Law Seminars International Presents: Our Fourth Annual Conference on

Best Practices in Patent Monetization
New case law, rules, legislation and markets

(For this past program, we offer two options for purchase: a Homestudy (DVD and written materials) or written materials alone.)

January 29 & 30, 2009
The Stanford Court, A Renaissance Hotel in San Francisco, CA

Who Should Order This Homestudy

Attorneys and business executives involved with selling and acquiring intellectual property

Why Order

The ability for patent owners, from large, multinational companies to individual inventors, to monetize their patents has significantly improved over the last five years. Companies are increasingly buying patents to supplement, expand, and strengthen their existing portfolios as well as respond to specific IP threats. Like land speculators, patent investors are investing billions of dollars to amass assets that they intend to monetize for a substantial return. This massive influx in available capital is providing patent owners with increasing opportunity to make money from their inventions, as well as allowing companies and patent investors to obtain quality patents much more efficiently than before.

This conference will look at how the patent monetization process really works for buyers and sellers. The faculty includes the country's leading patent buyers and market makers who will share their insights on the various venues for patent sales, with a focus on how to optimize those transactions to the benefit of both buyers and sellers.

Patents are knowledge assets, so to successfully transact patent transactions, sellers must understand how value is determined and how buyers make decisions. Experienced professionals on the faculty will discuss and provide real world examples on how quality patents are developed, identified and sold within this context. Entering this new marketplace as an opportunistic buyer of patents presents unique issues of confidentiality and exposure as well as real or perceived IP threats. Attendees will have a chance to learn tips and strategies for managing the buying process and conducting due diligence, and ways to manage risks and participate successfully in the market-making process through early access to those who are influencing a brave new world of intellectual property exchange.

~ Marc S. Kaufman, Esq. and Steve Knauer, Esq., Program Co-Chairs

You Will Learn About


Thursday, January 29, 2009

8:00 am

Registration and Continental Breakfast

8:30 am

Introduction and Overview

Marc S. Kaufman, Esq., Program Co-Chair
Nixon Peabody LLP / Washington, DC

Steve Knauer, Esq., Program Co-Chair, Chief Patent Counsel
IPotential, LLC / San Mateo, CA

8:45 am

How Do You Get Useful Patents?

Building a quality patent portfolio aligned to your business strategy to protect inventions, provide freedom to operate, affect competition and support licensing programs

Steve Knauer, Esq., Program Co-Chair, Chief Patent Counsel, Moderator
IPotential, LLC / San Mateo, CA

Marc S. Kaufman, Esq., Program Co-Chair
Nixon Peabody LLP / Washington, DC

James E. Parsons, Esq., Vice President and Associate General Counsel
Foundry Networks, Inc. / Santa Clara, CA

Craig P. Opperman, Esq.
Reed Smith LLP / Palo Alto, CA

Duane R. Valz, Esq., VP and Associate General Counsel, Global Patents
Yahoo! Inc. / Sunnyvale, CA

10:15 am


10:30 am

Creating and Implementing Decision Rules for Patent Portfolio Mining and Management (Hold, Sell, License or Abandon?)

Identifying which patents serve your core business objectives

Keith A. Rutherford, Esq.
Wong, Cabello, Lutsch, Rutherford & Brucculeri, L.L.P / Houston, TX

Marketplace factors affecting the decision to license or sell patents; finding the right match between the market factors and characteristics of each form of monetization

Kent Richardson, Managing Director
Constellation Capital LLC / Los Altos, CA

12:00 pm

Lunch (on your own)

1:15 pm

Challenges and Uncertainties in Patent Law: Keeping on Top of Evolving Standards for Patentable Subject Matter and Obviousness

Relationship between value and the likelihood of surviving a validity challenge; areas of significant changes in legal standards in recent years

Gary S. Morris, Esq.
Townsend and Townsend and Crew LLP / Washington, DC

Practical tips for dealing with the uncertainty arising from different standards and subsequent challenges in court and the USPTO

Fabio Marino, Esq.
Orrick, Herrington & Sutcliffe LLP / Menlo Park, CA

2:45 pm


3:00 pm

Strategies in the How and Why of Buying Patents

Practical examples of how a technology company buys patents opportunistically or from dedicated patent purchasing programs

David Lubitz, Esq., Director of Licensing
Microsoft Corporation / Redmond, WA

3:45 pm

Designing a Purchasing Model to Meet Specific Needs

Open market purchase opportunities through brokers, auctions, direct sales, and bankruptcy proceedings; proactive targeted searches and direct purchases from owners

Michael Pierantozzi, Principal
Andiamo Associates / Mountain View, CA

Mark Nell, Managing Director
IP Resource Services LLP / London, UK

5:00 pm

Continue the Exchange of Ideas: Reception for Faculty and Attendees

Sponsored by Ipotential, LLC and Nixon Peabody LLP


Friday, January 30, 2009

8:00 am

Registration and Continental Breakfast

8:30 am

Introduction to Day Two

Marc S. Kaufman, Esq., Program Co-Chair
Nixon Peabody LLP / Washington, DC

Steve Knauer, Esq., Program Co-Chair
IPotential, LLC / San Mateo, CA

8:45 am

Patent Sales Case Studies

Corporate patent sale case study

Davina Inslee, Esq., IP Counsel
Vulcan Inc. / Seattle, WA

Individual venture fund case study

Maurice Haff, Esq., Registered Patent Agent
White + Quinn, P.C. / Waterford, VA

10:00 am


10:15 am

Making Patent Transactions More Efficient

Current initiatives on making transactions more efficient and transparent, driven by experience in buying and selling patents in the past few years

Joe Chernesky, President and Chief Operating Officer
IPotential, LLC / San Mateo, CA

Don Merino, Ph.D., General Manager, IP
Intellectual Ventures, LLC / Bellevue, WA

Abha Divine, Managing Director
Techquity Capital Management / Austin, TX

Matt Gordon, MBA, Director of IP Acquisitions
Microsoft Corporation / Redmond, WA

12:00 pm

Lunch (on your own)

1:15 pm

Licensing vs. Litigation: When You Have a Patent Portfolio Worthy of Licensing, How Do You Determine the Appropriate Strategy to Meet Your Business Goals?

Growth in patent assertions and corresponding number of patent litigations filed; impact of the Sandisk decision; whether to file suit first, then negotiate settlement, or begin with a licensing approach Strategy: Understanding your options

Marc S. Kaufman, Esq., Program Co-Chair, Moderator
Nixon Peabody LLP / Washington, DC

Ron Epstein, Esq., Co-Founder and CEO
IPotential, LLC / San Mateo, CA

Execution: Achieving planned results

John O'Hara Horsley, Esq., Executive Vice President and General Counsel
Transmeta Corporation / Santa Clara, CA

James M. Baker, Ph.D., Vice President, Strategic & Corporate Development
ContentGuard, Inc. / El Segundo, CA

Paul M. Saraceni, Esq., Chief IP Officer
RPX Corporation / San Francisco, CA

3:45 pm

Evaluations and Adjourn



There is a $25 cancellation fee for Course Materials orders and $50 for Homestudy orders

Continuing Education Credits

Law Seminars International is a State Bar of California approved MCLE provider. This program qualifies for 12 California MCLE credits. Upon request, we will apply for CLE credits in other states and other types of credits.


Our complete Homestudy Course, consisting of a DVD recording and the written course materials, is available for $1255. The written course materials alone are available for $100. We will ship your Homestudy order via UPS ground within two weeks after the seminar or the date we receive payment (whichever is later).
Order Homestudy

Faculty Bios

Marc S. Kaufman, Program Co-Chair, partner at Nixon Peabody LLP, specializes in managing IP assets in a variety of technical fields, including computer architecture, digital rights management, database technology, search engine technology and data mining. He has developed structured procedures for creating and executing intellectual property strategies that are aligned with overall business strategies.

Steve Knauer, Program Co-Chair, Chief Patent Counsel at IPotential, LLC, focuses on strategic analysis of intellectual property, including evaluating, developing and managing patent portfolios. Previously he was IP Counsel at Gemplus, where he managed IP matters originating in North and South America.

James M. Baker, Ph.D., Vice President of Strategic & Corporate Development at ContentGuard, Inc., is responsible for corporate development, new segment and asset growth, and market relations.

Joe Chernesky is Co-Founder, President and Chief Operating Officer of IPotential, LLC, a Silicon Valley-based intellectual property strategic consultancy and brokerage firm. Previously, he served as Vice President of the Boeing Management Company and Senior Manager at Intel Corporation.

Abha Divine, Managing Director of Techquity Capital Management, focuses on the acquisition, development and commercialization of IP. Previously she launched and served as President and CEO of AT&T Knowledge Ventures.

Ron Epstein, Co-Founder and CEO of IPotential, LLC, assists patent owners in developing and executing strategies to maximize patent values. His expertise is in developing and optimizing IP asset portfolios. Previously he was General Counsel of Brocade Communications Systems, Inc. and Director of Licensing at Intel Corporation.

Matt Gordon, Director of IP Acquisitions at Microsoft Corporation, helps evaluate and execute patent acquisition deals. Previously he was at Intel and Intel Capital as the Director of the Seattle office.

Maurice Haff is a Registered Patent Agent admitted to practice before the U.S. Patent and Trademark Office and partner at White + Quinn, P.C. His experience is in entrepreneurship, corporate management, research and development, process architecture, systems engineering, and product deployment, incorporating extensive IP formation, development and management.

John O'Hara Horsley is Executive Vice President and General Counsel of Transmeta Corporation, a Nasdaq-listed company that develops and licenses advanced computing technologies and intellectual property. Previously he was at the FTC as Chief Counsel for IP and Technology Matters.

Davina Inslee is IP Counsel at Vulcan Inc., where she is responsible for the development and monetization of IP. Previously she was Patent Counsel for T-Mobile USA, Inc.

David Lubitz, Director of Licensing in Microsoft's Intellectual Property and Licensing Department, handles patent cross license negotiations with companies located in the U.S., Europe and Asia, and also acquisitions of third party patents. Previously he was the Managing Partner of a U.S. law firm's Tokyo office and is also a registered U.S. patent attorney.

Fabio Marino, partner at Orrick, Herrington & Sutcliffe LLP, is chair of the Networking Practice Group. He focuses on IP law with an emphasis on patent litigation. He was named a "Super Lawyer" and "Leading Lawyer", and Chambers USA described him as one of the go-to names in the business, admired for his impressive skills as a patent litigator.

Don Merino, General Manager, Intellectual Property, at Intellectual Ventures, LLC, focuses on projects relating to intellectual property and invention. Previously he was at Intel Corporation where he was Director of Strategic Business Development, responsible for managing the licensing program.

Gary S. Morris, Partner-in-Charge of the DC office of Townsend and Townsend and Crew LLP, advises clients on all aspects of intellectual property law. He has particular expertise in the fields of information technology, including computer and network security, cryptography and telecommunications.

Mark Nell is Managing Director at IP Resource Services LLP. He is based in the UK and primarily works on sourcing patents globally for U.S. clients. Previously he served at BTG where he managed key patent litigation cases.

Craig P. Opperman, partner in Reed Smith LLP's Intellectual Property Group, focuses on U.S., European and Asian high-tech, clean-tech and medical device experience, and draws on his extensive legal and corporate executive experience to provide services centered on IP as a strategic corporate asset.

James E. Parsons, Vice President and Associate General Counsel at Foundry Networks, Inc., a networking company, is responsible for the IP program, including patent prosecution, litigation and purchasing efforts. Previously he was at Bever Hoffman & Harms LLP, where he prepared and prosecuted patent applications.

Michael Pierantozzi, Principal at Andiamo Associates, assists business leaders in developing strategies and implementing programs that maximize the return on their investments in innovation and IP. Previously he was Managing Director of Hewlett-Packard's IP Licensing Group.

Kent Richardson is Managing Director at Constellation Capital LLC.

Keith A. Rutherford, partner at Wong, Cabello, Lutsch, Rutherford & Brucculeri, L.L.P, focuses on patent litigation, IP strategy, pre-litigation conflict resolution, licensing/deal negotiations, analysis of patent portfolios, and prosecution management. He is listed in The Best Lawyers in America.

Paul M. Saraceni is Chief IP Officer of RPX Corporation, a defensive patent aggregation company which helps companies reduce their defensive patent assertion, litigation costs and risks. Previously he was VP and Associate General Counsel, IP Strategy & Transactions at Yahoo! Inc.

Duane R. Valz, Vice President and Associate General Counsel, Global Patents at Yahoo! Inc., is responsible for the company's worldwide invention-harvesting, patent filings and strategic portfolio development. He also advises on IP-related litigation, licensing, policy and corporate development matters.