Law Seminars International Presents: The Eighth Annual Conference on

Best Practices in Patent Monetization
Strategies to maximize the financial value of patent portfolios, manage the buying and selling process, conduct due diligence and manage risks

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



April 11 & 12, 2013
The Hilton San Francisco Union Square in San Francisco, CA

Who Should Order This Homestudy

Attorneys and business executives involved with patent transactions or other monetization mechanisms

Why You Should Order

Now, more than ever, companies are following alternative paths to monetize patents that would otherwise sit on the shelf. As such, companies need well-conceived strategies to develop, grow and leverage their core assets in the market for competitive and financial gain.

This conference will explore patent strategies across the monetization spectrum. Our faculty includes the country's leading patent strategists, buyers and market makers who will share their insights and experiences around patent portfolio development, analysis, sales and other transactions. Attendees will learn tips and strategies to maximize the strategic and financial value from their portfolios, manage the buying and selling process, conduct due diligence, manage risks and participate successfully in the market-making process. Don't miss this valuable opportunity to hear strategies and practice tips for monetizing your patents.

Program Co-Chairs: William Goldman, Esq. of Kudelski Group and Craig P. Opperman, Esq. of DLA Piper.

What You Will Learn



Agenda

Thursday, April 11, 2013

8:00 am

Registration Opens

 
8:30 am

Introduction and Overview

William Goldman, Esq., VP, Intellectual Property
Kudelski Group / Menlo Park, CA

Craig P. Opperman, Esq., Program Co-Chair
DLA Piper / East Palo Alto, CA

 
8:45 am

Designing and Building Valuable Assets: Lessons from Leading Companies on Organizational Approaches

Systematic approaches for identifying valuable technologies; building a patent program; in-house mining strategies

Damon Matteo, Moderator, Chief IP Officer & Vice President
Palo Alto Research Center / Palo Alto, CA

Chuck Fish, Esq., VP and Chief Patent Counsel
Kudelski Group / Mountain View, CA

Michael J. Williams, Esq., VP and Associate General Counsel
Cadence Design Systems, Inc. / San Jose, CA

 
10:15 am

Break

 
10:30 am

Designing and Building Valuable Assets (con't): Prosecution Techniques

Using continuations or large specifications; working with PTO delays for retroactive claiming

Kent Richardson, Esq.
ROL Group / Mountain View, CA

 
11:15 am

Recent Major Deals as Disruptive Moments in the Patent Marketplace Ecosystem: What are the Ramifications?

Robert Heath, VP, Corporate Development
RPX Corporation / San Francisco, CA

 
12:00 pm

Lunch (on your own)

 
1:00 pm

Selecting the Assets: How to Find the Diamonds in the Coal Pile

Manually: The most cost effective techniques

Charles A. Eldering, Ph.D., President
Technology, Patents & Licensing, Inc. / Doylestown, PA

New technologies for automating the process

Amy E. Simpson, Esq.
Perkins Coie LLP / San Diego, CA

JiNan Glasgow, President and CEO
Neopatents / Raleigh, NC

 
2:45 pm

Break

 
3:00 pm

Valuing the Asset: If You Have a "Good Asset," What Is It Really Worth?

Valuation techniques: What's available; tips for picking the best method for the type of asset

Paul L. Hickman, Esq.
Technology & Intellectual Property Strategies Group PC / Palo Alto, CA

Michael J. Dansky, Executive Director
Capstone Advisory Group, LLC / Boston, MA

Michael J. Lasinski, Managing Director and CEO
284 Partners, LLC / Ann Arbor, MI

 
4:30 pm

Monetization Models: Buying and Selling vs. Licensing

Pros and cons of the two approaches; role of brokers

Don Merino, Ph.D., Senior VP, Licensing
Intellectual Ventures, LLC / Bellevue, WA

 
5:15 pm

Continue the Exchange of Ideas: Reception for Faculty and Attendees

Sponsored by Capstone Advisory Group, LLC, Perkins Coie LLP, and Technology, Patents & Licensing, Inc.

 

Friday, April 12, 2013

8:30 am

Monetization Models: Buying and Selling vs. Licensing

Potential antitrust issues for Standards Essential Patents: When does the duty to license flow downstream?

Ian Feinberg, Esq.
Feinberg Day Alberti & Thompson LLP / Palo Alto, CA

 
9:15 am

Monetization Models (con't): Litigation

Decisional trends for cases brought by operating companies

Jim Brogan, Esq.
Cooley LLP / Broomfield, CO

Trends for cases brought by non-practicing entities

Edward R. Reines, Esq.
Weil, Gotshal & Manges LLP / Redwood Shores, CA

 
10:45 am

Break

 
11:00 am

Seller Due Diligence: Anticipating and Delivering What Buyers Want

Title and file history review; identifying encumbrances; building a prospectus; articulating value

Keith A. Walker, VP, Intellectual Asset Management
General Electric Company / Albany, NY

 
11:45 am

Wrap Up Discussion: Buyer and Seller Work Through Negotiation of a Hypothetical Transaction

Objectives and tactics of buyers and sellers: Typical sticking points in a negotiation and successful tools for resolving them

Damon K.I. Kali, Esq., Moderator
Kali Law Group, P.C. / Sunnyvale, CA

Stacey Ravetta, Esq.
Perkins Coie LLP / Seattle, WA

Charles A. Eldering, Ph.D., Esq., President
Technology Patents & Licensing Inc / Doylestown, PA

Ian Feinberg, Esq.
Feinberg Day Alberti & Thompson LLP / Palo Alto, CA

Edward R. Reines, Esq.
Weil, Gotshal & Manges LLP / Redwood Shores, CA

Kent Richardson, Esq.
ROL Group / Mountain View, CA

Eran Zur, Managing Director, Intellectual Property Finance Group
Fortress Investment Group / San Francisco, CA

 
1:00 pm

Evaluations and Adjourn

 


Cost

Regular tuition for this program is $1245 with a group rate of $935 each for two or more registrants from the same firm. For government employees, we offer a special rate of $830. For students and people in their job for less than a year, our rate is $622.50. All rates include admission to all seminar sessions, food and beverages at breaks, and all course materials. Make checks payable to Law Seminars International.

Continuing Education Credits

Live credits: Law Seminars International is a State Bar of California approved MCLE provider. This program qualifies for 11.75 California MCLE credits. Upon request, we will apply for, or help you apply for, CLE credits in other states and other types of credits.



Cancellation

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



Faculty Bios

William Goldman, Program Co-Chair, Vice President, Intellectual Property at Kudelski Group, is an intellectual property strategist and leader in complex IP portfolio assessment, IP litigation and IP case analysis, with expertise in planning, developing, and executing winning IP licensing and enforcement strategies.

Craig P. Opperman, Program Co-Chair, partner in DLA Piper's Intellectual Property and Technology Group, focuses on intellectual property strategy and specializes in helping clients design, build, leverage and enforce intellectual property as a corporate asset.

Damon K.I. Kali, Moderator, shareholder at Kali Law Group, P.C., specializes in patent prosecution. His practice emphasizes the preparation and prosecution of patent applications in semiconductor device fabrication, bioinformatics, gene chip technology, computer software and digital imaging equipment.

Damon Matteo, Moderator, Chief IP Officer & Vice President at Palo Alto Research Center, directs operations that touch intellectual capital. He manages corporate intellectual capital assets from optimizing their creation and capture, to extracting maximum value from them through licensing, assertion and spin-outs.
Full bio and contact info for Damon Matteo at Palo Alto Research Center

Jim Brogan, partner in the Cooley LLP Litigation department and Chair of the Intellectual Property practice, focuses on patent litigation, licensing and counseling. He is also an adjunct professor at the University of Denver, Sturm College of Law, where he teaches a course on patent litigation.

Michael J. Dansky, Executive Director in charge of Capstone Advisory Group, LLC's Boston Office and National Leader of the Intellectual Property Practice, is experienced in valuation, licensing transactions and dispute resolution. He focuses on maximizing the value of assets and executing licensing and related transactions to monetize these assets.
Full bio and contact info for Michael J. Dansky at Capstone Advisory Group, LLC

Charles A. Eldering, Ph.D., President and founder of Technology, Patents & Licensing, Inc., is experienced in the electronics, telecommunications and optics industries as a researcher, engineer and inventor. He helps clients obtain and utilize patents that cover the combined technical, legal and business aspects of patents.

Ian Feinberg, partner at Feinberg Day Alberti & Thompson LLP, focuses on patent, copyright, trademark and trade secret litigation in licensing, unfair competition and antitrust. His practice is focused in the software and semiconductor industries.

Chuck Fish is Vice President and Chief Patent Counsel at Kudelski Group.

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.

Robert Heath, Vice President, Corporate Development at RPX Corporation, is experienced as an investment banker, focused on technology and growth companies. Previously, he was Head of Strategy and Global M&A for Technicolor.
Full bio and contact info for Robert Heath at RPX Corporation

Paul L. Hickman, partner at Technology & Intellectual Property Strategies (TIPS) Group PC, focuses on patent prosecution, patent licensing and transactions, and patent litigation.

Michael J. Lasinski, Managing Director and CEO of 284 Partners, LLC, has consulted on hundreds of engagements pertaining to IP-centric transactions, valuation and damages analyses. He is an expert on financial aspects of intellectual property.

Don Merino, Ph.D., Senior Vice President of Licensing at Intellectual Ventures, LLC, focuses on intellectual property and invention. He develops programs that work with individual inventors, companies and universities to help them understand the value of their inventions and their monetization potential.

Stacey Ravetta, partner in the Technology Transactions and Privacy group at Perkins Coie LLP, specializes in the business and transactional aspects of patent deals, including strategic counseling, purchase and sale agreements, license agreements and due diligence.
Full bio and contact info for Stacey Ravetta at Perkins Coie LLP

Edward R. Reines, partner in Weil, Gotshal & Manges LLP's Technology Litigation Practice, has a trial and appellate practice. He is also active in public service and is dedicated to supporting disabled veterans rights pro bono.

Kent Richardson, partner at ROL Group, counsels clients on patent and business matters including patent licensing, valuation, prosecution and operations. Prior to founding the ROL Group he was the General Manager of ThinkFire Services US.
Full bio and contact info for Kent Richardson at ROL Group

Amy E. Simpson, partner in the Patent Litigation group at Perkins Coie LLP, specializes in intellectual property matters including patent litigation, intellectual property due diligence, patent prosecution and procurement, and strategic client counseling.
Full bio and contact info for Amy E. Simpson at Perkins Coie LLP

Amy E. Simpson, partner in the Patent Litigation group at Perkins Coie LLP, specializes in intellectual property matters including patent litigation, intellectual property due diligence, patent prosecution and procurement, and strategic client counseling.

Keith A. Walker, Vice President, Intellectual Asset Management in GE Licensing at General Electric Company is responsible for due diligence and monetization of patent assets. Previously, he was a Principal at CRA, focused on the analysis and valuation of patents.

Michael J. Williams, Vice President and Associate General Counsel, Cadence Design Systems, Inc., manages the intellectual property legal group for Cadence, an EDA software company.

Eran Zur is Managing Director of the ntellectual Property Finance Group at Fortress Investment Group.