Law Seminars International Presents: Our Sixth Annual Conference on

Best Practices in Patent Monetization
Strategies for getting value from patents in the corporate world

February 21 & 22, 2011
Grand Hyatt San Francisco Hotel in San Francisco, CA

Who Should Attend

Attorneys and business executives involved with selling and acquiring intellectual property

Why You Should Attend

In the latter part of 2010, patent transactions have seen a significant upswing. Markets such as wireless/mobile and consumer electronics, as well as the fast consolidating enterprise IT market have seen the emergence of a number of highly visible and substantial IP related lawsuits. Companies are therefore ever more cognizant of the need to supplement, expand and strengthen their existing patent portfolios to respond to specific IP threats, proactively and reactively, and galvanize their businesses to withstand competitive threats.

At the heart of developing and maintaining a patent portfolio that adds to shareholder value, is the realm of patent transactions. This conference will explore this realm and examine the patent marketplace, how patent monetization works, and how specific IP transaction enabling processes can be best utilized for buyers and sellers.

The faculty includes the country's leading patent strategists, buyers and market makers who will share their insights and experiences around patent sales and other transactions, with a focus on optimizing those transactions to the benefit of all parties.

Patents are knowledge assets. Therefore, to successfully conclude patent transactions, sellers must understand how value is determined and how buyers make decisions.

Experienced professionals will discuss and provide real world examples on how quality patents are developed, identified, valued and sold or otherwise monetized. Attendees will learn tips and strategies to manage the buying and selling processes, conduct due diligence, and ways to manage risks and participate successfully in the market-making process.

~ Marc S. Kaufman, Esq. and Feisal Mosleh, Program Co-Chairs

What You Will Learn


Monday, February 21, 2011

8:00 am

Registration and Continental Breakfast

8:30 am

Introduction and Overview

Marc S. Kaufman, Esq., Program Co-Chair
Reed Smith LLP / Washington, DC

Feisal Mosleh, Program Co-Chair, Director Patent Acquisitions Group
Intellectual Ventures / Bellevue, WA

8:45 am

Update on the Patent Marketplace

Trends in patent transactions: New IP investment concepts that have emerged to realize value

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

9:30 am

Patents as a Currency for Deals

Bringing valuable patents into a transaction as part of the initial strategy rather than as an afterthought

Keith Walker, Principal
CRA International / New York, NY

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

10:45 am


11:00 am

Taking Inventory and Identifying Weaknesses in Your Portfolio: Patent Analysis Tools and Procedures

Methodologies and tools for analyzing patent portfolios

Marc S. Kaufman, Esq., Program Co-Chair
Reed Smith LLP / Washington, DC

JiNan Glasgow, President and CEO
Neopatents / Raleigh, NC

12:15 pm

Lunch (on your own)

1:30 pm

Keeping on Top of the Substantive Law: Recent Cases on Patentability and Infringement

Evolving standards for patentability and the impact of recent cases on patent values; avoiding the good-but-worthless patent; use of re-examination to invalidate patents; recent cases on infringement

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

2:15 pm

Achieving Market Power Through Patents: Matching Patent Acquisition Programs to Business Objectives and Communicating the Value of the Program to Upper Management

Valuing patents in helping to accomplish specific business objectives: protecting inventions, providing freedom to operate, constraining competitors, supporting licensing programs; strategies for acquiring patents through internal development and purchase

Thomas G. Marlow, Esq., Intellectual Property Counsel
Fairchild Semiconductor Incorporated / South Portland, ME

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

3:30 pm


3:45 pm

Engaging Third Parties to Enhance Buying and Selling of IP Assets

Buy-side and sell-side agreements; compensation setting; commission; dos, don'ts and gotchas of managing a channel to enable IP monetization

Zack Higgins, Esq., VP and General Counsel
Epicenter IP Group / Redwood City, CA

Brian Sagi, President and CEO
Cerian Technology Ventures, LLC / San Diego, CA

Gerard J. Pannekoek, President and CEO
IPXI Holdings, LLC / Chicago, IL

Firasat Mir Ali, Esq.
Creso Legal PC / Cupertino, CA

5:00 pm

Continue the Exchange of Ideas: Reception for Faculty and Attendees

Sponsored by Reed Smith LLP and Orrick, Herrington & Sutcliffe LLP


Tuesday, February 22, 2011

8:00 am

Continental Breakfast

8:30 am

Corporate Patent Sales Programs: How Large Companies Sell Patents in Relation to the Overall IP Program

Lessons learned on how best to sell in the current market; obtaining needed internal approval to sell; interacting with the business units; running an effective sales program

Feisal Mosleh, Program Co-Chair, Director Patent Acquisitions Group
Intellectual Ventures / Bellevue, WA

9:15 am

Using Patents to Ensure Value in Business Sales and in Post-Sales

Two case studies

Timothy A. Musgrove, Ph.D., Chief Scientist
Federated Media Publishing / San Francisco, CA

9:45 am


10:00 am

Patent Alliances and Defensive Patent Pools

How companies evaluate and decide whether to participate

Paul Reidy, Esq., VP, Memberships
RPX Corporation / San Francisco, CA

Michael C. Lee, Esq., Senior IP Counsel
Cisco Systems, Inc. / San Jose, CA

Linda K. Biel, VP, Business Development
Allied Security Trust / Lambertville, NJ

11:15 am

A Look to the Future: Adapting Your Business Strategy to an Evolving Legal Landscape and Patent Marketplace

Marc S. Kaufman, Esq., Program Co-Chair, Moderator
Reed Smith LLP / Washington, DC

Douglas B. Luftman, Esq., Vice President & Chief Patent Counsel
CBS Interactive Inc. / San Francisco, CA

Jeffrey L. Myers, Esq., Chief Patent Counsel
Adobe Systems Incorporated / San Jose, CA

12:45 pm

Evaluations and Adjourn



Regular tuition for in person or webcast attendance for this program is $1145 with a group rate of $995 each for two or more registrants from the same firm. For government employees, we offer a special rate of $845. For students and people in their job for less than a year, our rate is $572.50. All rates include admission to all seminar sessions, food and beverages at breaks, and all course materials. Make checks payable to Law Seminars International.

Cancellation & Substitution

You may substitute another person at any time. We will refund tuition, less a $50 cancellation fee, if we receive your cancellation by 5:00 p.m. on Tuesday, February 15, 2011. After that time, we will credit your tuition toward attendance at another program or the purchase of a Homestudy. 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 10.75 California MCLE credits. Upon request, we will apply for CLE credits in other states and other types of credits.


The conference will be held at the Grand Hyatt San Francisco Hotel at 345 Stockton Street in San Francisco, CA 94108. Call the hotel directly at (415) 398-1234 for reservations at the special negotiated rate of $179 and mention that you are attending a Law Seminars International conference. Rooms are on a first come, first served basis.
More about the Location
Map & Directions

If You Cannot Attend

Our complete Homestudy Course, consisting of a DVD recording and the course materials (either a binder or searchable CD), is available for $1155. The course materials alone are 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 Reed Smith LLP, focuses on assisting clients in managing their intellectual property assets. He has developed structured procedures for defining and executing intellectual property strategies that are aligned with overall business strategies.
Full bio and contact info for Marc S. Kaufman at Reed Smith LLP

Feisal Mosleh, Program Co-Chair, Director of the Patent Acquisitions Group at Intellectual Ventures, has cross-functional experience from managing sales teams and leading major software development projects to developing business strategies and executing market plans for high growth businesses.

Firasat Ali, Managing Partner at Creso Legal PC and a Board Member of Velocitran Ventures LLC, is experienced in enforcing, monetizing and maximizing the value of IP assets. He advises companies on patent monetization and portfolio development. Previously he was Patent Counsel at Motorola, Inc.

Linda K. Biel, Vice President Business Development, Allied Security Trust, specializes in business development, marketing and sales. She is responsible for new member recruitment and the management of relationships between Allied Security Trust and sellers of patent portfolios, including patent brokers and direct sellers, as well as the sales of portfolios that AST has purchased, once involved members are licensed.

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.

JiNan Glasgow, President and CEO 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.

Zack Higgins, VP and General Counsel of Epicenter IP Group, manages patent licensing campaigns and counsels Fortune 500 companies and other clients with patent monetization. Previously he was a partner at Kirkland & Ellis.

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

Michael C. Lee, Senior IP Counsel at Cisco Systems, Inc. focuses on patent asset acquisitions, intellectual property licensing, standards and open source management strategy, and patent policy. Previously he was Senior Legal Director of IP Litigation and Conflict Management at Yahoo! Inc.

Douglas B. Luftman, Vice President and Chief Patent Counsel at CBS Interactive Inc., is responsible for their corporate-wide patent strategy. He is experienced in delivering worldwide IP services to individual inventors, private start-up companies and global conglomerates, in media, consumer electronic products, Internet services, and information/telecommunication technologies.

Fabio Marino, partner at Orrick, Herrington & Sutcliffe LLP, is chair of the Networking Practice Group. He focuses on intellectual property law with an emphasis on patent litigation. He was named a "Super Lawyer" and "Leading Lawyer" and is listed in Chambers.
Full bio and contact info for Fabio Marino at Orrick, Herrington & Sutcliffe LLP

Fabio Marino, partner at Orrick, Herrington & Sutcliffe LLP, is chair of the Networking Practice Group. He focuses on intellectual property law with an emphasis on patent litigation. He was named a "Super Lawyer" and "Leading Lawyer" and is listed in Chambers.
Full bio and contact info for Fabio Marino at Orrick, Herrington & Sutcliffe LLP

Thomas G. Marlow, Intellectual Property Counsel for Fairchild Semiconductor Incorporated, focuses on patent portfolio management and strategic analysis.

Timothy A. Musgrove, Ph.D. is Chief Scientist at Federated Media Publishing, where he oversees the company's patent portfolio strategy. Previously he was the CEO of TextDigger, Inc. and the Senior Research Fellow of CNET Networks.

Jeffrey L. Myers is Chief Patent Counsel at Adobe Systems Incorporated. He started at Adobe as the company's first patent attorney and has expanded Adobe's multi-faceted patent strategy, including asset development, strategic investment, risk reduction, value extraction, conflict resolution and patent policies.

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 devices, and provides services centered on intellectual property as a strategic corporate asset.
Full bio and contact info for Craig P. Opperman at Reed Smith LLP

Gerard J. Pannekoek, President and CEO at IPXI Holdings, LLC, has diverse corporate experience in domestic and international management, finance, marketing and operations. Previously he was the founding President and COO of both the Chicago Climate Exchange and the European Climate Exchange.
Full bio and contact info for Gerard J. Pannekoek at IPXI Holdings, LLC

Paul Reidy, VP, Memberships at RPX Corporation, focuses on growing the membership base within the semiconductor industry. Previously he was a VP at Intellectual Ventures, responsible for patent portfolios related to information technology hardware, including semiconductors and systems.

Brian Sagi, President and CEO of CERIAN Technology Ventures, LLC, is a dealmaker, entrepreneur and technologist. He heads a team of advisors, helping companies maximize the value of technology in mergers, acquisitions, intellectual property sales and licensing transactions. Previously he was VP of Business Development at ideaEDGE Ventures, as well as a founder of several technology companies.

Keith Walker, Principal at CRA International, focuses on the analysis of patent and technology data for strategic purposes using state-of-the-art software tools and databases. Previously he worked at Eastman Kodak Company.