 3D printing).  His experience in subject matter encompasses things and processes mechanical, electrical, software, business methods, medical devices and treatment, pharmaceutical delivery, optical, fluid dynamics, heat exchange, propulsion, combustion, computer gaming, adhesives, electrochemical, food packaging, service delivery, and more.

Mr. Baniak has a broad-based background, and expertise that spans all facets of IP transactions, counseling, and litigation and appellate work, in patent, trademark, copyright and trade secret law.

 

Michael Dansky
Michael Dansky

Michael J. Dansky recently joined Nathan Associates, Inc. as a Senior Vice President, after serving as the National Leader of the BRG Corporate Finance's Intellectual Property Practice for the past 8 years. He has more than 30 years of experience in intellectual property valuation, licensing and intellectual property transactions and dispute resolution.  Throughout his career, Mr. Dansky has focused on developing strategies for maximizing the value of assets and executing licensing and related transactions to monetize these assets and well as evaluating and calculating damages and assessing transaction related issues in a wide range of litigation and dispute related matters.

Mr. Dansky has assessed, commercialized, valued and licensed technologies and intellectual property portfolios and evaluated intellectual property damages in a wide range of industries and in many technical disciplines from complex electronics, materials, semiconductors and computer hardware and software to chemicals, food products, pharmaceuticals, biotechnology and alternative energy from bio sources. He has significant experience with patents, trademarks, brands, copyrights, know-how, and trade secrets, as well as accounting, finance and a wide range of transactional related matters.  Mr. Dansky is an internationally recognized expert in the business and conduct of licensing and the valuation of intellectual property, having run the licensing and intellectual property businesses at multiple large corporations. He has testified in State, Federal, and Bankruptcy Courts and before Federal Administrative Agencies and in many arbitrations on a number of dispute and litigation matters with issues involving the quantum of damages, accounting and financial issues, asset valuation and a range of transactional matters.  In addition to negotiating and executing many transactions in a number of industries and drafting many licensing and related agreements, Mr. Dansky has performed due diligence for buyers, sellers, and financing entities for a number of significant transactions. He has particularly significant experience in troubled company situations and was involved in both the Nortel and Kodak bankruptcies representing creditor interests as well as the Polaroid bankruptcy and most currently the M&G bankruptcy.

Mr. Dansky was formerly a Principal at the Brattle Group and the founder of Intellectual Property Strategies, a full service intellectual property advisory firm.  He also served as the Vice President for Corporate Strategy and Business Development at Polaroid Corporation, where he had worldwide, corporate responsibility for technology Licensing, corporate partnering and leveraging the Polaroid patent and technology portfolio.  Prior to Polaroid, Mr. Dansky was an executive for Amoco and Xerox Corporations, with senior level transaction, licensing and business development responsibilities, and a partner at two international consulting firms.  While at Amoco and Xerox, Mr. Dansky had worldwide responsibility for: licensing and commercializing the Companies' intellectual property portfolios; mergers, acquisitions and divestitures; and in-licensing and open innovation efforts, among a range of other duties.

Education and Affiliations
Mr. Dansky holds an M.B.A. in International Business/Finance from The George Washington University and a BA in Economics and Political Science from Tufts University.  IAM Magazine has recognized him as one the world's 300 Top IP Strategists in each year of its publication and most recently recognized him in their Patent 1000 as one of the world's top IP practioners.  Mr. Dansky has been a long time member of the Licensing Executives Society (LES) and for many years chaired LES's flagship Technology Transfer Educational Program now known as Best Practices, teaching IP valuation, licensing negotiations and the business of licensing. Mr. Dansky is also formerly the Chair of the ABA's Economics Committee and the Vice Chair of LESI's Patent and Licensing Committee.

Ruben Flores-Saaib  
Ruben Flores

Rubén Flores-Saaib is Director of Commercialization for the Office of Innovation and Commercialization (OIC) at UC San Diego. He has held a variety of positions in R&D, marketing, business development and technology commercialization. He was Vice President of Business Development and Technology Transfer for the Los Angeles BioMedical Research Institute at Harbor UCLA Medical Center, where he focused on fostering the entrepreneurial ecosystem for startups in Los Angeles. His professional career also includes Biosite, where he helped design, initiate, negotiate and monitor clinical trials; and later joined Chemicon (now Millipore-Sigma), where he managed R&D, worldwide clinical-trial operations, and marketing activities for diagnostic products.

Robert F. Held, CLP  
Robert F. Held, CLP
Bob has been active in LES (USA & Canada) since 1998 having served in the following roles: Chair of the Aerospace and Transportation Subcommittee of the High Tech Sector (HTS) 2006-2007; Co-Chair and co-author of the HTS Royalty Rate and Deal Terms Surveys for 2011 and 2014; Secretary of the HTS 2011-2012; Vice-Chair of the HTS 2012-2013; Chair of the HTS 2013-2014; Workshop Chair for the 2012 HTS Winter Meeting; Program Chair for the 2012 LES Annual Meeting, Program Chair for the 2013 LES Annual Meeting, and LES Trustee for Content Creation, Capture and Delivery on the LES Board of Trustees 2012-2014. Currently Bob holds the position of Regional Vice President, Policy, Standards, International & Strategic Planning on the LES Board of Directors. In addition, Bob has organized and presented workshops and mini-plenary sessions on a variety of IP topics, and is a frequent LES faculty member.

Bob is the President of Held Intellectual Property, LLC, and recently worked for TeleCommunication Systems, Inc. (TCS) in Annapolis, Maryland as the Vice President, Intellectual Asset Management, responsible for the strategic management and monetization of TCS's IP portfolio. All assets of TCS were acquired in February 2016.  Immediately prior to joining TCS, Bob worked for Northrop Grumman Corporation, Electronic Systems Sector from 2003-2011 as the Director of the Intellectual Property & Strategic Technology Agreements business unit; and from 1998-2003 he worked at the IP firm British Technology Group (BTG) International.

Bob has been a Certified Licensing Professional (CLP) since 2008 and was named to the "IAM Strategy 300 - The World's Leading IP Strategists" in 2015 and 2016.  Bob received his Bachelor of Science in Electrical Engineering degree from Villanova University and his MBA from Drexel University's LeBow College of Business.

 

Mike Lasinski  
Mike Lasinski

Michael Lasinski is a founder and Managing Director of 284 Partners, LLC, a professional services firm focused on IP valuation, litigation consulting, strategy, and transactional services.  He is a recognized leader in the field, and has provided expert testimony in federal, state, tax and arbitration proceedings regarding IP valuation issues.  Mr. Lasinski has been retained by both taxpayers and the IRS to determine IP value and royalty rates in transfer pricing and other tax-related transactions.

Mr. Lasinski is a past President of the Licensing Executives Society (United States and Canada).  In each of the past five years, he has been named as one of the World's Leading IP Strategists by Intellectual Asset Management.  He is a past Division Chair of the American Bar Association's IP Section, a former Chair of the Valuation and Taxation Committee of LES, and a former Vice Chair of the Intellectual Property Owners Association's Valuation and Taxation Committee.  Mr. Lasinski is a Certified Public Accountant.

 

Matthias Meyer  
Matthias Meyer

Matthias Meyer is a member of Bird & Bird's Intellectual Property Practice Group and is based in Dusseldorf, Germany, and therewith at the seat of one the most important patent infringement courts in Europe.

Matthias specialises in patent law, particularly litigation and counselling in all technical areas, including medical devices, mobile communications, automotive and document security. Matthias handles patent cases in the German Courts and in the European Patent Office, advising on parallel patent litigations pending in various jurisdictions. He also represents clients in IP-related arbitration proceedings. In addition, he specialises in transactional matters, such as the IP-related aspects of the acquisition of businesses, as well as the drafting and negotiation of complex licensing agreements and research and development agreements.

Matthias holds a Ph.D. in Intellectual Property Law from Potsdam University (2002).

Matthias is a member of the German Intellectual Property and Copyright Association (GRUR), Licensing Executive Society (LES), AIPPI and VPP. He is a regular lecturer both in Germany and internationally on patent law and lectures on research and development agreements at "LL.M. Intellectual Studies in Intellectual Property Law" of the Technical University Dresden. Matthias is the author of several legal publications.

Tanya Moore  
Tanya Moore

Tatiana Moore is an experienced technology business executive with twenty years of business development and intellectual property licensing experience at IBM and Microsoft. She brings strong leadership and deep transactional expertise combined with an extensive software development background and management skills to the deal making process. Since leaving Microsoft in late 2015, Ms. Moore established T.K. Moore Associates LLC, a business development and intellectual property licensing consulting practice. She serves on the Board of Governors of Certified Licensing Professionals, Inc. and is an Advisory Board Member of TurboPatent, a Voyager Capital portfolio company.

Ms. Moore joined Microsoft in January of 2004 to grow its corporate IP Group. As General Manager of IP Licensing responsible for outbound licensing of Microsoft's corporate-wide IP assets, she led strategic deals, built licensing programs, launched the first patent litigations, assisted in settling EU undertaking and helped grow revenue 100-fold over the nine-year period. In addition, she was designated as Microsoft's M&A IP expert as well as Litigation IP licensing expert. During this time, Ms. Moore served on the board of the Licensing Executives Society (LES) and the LES Foundation, and was the 2013 President and Chair of the Board of LES USA-Canada. In 2013, Ms. Moore transitioned to serve as GM of Business Development & Strategy for Microsoft Dynamics. She was responsible for driving technology acquisitions to expand the Dynamics enterprise application platforms through M&A and IP asset licensing as well as signing on key strategic industry partners increasing partner-led revenue of relevant Dynamics products 15-fold.

Ms. Moore's career began at IBM in June of 1980, initially in technical software development and management roles. This included experience in all product lifecycle positions working on operating systems, Geographic Information Systems and supercomputing platforms, transitioning to OEM Sales. Ms. Moore joined IBM's corporate IP group in 1997 to lead technology licensing deals, IP asset sales, joint development deals as well as IP portions of major divestitures and joint ventures, handling multi-million to multi-billion dollar transactions. She was a key contributor to generating $1-2B of IP licensing income annually for IBM.

Ms. Moore is a Certified Licensing Professional and was honored as a recipient of the IAM Strategy 300 Award (World's Leading IP Strategists) in 2015. Throughout her career, Ms. Moore had received numerous awards and recognition for innovative and first-of-a-kind projects as well as deal, team and management corporate awards. She is a frequent speaker at IP conferences and teacher of IP licensing and strategy. Adept at working with startups as well as Fortune 100 companies all over the globe, Ms. Moore excels at building consensus and lasting working and corporate relationships among diverse groups at every level.

Tatiana Moore holds a Master of Science degree in Computer Science from NYU Polytechnic School of Engineering, a Bachelor of Arts degree in Mathematics from Fordham University, completed significant course work towards a Bachelor of Music degree (classical concert piano) from Manhattan School of Music.
John Paul, CLP  
John Paul, CLP
John Paul has more than 30 years of experience in intellectual property licensing, litigation, and prosecution. He currently focuses on strategic planning, complex transactions, due diligence investigations, and licensing and enforcement of IP portfolios to generate revenue. He leads the firm's IP management and transaction section. 

Mr. Paul has analyzed many patent portfolios for a wide range of companies and industries, including multimedia electronics, aerospace, medical devices, and consumer products. He has developed strategies and created systems to help companies understand and effectively communicate the legal and commercial significance of IP portfolios, develop more robust portfolios aligned with their business objectives, and generate revenue by monetizing those portfolios. He has set up and directed licensing and enforcement programs that generated significant royalty revenue for leading technology companies; set up and conducted multiple-round private auctions to sell patent portfolios; led negotiations related to IP issues in business divestitures and other complex transactions; conducted IP due diligence and negotiations for strategic acquisitions of patent portfolios; and negotiated and drafted a wide range of agreements relating to the development and use of intellectual property. 

Mr. Paul serves as a board member and vice president of the Licensing Executives Society International and has served as counsel to the board, trustee, and vice president of the Licensing Executives Society U.S.A. and Canada. He frequently lectures on patent law, licensing, and IP management, and writes weekly articles for LES Insights on recent U.S. cases affecting licensing and other transactions.
Tom Pruitt 

 

 
Tom Pruitt 
Tom Pruitt currently provides international IP transactional services for selected clients via joint arrangement with a London based international law firm and Tom F Pruitt PLLC.  Tom has supported numerous major (e.g. high dollar value) licenses, joint venture formations, divestitures/acquisitions, and joint development agreements with tech licensing/transfer aspects. Diverse experiences includes supporting IP transactions with entities in the People's Republic of China (including Hong Kong pre- and post- SAR), South Korea, Japan, Malaysia, Thailand, Singapore, Russia, Germany, Netherlands, England, Belgium, France, Italy, Spain, India, Bahrain, Qatar, Saudi Arabia, Colombia, Venezuela, Brazil, Argentina, Canada, Mexico, South Africa, Australia and other countries. Tom has supported entities ranging from large corporations to venture capital/private equity funded entities. He is licensed to practice before the USPTO (since 1981) and in Texas (active) and as well in Colorado and Oklahoma (inactive). Tom retired 2012 from Exxon Mobil Corporation's law department having worked major transactions in over 25 countries. Prior to joining Exxon Mobil in 1994, Tom was licensing focused attorney at ARCO (merged with BP) and a Senior Chemical Engineer at DuPont Chemical, shareholder in Godwin et al firm Dallas. Tom earned BChE (Ga Tech), MEng, Economics minor (NC State) and JD (Baylor). Since 1990, Tom has been a panel member, American Arbitration Association.
Tari Suprapto Ph.D.  
Tari Suprapto Ph.D.
Tari Suprapto is the Senior Director for Strategic Alliances, Business Development in the Office of Technology Development at The Salk Institute for Biological Studies in La Jolla, California.  She is primarily responsible for creating and nurturing partnerships between Salk and the life sciences industry to support the ongoing research effort of Salk's scientists, which is directed to discoveries that benefit the public.  Tari initially joined Salk as Director of Business Development and prior to that she was part of the Office of Technology Transfer at The Rockefeller University for 11 years, first as a Technology Manager and eventually the Assistant Director for Outreach & Commercialization.  She also spent two years as a Licensing Assistant at Memorial Sloan-Kettering Cancer Center's Office of Industrial Liaison.  Tari has a Ph.D. in cellular and structural biology from The Rockefeller University, a BA (Honors) in Biology from Swarthmore College.  She received her RTTP credential in 2014 and is an active member of AUTM.

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