Law Seminars International Presents: The Ninth Annual Conference on

Best Practices in Patent Monetization
Strategies to maximize the financial value of patent portfolios

March 6 & 7, 2014
University Club of San Francisco in San Francisco, CA

Who Should Attend

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

Why You Should Attend

Now, more than ever, companies are following alternative paths to monetize patents that would otherwise sit on the shelf. There has been a shift in the market away from high profile acquisitions to more comprehensive and creative monetization strategies that include licensing augmented by litigation, and also a corresponding shift to more flexible deal structures. 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., Kudelski Group and Amy E. Simpson, Esq., Perkins Coie LLP

What You Will Learn


Thursday, March 06, 2014

8:00 am

Registration Opens

8:30 am

Introduction & Overview

William Goldman, Esq., Program Co-Chair, VP, Intellectual Property
Kudelski Group / Mountain View, CA

Amy E. Simpson, Esq., Program Co-Chair
Perkins Coie LLP / San Diego, CA

8:45 am

Update on Current Patent Markets: Options and Trends

Sales, licensing, collaborations and new creative approaches; the growth of patent brokerage as a business

Eran Zur, Head of the Intellectual Property Finance Group
Fortress Investment Group LLC / San Francisco, CA

9:30 am

Organizational Readiness: Building a World Class Monetization Team

Working toward small but effective: Putting the right talent in place for functions from portfolio review through strategy development and execution

Joseph Siino, Esq., CEO
Ovidian Group, LLC / Berkeley, CA

10:15 am


10:30 am

Special Address: Looking to the Future of the Intellectual Property Marketplace

Where we will be in 2020

James E. Malackowski, Chairman and CEO
Ocean Tomo, LLC / Chicago, IL

11:15 am

Selecting the Assets: Initial Triage to Get to the Point Where You Can Think About Monetization Models

Gregory S. Bishop, Esq.
Pepper Hamilton LLP / Redwood City, CA

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

12:30 pm

Lunch (on your own)

1:45 pm

Valuing the Assets: Methodological Options and Guidance from Recent Cases

Recent court and ITC decisions on damages and impact of patent values; special considerations for valuing standards essential patents

Elizabeth A. Dean, Vice President
TM Financial Forensics, LLC / San Francisco, CA

Tips for picking the best valuation method for the type of asset and structuring the transaction to fit the method

Ryan Sullivan, Ph.D., President
Quant Economics, Inc. / San Diego, CA

3:15 pm


3:30 pm

Effective PTO/PTAB Practice Under the AIA and It's Importance to Your Monetization Program

Prosecution techniques: Processes available for strengthening the portfolio; continuations and retroactive claiming; optimizing specifications; minimizing PTO delays

Timothy E. Bianchi, Esq.
Schwegman Lundberg Woessner / Minneapolis, MN

Defensive steps to take before approaching buyers/licensees: Tips for minimizing the risk of your prospect that will stall your monetization program by filing PTO validity challenges

Marc S. Kaufman, Esq.
Reed Smith LLP / Washington, DC

5:00 pm

Continue the Exchange of Ideas: Reception for Faculty and Attendees

Sponsored by Perkins Coie LLP


Friday, March 07, 2014

8:30 am

Enforcement Litigation as a Strategic Tool in Monetization: Lessons from Recent Cases

Cases brought by operating companies

Russell E. Levine, P.C., Esq.
Kirkland & Ellis LLP / Chicago, IL

Cases brought by patent assertion entities (PAE's) and other non-practicing entities (NPE's)

Timothy Lohse, Esq.
DLA Piper LLP / East Palo Alto, CA

New developments at the intersection of patent rights and antitrust law: To what extent are there anti-trust limits on patent enforcement? For standards essential patents, when does the duty to license flow downstream?

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

10:30 am


10:45 am

International Monetization: How Do Differences in Enforcement Regimes Affect the Patent Market Place? What Does that Suggest for U.S. Transactions?

Overview of regional differences in the effectiveness of enforcement mechanisms; implications for U.S. monetization strategies in situations where enforcement litigation is not an attractive option; impact of those differences on patent values

Donald Merino, Ph.D., Managing Director and Founder
Transpacific Advisors Limited / Taipei, TW Taiwan

11:30 am

Lunch (on your own)

12:45 pm

Seller Due Diligence and Pitfalls to Avoid

Anticipating and delivering what buyers want: Title and file history review; identifying encumbrances; building a prospectus; articulating value

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

Inventor ownership; title problems; approaches to encumbrances; do licenses survive a sale?; timeline for negotiation and closing of a patent sale; pre-thinking ways to maintain privilege for communications in the sale process; Uled and grantback licenses

Kurt Becker, Esq.
Fulcrum Legal Services PLLC / Bellevue, WA

Tips for participation in standards setting organizations or other forms of collaboration: Information you can withhold vs. must disclose; practical implications of the AIA's switch to first to file from first to invent

Michael Pierantozzi, Partner
Lumen SV, LLC; Andiamo Associates, LLC / Mountain View, CA

2:30 pm


2:45 pm

Putting It All Together: Taking a Creative Approach to Monetization Models

Creative thinking from around the country and different technology sectors on new and effective strategies for using patents as financial tools

David Hetzel, Esq., Director Patent Licensing & IP Strategy
Intellectual Ventures, LLC / Bellevue, WA

Erez Levy, Managing Director, Intellectual Property Finance Group
Fortress Investment Group LLC / San Francisco, CA

William J. Plut, Esq.
Patent Profit International LLC / Menlo Park, CA

4:00 pm

Evaluations and Adjourn



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 12.5 California MCLE credits. Upon request, we will apply for, or help you apply for, CLE credits in other states and other types of credits.


The conference will be held at the University Club of San Francisco at 800 Powell Street, San Francisco, CA 94108. Sleeping rooms are available at Marriott Union Square at 480 Sutter Street, San Francisco, CA 94108. Call the hotel directly at (415) 398-8900 for reservations at the special negotiated rate of $249 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, is available for $1255. 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

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 Friday, February 28, 2014. 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.

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.

Amy E. Simpson, Program Co-Chair, 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

James E. Malackowski, Special Address, is the Chairman and Chief Executive Officer of Ocean Tomo, LLC, an integrated Intellectual Capital Merchant Banc firm providing financial products and services related to intellectual property expert services, research, investments, risk management and transactions.

Kurt Becker, lead attorney at Fulcrum Legal Services PLLC, has been involved in over 1000 patent purchases and has designed creative structures for acquisitions and licensing deals. Previously, he was in several Chief Counsel positions at Intellectual Ventures before founding Fulcrum Legal Services.
Full bio and contact info for Kurt Becker at Fulcrum Legal Services PLLC

Timothy E. Bianchi, shareholder at Schwegman Lundberg Woessner, advises businesses in domestic and international patenting, reexamination, opinions, licensing and enforcement.

Gregory S. Bishop, partner in charge of the Silicon Valley office of Pepper Hamilton LLP and a trial attorney in the Intellectual Property Litigation Practice, concentrates on patent infringement cases involving high technology areas such as microprocessors, semiconductors, software, digital signal processing and networking technology.

Elizabeth A. Dean, Vice President and founding member of TM Financial Forensics, LLC, is experienced in commercial damages and intellectual property matters including patents, trademarks, copyrights and trade secrets.

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.

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.

David Hetzel is Director of Patent Licensing & IP Strategy at Intellectual Ventures, LLC.

Marc S. Kaufman, partner at Reed Smith LLP, assists clients in managing and monetizing their intellectual property assets and in defending against patent assertions. He has developed structured procedures for defining and executing intellectual property strategies that are aligned with overall business objectives.
Full bio and contact info for Marc S. Kaufman at Reed Smith LLP

Russell E. Levine, partner, Kirkland & Ellis LLP, focuses his trial, appellate and alternative dispute resolution practice on patent infringement and disputes involving technology transfer and patent license agreements. His technology transfer and licensing practice includes structuring and negotiating both licensing-in and licensing-out transactions.

Erez Levy, Managing Director with Fortress Investment Group's Intellectual Property Finance Group, focuses on a wide variety of investment opportunities in connection with intellectual property and technology. Previously, he was a Co-Founder of Koru Venture Partners, an asset based lending fund that provided technology companies with capital in the form of patent backed loans.

Timothy Lohse, partner at DLA Piper LLP, provides patent preparation and prosecution in software and related technologies, including microprocessor branch prediction, computer cache memory replacement strategies, database storage systems and database architectures, and wireless applications.

Donald Merino, Ph.D., Managing Director and Founder of Transpacific Advisors Limited, leads the team on licensing and advisory business. He develops programs that work with inventors, companies and universities to help them understand the value of their inventions and the paths towards monetization. Previously, he was at Intellectual Ventures as VP and General Manager for IP.

Michael Pierantozzi, technology entrepreneur and intellectual property business strategist and transaction expert, runs his own consulting firm, Andiamo Associates, LLC, and is Partner at Lumen SV, LLC and also at Aqua Licensing, LLC. His focus is in helping clients realize the value in their ideas, inventions and business.

William J. Plut is with Patent Profit International LLC.

Joseph Siino, CEO and founder of Ovidian Group, LLC, has managed IP deals collectively valued in the billions of dollars and provided strategic IP guidance to technology firms. Previously, he was Yahoo!'s first-ever Senior VP of global intellectual property.

Ryan Sullivan, Ph.D. is the President at Quant Economics, Inc., a professional services firm that leverages economics, finance, and statistics for strategic decision making, economic damages analysis and expert witness services.

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.

Eran Zur is head of the Intellectual Property Finance Group at Fortress Investment Group LLC that is pioneering a patent-based lending model. Previously, he was President and Co-Founder of RPX Corporation.

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