Law Seminars International Presents: The Tenth Annual Conference on

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

March 26 & 27, 2015
4 Embarcadero Center 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

Law Seminars International is pleased to announce the tenth annual conference on patent monetization. In addition to recent case law, the seminar will explore patent strategies across the monetization spectrum.

Our faculty includes some of the country's leading patent strategists, buyers, market makers and experts on patent licensing and litigation, who will share their insights and experiences on patent portfolio development, analysis, sales and other transactions.

This conference is for companies looking to develop well-conceived strategies to grow and leverage their core assets. 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. Register soon for in-person attendance or live webcast attendance.

Program Co-Chairs: Ian Feinberg, Esq., Feinberg Day Alberti & Thompson LLP and William Goldman, Esq., Kudelski Group

What You Will Learn


Thursday, March 26, 2015

8:00 am

Registration Opens

8:30 am

Introduction and Overview

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

Ian Feinberg, Esq., Program Co-Chair
Feinberg Day Alberti & Thompson LLP / Palo Alto, CA

8:45 am

From the Nation's Capitol: A Big Year for Changes in Patentability

Policy making in the Congress and at the PTO

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

9:30 am


9:45 am

Case Law Update

Alice Corp. v. CLS Bank International: Impact of the major shift in patent eligibility law for software patents as the Federal Circuit and PTO apply the decision in litigation and patent review; other recent cases of importance

Ian Feinberg, Esq., Program Co-Chair
Feinberg Day Alberti & Thompson LLP / Palo Alto, CA

Other major decisions coming out of the Supreme Court and Federal Circuit, and issues remaining to be decided, with an impact on patentability

Theodore T. Herhold, Esq.
Singularity LLP / Redwood Shores, CA

11:00 am

Special Address: A View from the Bench on Patent Eligibility

How judges are putting together the legal pieces after Alice and other recent cases on patentable subject matter

The Hon. Paul Singh Grewal, Magistrate Judge
United States District Court, Northern District of California / San Jose, CA

11:30 am

Impacts on the Patent Marketplace: How Leading Companies are Responding to the Changes

Licensor and licensee perspectives

David L. Fligor, Vice President, Licensing
Kudelski Group / San Francisco, CA

Greg Lundell
Nagra / Mountain View, CA

12:30 pm

Lunch (on your own)

1:45 pm

Ease of Enforcement and Magnitude of Damages Awards as Determinative Factors in Establishing the Market Value of a Patent

Inter Parties Review (IPR) and other post-grant procedural options for accused infringers: Lessons learned from proceedings to date; implications for enforcement strategies

Erik R. Puknys, Esq.
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP / Palo Alto, CA

Trends in damages awards: Aside from some spectacular judgments in cell phone cases, what should you expect?

Richard Eichmann, Vice President, Intellectual Property and Securities
NERA Economic Consulting / San Francisco, CA

3:00 pm


3:15 pm

Changing Patent Markets

Lessons on valuation from recent transactions in the patent monetization marketplace

Yoni Shtein, Vice President
Fortress Investment Group LLC / San Francisco, CA

Selecting the assets: Adapting your approach to triage to get to the point where you can think about monetization models

Charles A. Eldering, Ph.D., President and Founder
TechPats / Doylestown, PA

Methodological options: Changes in valuation methods and the implications for structuring the transaction to fit the method

DeForest McDuff, Ph.D., Vice President
Intensity Corporation / San Diego, CA

5:00 pm

Continue the Exchange of Ideas: Reception for Faculty and Attendees

Sponsored by Feinberg Day Alberti & Thompson LLP


Friday, March 27, 2015

8:30 am

The Rise in the Relative Attractiveness of International Monetization

Update on progress towards a unified European patent court: What changes would there be to the substantive law? How would it function? Which countries have ratified the agreements and which have not?

Rufus Pichler, Esq.
Morrison & Foerster LLP / San Francisco, CA

An updated assessment of global differences in the effectiveness of enforcement mechanisms and remedies; impact of those differences on patent values

Marianne Schaffner, Esq.
Dechert LLP / Paris, FR France

10:00 am


10:15 am

Seller Due Diligence: How the Process Has/Should Change in Light of New Developments

Practical tips for identifying and addressing issues relating to inventor ownership, title problems, encumbrances, and restrictions arising from licenses; grant back licenses; pre-thinking ways to maintain privilege for communications in the sale process

Ryan Morrison, Esq.
Morrison Law PLLC / Bellevue, WA

Preparing to answer buyer questions: Title and file history review; identifying encumbrances; building a prospectus; articulating value; when does the duty to license flow downstream for standards essential patents?

Keith A. Walker, Vice President, Intellectual Asset Management
IBM / Albany, NY

Special issues for patents subject to FRAND obligations arising from participation in standards setting organizations or other forms of collaboration; other issues arising from collaborative activities

James C. Pistorino, Esq.
Perkins Coie LLP / Palo Alto, CA

11:45 am

Enforcement as an Incentive for Reluctant Buyers to Come to the Negotiating Table: Adapting Your Approach to the New Realities

Lessons from recent cases brought by operating companies vs. patent assertion entities (PAE's) and other non-practicing entities (NPE's)

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

How the radical changes in patentability and the new post-grant PTO review processes are affecting lawyer fee arrangements for both plaintiff and defense sides of patent litigation: What creative alternatives are firms trying?

Martin R. Lueck, Esq.
Robins Kaplan L.L.P. / Minneapolis, MN

12:45 pm

Evaluations and Adjourn



Regular tuition for this program is $1145 with a group rate of $860 each for two or more registrants from the same firm. For government employees, we offer a special rate of $765. For students, people in their job for less than a year, and public interest NGO's, 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.

Financial aid is available to those who qualify. Contact our office for more information.

Continuing Education Credits

Live 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, or help you apply for, CLE credits in other states and other types of credits.


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

Faculty Bios

Ian Feinberg, Program Co-Chair, 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.

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.

Richard Eichmann, Vice President, Intellectual Property and Securities Practices, NERA Economic Consulting, has expertise in damages modeling, econometrics, statistics, sampling, survey research methods and business valuation.

Charles A. Eldering, Ph.D., President and Founder of TechPats, is experienced in the electronics, telecommunications and optics industries as a researcher, engineer and inventor. He helps clients obtain and utilize patents by providing services in the technical, legal and business aspects of patents.

David L. Fligor, Vice President, Licensing, at Kudelski Group, leads licensing and business development activities of Kudelskiís Intellectual Property & Innovation Team with a focus on advanced television.

The Hon. Paul Singh Grewal, Special Address, Magistrate Judge at the United States District Court, Northern District of California, has presided over and settled criminal and civil cases in patent, employment, civil rights, commercial contract, trademark and federal misdemeanor cases.

Theodore T. Herhold, partner, Singularity LLP, has served as lead counsel on patent infringement and other IP cases for national and international clients such as Apple, Adobe, Oracle, Visa, Cisco, Sony, LeapFrog, Zappos, Huga, Epistar, Novatek, WebEx, Frog Design and Fogarty Engineering.

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

Timothy W. Lohse, partner at DLA Piper, 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.

Martin R. Lueck, partner, Robins Kaplan L.L.P., uses both the art and science of trial advocacy, trying and winning cases on both sides of the courtroom in the areas of IP, antitrust, commercial and business litigation.

DeForest McDuff, Ph.D., Vice President at Intensity Corporation, is an expert in applied business economics, with experience in consulting, finance and economic research. He has expertise in the economics of technology and intellectual property.

Ryan Morrison, Morrison Law PLLC, focuses on commercial IP transactions with an emphasis on patent due diligence. Previously, he was in-house counsel, focusing on patent acquisitions, sales and in-bound licensing agreements, at Intellectual Ventures.

Rufus Pichler, partner, Morrison & Foerster LLP, and member of the Technology Transactions Group, advises clients on complex patent licensing transactions, including patent exhaustion issues, patent sales and acquisitions, and IP aspects of M&A transactions. He has expertise in international IP and commercial law including European Union and German law.
Full bio and contact info for Rufus Pichler at Morrison & Foerster LLP

James C. Pistorino, partner in the Patent Litigation Practice, Perkins Coie LLP, represents corporate clients in intellectual property litigation, including patent, trademark, copyright and trade secret litigation.

Erik R. Puknys, partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, has litigated intellectual property disputes involving such diverse technologies as medical devices, biotechnology, pharmaceuticals, semiconductors, robotics, telecommunications and software.

Marianne Schaffner, partner, Dechert LLP, focuses on intellectual property with emphasis on national and pan-European patent litigation in the healthcare, pharmaceutical, chemistry, high technology, electronics and telecommunications sectors.

Yoni Shtein is Vice President at Fortress Investment Group LLC.

Keith A. Walker, Business Development Executive, IP Licensing, IBM Intellectual Property is responsible for due diligence and monetization of patent assets. Previously, he was Vice President at General Electric Company.

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