Law Seminars International Presents

An Important Two-Day Conference on

Effective Corporate Intellectual Property Programs

November 8 & 9, 2004
Le Meridien at Beverly Hills in Los Angeles, CA
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Who Should Order Homestudy

Attorneys and business executives involved with protecting and generating revenues from Intellectual Property

Why Order

"The future of the nation depends in no small part on the efficiency of industry, and the efficiency of industry depends in no small part on the protection of intellectual property."* In today’s intellectual capital-based economy, it is essential that a corporation establish an IP program that protects the corporation’s industrial future. More than ever in corporate history, establishing an effective IP program has become one of the most important business objectives for any organization attempting to achieve industry leadership. In this two-day seminar, some of the most noted intellectual property experts address key issues on how to assist a corporation in establishing an effective IP program. Among other things, this program will address the following: identifying those people in the corporation who should be involved in the program; identifying and protecting IP rights for maximum value and exploitation, including special considerations relating to patent, trade secret, trademark, and copyright strategies; implementing an effective IP licensing program; valuing a corporation’s IP in transactions; IP issues relating to mergers and acquisitions; how a corporation must protect, enforce and exploit its IP rights and avoid infringing the rights of others. ~ Program Co-Chairs: Yar R. Chaikovsky, Esq. and Kevin D. DeBré, Esq. * Rockwell Graphic Systems, Inc. v. DEV Industries, Inc. 925 F2d 174, 180 (CA7 1991)

What You Will Learn

Essential elements of a corporate IP program; Putting the program into action; Maximizing the value of innovations & brands; Managing licensing relationships; Mergers & acquisitions; Experiences of IP managers in various industries; Enforcing and defending IP rights

What Attendees Said

Excellent list of presenters, offering perspectives from wide range of disciplines Panel discussions were outstanding Exceeded my expectations

Agenda

Monday, November 08, 2004
8:00 am Registration and Continental Breakfast
8:30 am Introduction and Overview
  Kevin D. DeBre, Esq., Program Co-chair
 Greenberg Glusker Fields Claman Machtinger & Kinsella LLP / Los Angeles, CA
8:45 am Essential Elements of a Corporate IP Program
  Advantages of a comprehensive program across the enterprise; conducting IP audits; developing branding, copyright and trade secret protection strategies; developing an information security policy; managing a patent portfolio
  Christopher J. Palermo, Esq.
 Hickman Palermo Truong & Becker LLP / San Jose, CA
  Tips for managing outside counsel and advisors
  Jon Sobel, Esq.
 Folger Levin & Kahn LLP / San Francisco, CA
10:30 am Break
10:45 am Putting the IP Program into Action
  Creating a corporate IP department integrating strategies with objectives; assembling an effective IP management team; gaining management support and overcoming institutional resistance; setting expectations and financial goals; measuring results
  Joe Chernesky, Co-Founder and Managing Director
 IPotential, LLC / San Mateo, CA
11:45 am Lunch (on your own)
1:00 pm Maximizing the Value of Innovations
  Considerations in deciding whether to obtain patent protection or to try to keep a trade secret; effective approaches to considering patent filing and prosecution strategies
  Joseph T. FitzGerald, Esq., Vice President, Intellectual Property
 VERITAS Software Corporation / Mountain View, CA
  Advanced approaches: Mapping IP against competitors’ products; filing blocking patents; identifying industry trends for R&D planning; identifying potential licensors of complimentary technologies
  Steven S. Weiner, Esq.
 Davis Polk & Wardwell / Menlo Park, CA
2:15 pm Maximizing the Value of Brands
  Views and perspectives regarding brand maximization through the development of an intellectual property strategy
  Stuart L. Pardau, Esq., Senior Director, Business & Legal Affairs
 J.D. Power & Associates / Westlake Village, CA
  Marketer/brand-builder perspective: How a brand is built in the mind of a consumer; how new brands are created; examples of "overnight" successes; extensions of existing brands
  Lowell Wallace, Managing Director and Director of Marketing
 Brand Thirty Three / Torrance, CA
3:15 pm Break
3:30 pm Managing Licensing Relationships
  Setting up the relationship for smooth sailing; establishing milestones for review; special considerations for cross-licensing transactions; approaches for post-transaction accounting, auditing, enforcement; structuring graceful exits from relationships
  Kevin D. DeBre, Esq., Program Co-chair
 Greenberg Glusker Fields Claman Machtinger & Kinsella LLP / Los Angeles, CA
  Licensor perspective
  Ben W. Sheppard, CPA, CVA, MBA
 Sills & Adelmann / Los Angeles, CA
  Licensee perspective
  Russell P. Reeder, CEO And Chairman
 RightsLine, Inc. / Beverly Hills, CA
5:00 pm Reception for Faculty and Attendees
  Sponsored by Greenberg Glusker Fields Claman Machtinger & Kinsella LLP and Weil, Gotshal & Manges LLP

Tuesday, November 09, 2004
8:30 am Introduction and Overview
  Yar R. Chaikovsky, Esq., Program Co-chair
 Weil, Gotshal & Manges LLP / Redwood Shores, CA
8:45 am Industry Panel I: Video Games, Internet, Consumer Electronics & Automotive
  Michael D. Scott, Esq., Moderator
 Southwestern University School of Law / Los Angeles, CA
  Video Games
  Keith Boesky, Esq., Principal
 International Creative Management, Inc. / Beverly Hills, CA
  Internet
  Christopher W. Higgins, Esq., Patent Development Counsel
 Overture Services, Inc. / Pasadena, CA
  Consumer Electonics
  Andy Missan, Esq., Vice President and General Counsel
 Danger, Inc. / Palo Alto, CA
  Automotive
  Rhea Caras, Esq., Senior Counsel
 Nissan North America Inc. / Torrance, CA
10:15 am Break
10:30 am Industry Panel II: Computer Graphics, Media, Emerging Companies
  Richard L. Bernacchi, Esq., Moderator
 Irell & Manella LLP / Los Angeles, CA
  Software and Graphics
  Douglas J. Crisman, Esq., Director of Intellectual Property
 Silicon Graphics, Inc. / Mountain View, CA
  Media
  Samir B. Armaly, Esq., Vice President of Intellectual Property and Licensing
 Gemstar-TV Guide International, Inc. / Los Angeles, CA
  Emerging Companies
  Carl Kukkonen, Ph.D., CEO, Chief Technology Officer
 ViaSpace Technologies / Altadena, CA
12:00 pm Lunch (on your own)
1:15 pm Using IP to Position Your Company for the Future
  Using IP to become a more attractive target for future merger or acquisition
  Ronald S. Laurie, Esq., Managing Director
 Inflexion Point Strategy, LLC / Palo Alto, CA
  Setting up an IP acquisition program
  Doug Burke, MBA, Managing Director
 Montgomery & Co., LLC / Santa Monica, CA
  Valuation of IP assets in transactions
  John A. Amster, Esq., Managing Director
 ICMB Ocean Tomo / San Francisco, CA
3:15 pm Break
3:30 pm Enforcing and Defending IP Rights
  Preparing the threat letter: What to do before drafting the letter; what to include and what to leave out; due diligence
  Alan P. Block, Esq.
 Hennigan, Bennet & Dorman LLP / Los Angeles, CA
  Responding to the letter: Developing your initial strategy; approaches for obtaining opinion of counsel letter and avoiding treble damages; drafting the response
  James C. Brooks, Esq.
 Orrick, Herrington & Sutcliffe LLP / Los Angeles, CA
4:30 pm Adjourn

Cancellation

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

Continuing Education Credits

Law Seminars International automatically obtains CLE credit approval for the state in which a seminar is held. On request, we will apply for CLE credits in other states and other types of credits. Current credits status: CA MCLE13 | DE CLE 12.5 (#LSI110804EFFEC) | OR CLE 13.5 (#2104*213) | TX CLE 12.5 (000071701) | UT CLE 12.5 | WA CLE12.5 (#126001) |

Cost

Our complete Homestudy Course, consisting of a VHS or DVD recording and the written course materials, is available for $905. The course materials alone are available for $100. We will ship your homestudy order via UPS ground within two weeks after the seminar or the date we receive payment (which ever is later).
Order Homestudy

Faculty Bios

Yar R. Chaikovsky, Program Co-Chair, is Counsel in the IP Counseling Group at Weil, Gotshal & Manges LLP. He focuses his practice on patent, trade secret, copyright, Internet and corporate legal matters. Mr. Chaikovsky has extensive experience in exploiting and managing IP assets, litigation and dispute resolution, negotiating technological relationships and commercial transactions, developing licensing and acquisition programs, and creating worldwide IP portfolios.vsky served as Chief Patent Counsel for Yahoo! and General Counsel for Zaplet, Inc., an enterprise software company primarily funded by Kleiner, Perkins, Caufield & Byers.

Kevin D. DeBré, Program Co-Chair, is a partner at Greenberg Glusker Fields Claman Machtinger & Kinsella LLP where he specializes in helping companies realize the maximum value of intellectual property assets through commercial transactions and IP protection and enforcement strategies. Mr. DeBré is a patent lawyer and heads the firm’s Emerging Companies Practice.

John A. Amster is a Managing Director responsible for I|C|M|B Ocean Tomo’s M&A Advisory practice. Previously, Mr. Amster was Vice President and Secretary at InterTrust Technologies where he worked on a variety of large intellectual property transactions and held responsibility for the company’s M&A activity.

Samir B. Armaly is the Vice President, Intellectual Property and Licensing at Gemstar-TV Guide International, Inc., where he is responsible for managing and licensing the company’s worldwide intellectual property portfolio.

Richard L. Bernacchi, senior partner at Irell & Manella LLP, specializes in the legal, technical and strategic planning issues arising from computer hardware and software, multimedia, Internet, telecommunications and other advanced technologies, including development, acquisition, protection and exploitation of IP; acquisitions and mergers; licensing, distribution, Web site development, co-marketing and joint ventures.

Alan P. Block is a partner at Hennigan, Bennett & Dorman LLP. Mr. Block has extensive experience in all aspects of intellectual property law, including litigation through trial of patent, trade dress, and trademark matters, the successful prosecution of patents and trademarks, and licensing.

Keith Boesky, Principal of Boesky & Company, specializes in the migration of intellectual property to and from the video game business. Previously, he was president of Eidos Interactive, Inc. where his focus was expansion of properties, including "Tomb Raider" and "Lara Croft" into film, toys and publishing and the acquisition of new properties, such as "Final Fantasy" and "Fear Effect".

James C. Brooks is a partner at Orrick, Herrington & Sutcliffe LLP wher he is a member of the Intellectual Property Group. His current practice focuses primarily on intellectual property disputes, including patent, trade secret and antitrust lawsuits, between various Silicon Valley technology companies.

Doug Burke is Managing Director at Montgomery & Co., LLC where he co-manages the information technology and software practice area. Mr. Burke focuses on providing strategic merger and acquisition advice to information technology and enterprise software companies. Previously, he led Tucker Anthony Sutro & Co.’s private placement, emerging growth and software groups.

Rhea Caras is Senior Counsel at Nissan North America, Inc. concentrating on trademark and copyright matters. Ms. Caras manages Nissan’s US and Canadian trademark portfolio as well as related monitoring, policing and litigation and is a member of Nissan’s global trademark management team.

Joe Chernesky co-founded IPotential, LLC in 2004, an Intellectual Property Services Company that specializes in helping leading technology companies create and manage world-class IP strategies and execute IP-based transactions to gain optimal value from their IP assets. Previously, Mr. Chernesky served as Vice President of Boeing Management Company.

Douglas J. Crisman is Director of Intellectual Property at Silicon Graphics, Inc. Mr. Crisman is responsible for the patent program, patent licensing, IP litigation and disputes, trademark procurement and enforcement, legal issues related to open source software and IP transactions.

Joseph T. FitzGerald is Vice President, Intellectual Property, for VERITAS Software Corporation. Mr. FitzGerald is responsible for overseeing all aspects of the worldwide IP Program, including protection, enforcement, litigation, client counseling, and licensing.

Chris W. Higgins is Patent Development Counsel for Overture Services, Inc., which is now owned by Yahoo! Inc. Mr. Higgins is responsible for all worldwide patent prosecution and acquisition activities at Yahoo! Research Labs (formerly known as Overture R&D) and at Overture, including the recent acquisitions of Alta Vista and Fast technologies.

Carl Kukkonen is CEO and founding partner of ViaSpace Technologies. Dr. Kukkonen, who holds a Ph.D. in Theoretical Physics from Cornell University, spent 14 years with the Jet Propulsion Laboratory and was most recently Director of the Center for Space Microelectronics Technology and Manager of Supercomputing.

Ronald S. Laurie is a co-founder and Managing Director of Inflexion Point Strategy, LLC, an intellectual property investment bank formed in early 2004. Mr. Laurie has worked as a software engineer and as an IP lawyer advising computer, communications, semiconductor, media and financial services companies on IP strategy, a subject he has taught at Stanford and Boalt (UC-Berkeley) law schools.

Andy Missan, Vice President and General Counsel of Danger, Inc., is responsible for strategic contracts, IP management and enforcement, financing transactions, employment issues, and general corporate matters.

Christopher J. Palermo is a partner at Hickman Palermo Truong & Becker LLP where he concentrates his practice on patent, trademark, licensing and technology development matters advising companies in networking, telecommunications, object-oriented software, and the World Wide Web.

Stuart L. Pardau is Executive Director at J.D. Power and Associates where he directs legal and regulatory affairs. Mr. Pardau’s experience includes the transactional, litigation, regulatory/compliance, privacy, international and IP areas. He has served as the lead attorney on major acquisitions, handling negotiating terms to drafting purchase agreements and due diligence.

Russell P. Reeder is CEO & Chairman and Founder of RightsLine, Inc. Mr. Reeder spent 12 years in information technology, both in sales management and software development. He led the sales teams for several ERP and point solution vendors, including holding executive positions at Oracle Corp.

Michael D. Scott is a Professor of Law at Southwestern University School of Law and a national authority who is considered one of the "pioneers"in computer and high-tech law and teaches primarily in the intellectual property and related areas. Formerly a partner with the law firm of Perkins Coie, Professor Scott has experience representing high-technology clients.

Ben W. Sheppard is the Director of Litigation Support for Sills & Adelmann, an accounting firm which specializes in performing profit participation audits on behalf of rights holders in motion picture and television projects. Mr. Sheppard offers consulting services including litigation support, licensing management and valuation. His career has included several years in "Big 4" accounting firms and within major entertainment studios.

Jon Sobel is a partner with the firm of Folger Levin & Kahn LLP. Prior to joining the firm, Mr. Sobel was the Senior Vice President, General Counsel & Secretary of Yahoo where he managed the company’s legal affairs, IP, and policy and government affairs.

Lowell Wallace is both Managing Director and Director of Marketing of Brand Thirty-Three, a branding agency. Previously, he served as a consultant to companies such as Brown-Forman, Johnson Controls and Preferred Hotels & Resorts in the areas of new products and branding; and to agencies including BBDO and Foote, Cone & Belding in new business development.

Steven S. Weiner is a member of Davis Polk & Wardwell’s Corporate Department, spearheading the firm’s intellectual property practice. He has in-depth experience advising technology and media companies and their stakeholders on complex, business-critical IP matters.