Law Seminars International Presents: A One-Day Intensive Seminar on Best Practices for

Buying, Selling and Licensing Patents
Strategies for turning your patent portfolios into revenue streams

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

July 20, 2009
Mandarin Oriental Hotel, Washington, DC in Washington, DC

Who Should Order This Homestudy

Attorneys and business executives involved with selling, acquiring and licensing intellectual property

Why Order

The market for patents has exploded over the past several years. Companies are buying, selling and licensing patents to supplement their existing portfolios and create revenue streams. Like land speculators, patent investors are pouring substantial sums into the market to amass assets that can be monetized for a substantial return. This is providing patent owners with new options for making money on their inventions. Further, companies are licensing patents to complete their IP inventory and to maximize revenue.

This seminar will look at how the patent sales and licensing process really works for potential 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 purchases and how to optimize those transactions. 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.

Experienced counsel on the faculty will provide tips and strategies for managing the process and conducting due diligence. Attendees will have a chance to learn 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.

Program Co-Chairs: Marc S. Kaufman, Esq. and Michael Pierantozzi, Vice President

What You Will Learn

What Attendees Said


Monday, July 20, 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

Michael Pierantozzi, Program Co-Chair, Vice President Corporate Development
IPotential, LLC / San Mateo, CA

8:45 am

Patent Marketplace 2009 and Beyond

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

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

Jim Weisfield, Acquisitions Manager
Intellectual Ventures / Bellevue, WA

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

10:15 am


10:30 am

Patent Sales Case Studies

Corporate patent sale case study

Richard Misiag, Director of Licensing
Verizon Communications, Inc. / Basking Ridge, NJ

Individual patent owner case study

Maurice Haff, Esq., Director, Patent Strategy & Monetization
Berenato, White & Stavish, LLC / Bethseda, MD

11:15 am

Patent Reform and Patent Valuation

Patent damages: Provisions and what they mean to the value of patents

Laurin H. Mills, Esq.
Nixon Peabody LLP / Washington, DC

12:00 pm

Lunch (on your own)

1:15 pm

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

Identifying which patents serve your core business objectives

Joseph J. Buczynski, Esq.
Drinker Biddle & Reath LLP / Washington, DC

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

JiNan Glasgow, CEO and Founder
Neopatents / Raleigh, NC

2:45 pm


3:00 pm

Designing a Patent Purchasing Program

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

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

3:45 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 suite first, then negotiate settlement, or begin with a licensing approach

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

William Marino, Esq., General Counsel and Partner
Altitude Capital Partners / New York, NY

Charles M. Fish, Esq.
Chadbourne & Parke LLP / New York, NY

D. Michael Underhill, Esq.
Boies, Schiller & Flexner LLP / Washington, DC

5:15 pm

Evaluations and Adjourn



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

Continuing Education Credits

This program qualifies for 7 VA CLE 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 $905. The binder or searchable CD of the written course materials is available for $100. We will ship your Homestudy order via UPS ground within two weeks after the seminar or from the date we receive payment.
Order Homestudy

Faculty Bios

Marc S. Kaufman, Program Co-Chair, partner at Nixon Peabody LLP, is the Leader of the Patents Group and specializes in managing intellectual property assets in a variety of technical fields, including computer architectures, digital rights management, database technology, search engine technology and data mining. He has been selected to the IAM 250 Most Influential People in Intellectual Property for 2009.

Michael Pierantozzi, Program Co-Chair, Vice President of Corporate Development at IPotential, LLC, is a technology entrepreneur and intellectual property business strategist, focusing on increasing liquidity in the global intellectual property markets, while helping businesses implement strategies that create, protect and leverage their intellectual property for profit. Previously he was a Managing Director in HP's Intellectual Property Licensing group.

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

Joseph J. Buczynski, partner at Drinker Biddle & Reath LLP in the Intellectual Property Practice Group, focuses on electrical, mechanical, biomedical, computer software, Internet and telecommunications technologies. His practice involves preparing and prosecuting patent applications before the U.S. Patent and Trademark Office and in international and foreign jurisdictions.

Abha Divine, Managing Director of Techquity Capital Management, focuses on the acquisition, development and commercialization of intellectual property. 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 intellectual property asset portfolios. Previously he was General Counsel of Brocade Communications Systems, Inc. and Director of Licensing at Intel Corporation.

Charles M. Fish, counsel at Chadbourne & Parke LLP, advises on intellectual property procurement and deployment, from long-term patent portfolio strategy through day-to-day tactical value extraction. Previously he was Chief Patent Counsel for Time Warner.

JiNan Glasgow, CEO and Founder of Neopatents, is the inventor of patent claims diagramming innovations (Patent Matrix software) and the co-inventor of proprietary patent mapping tools. Previously she was a Patent Examiner with the U.S. Patent and Trademark Office.

Maurice Haff, Director of Patent Strategy & Monetization at Berenato, White & Stavish, LLC, is a Registered Patent Agent. He is an intellectual property strategist experienced in advanced technology development and patent monetization.

William Marino, General Counsel and partner at Altitude Capital Partners, litigates patents, trademarks and other intellectual property cases, and negotiates patent licenses and other agreements. Previously he was senior attorney at Robins, Kaplan, Miller and Ciresi L.L.P. and Mintz Levin Cohn Ferris Glovsky and Popeo P.C.

Laurin H. Mills, office managing partner at Nixon Peabody LLP, member of the Intellectual Property Department, focuses on media-related counseling and litigation, and white-collar criminal defense. He is experienced in patent, copyright, trademark and trade secret litigation.

Richard Misiag is Director of Licensing at Verizon Communications, Inc.

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 is experienced in the fields of information technology, including computer and network security, cryptography and telecommunications.

D. Michael Underhill, partner at Boies, Schiller & Flexner LLP and Head of the Intellectual Property Practice, is a trial lawyer who handles patent and trade secret cases. He is an adjunt professor at George Washington University Law School.

Jim Weisfield is Acquisitions Manager at Intellectual Ventures.