Law Seminars International Presents

A One-Day Workshop on

Advanced IP Licensing Transactions

Business and Legal Issues

September 15, 2004
Sheraton Palo Alto Hotel in Palo Alto, CA
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Who Should Order Homestudy

In-house counsel, IP lawyers, CFOs, CPAs, CIOs and technology professionals

Why Order

"Agreements for the licensing of intangible assets involve many unique issues. Attorneys and executives involved in licensing transactions need a solid working knowledge of the business and legal factors that must be dealt with when negotiating license agreements. This workshop convenes leading regional and national licensing professionals to discuss the business and legal issues that arise in licensing transactions, including developing licensing strategies, international licensing factors, patent exhaustion, assertive licensing and open source licensing." ~ Program Co-Chairs: Allen J. Baden, Esq. and Jeffrey A. Miller, Esq.

What You Will Learn

Licensing strategies International and Cross-Border Licensing Prosecutor and Litigator Cooperation in Licensing Transactions Patent Exhaustion and Licensing Assertive Licensing Open Source Licensing

Agenda

Wednesday, September 15, 2004
8:00 am Registration and Contintental Breakfast
8:30 am Introduction and Overview
  Jeffrey A. Miller, Esq., Program Co-Chair
 Orrick Herrington & Sutcliffe LLP / Menlo Park, CA
  Allen J. Baden, Esq., Program Co-Chair
 Kenyon & Kenyon / San Jose, CA
8:45 am Licensing Strategies
  Developing a relevant IP strategy
  Ronald Epstein, Esq., Chief Executive Officer
 Ipotential LLC / San Mateo, CA
  Buying patents instead of licensing them
  Don Merino, Ph.D., General Manager, Intellectual Property
 Intellectual Ventures, LLC / Bellevue, WA
10:15 am Break
10:30 am International and Cross-Border Licensing
  Effect of the new European exemption regulations on litigation in Europe
  William K. Wells, Esq.
 Kenyon & Kenyon / Washington, DC
  Special issues in international and cross-border transactions
  Kathy Woeber Gardner, Esq.
 Orrick Herrington & Sutcliffe LLP / San Francisco, CA
12:00 pm Lunch (on your own)
1:15 pm Prosecutor and Litigator Cooperation in Licensing Transactions
  Bringing together the role of the patent prosecutor’s technical expertise with issues from a litigator’s perspective; drafting language to minimize vulnerability to litigation
  Burt Magen, Esq.
 Vierra Magen Marcus Harmon & DeNiro LLP / San Francisco, CA
  Bringing together the role of the patent prosecutor’s technical expertise with issues from a litigator’s perspective; drafting language to minimize vulnerable to litigation
  Jeffrey A. Miller, Esq., Program Co-Chair
 Orrick Herrington & Sutcliffe LLP / Menlo Park, CA
2:45 pm Break
3:00 pm Assertive Licensing
  Proactive licensing practice; infringement analysis, documentation and negotiation; client specific strategy development.
  Gary S. Morris, Esq.
 Kenyon & Kenyon / Washington, DC
3:45 pm Open Source Licensing
  Analysis of the GPL GNU license; Analysis and discussion of the SCO-IBM litigation involving open source
  Richard C. Hsu, Esq.
 Townsend and Townsend and Crew LLP / Palo Alto, CA
  Michael Krieger, Esq, PhD
 Willenken Wilson Loh & Stris, LLP / Los Angeles, CA
  Jason Wilson, Esq.
 Willenken & Wilson Loh & Stris, LLP / Los Angeles, CA
5:00 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 MCLE 6.75 | NY CLE 7.5 (no ethics, non-transitional) | WA CLE 6.5 (#124184)

Cost

Our complete Homestudy Course, consisting of a VHS or DVD recording and the written course materials, is available for $605. 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

Allen J. Baden, Program Co-Chair, is a partner in the Silicon Valley office of Kenyon & Kenyon, and chair of the Trademark and Copyright, and Internet and Information Technology practice groups. He has extensive experience in international IP property rights, licensing and litigation, especially with personal computers.

Jeffrey A. Miller, Program Co-Chair, is a partner in theSilicon Valley office of Orrick Herrington & Sutcliffe LLP, where he is a member of the Intellectual Property Group. He has over 10 years of experience in all aspects of patent litigation, patent prosecution (both foreign and domestic), licensing, & other agreements. He has been involved in all facets fo civil litigation for patent infringements.

Ronald Epstein, is vice president and General Counsel responsible for the full range of legal affairs for the company, including intellectual property policies, contracts, corporate governance, disputes and corporate transactions. Prior to joining Brocade, Epstein was Director of Licensing at Intel Corporation where he was responsible for setting intellectual property licensing strategy and policy and managed Intel's patent licensing activities. Before Intel, Epstein was an associate at Wilson, Sonsini, Goodrich and Rosati, in the firm's Technology Transactions group. Epstein holds a juris doctorate from Boalt Hall School of Law at the University of California Berkeley. While at Berkeley, he was managing editor and editor in chief of the High Technology Law Journal (now known as the Berkeley Technology Law Journal). He has a bachelor's in Zoology and Anthropology from Duke University.

Kathy Woeber-Gardner is a partner at Orrick Herrington & Sutcliffe LLP where she focuses her practice on cross-border corporate and finance transactions, venture capital investing, acquisitons and joint ventures. She has extensive experience with Fortune 100 company transactions in Asia, Europe and Latin America.

Richard C. Hsu is a partner the Palo Alto office of Townsend and Townsend and Crew LLP and Chair of the Technology Licensing Practice Group. He has extensive experience in licensing, development, acquisitons and partnering agreements. He counsels clients on innovative business and IP strategies. He is former General Counsel at Cyrano Systems, and has represented over 100 venture backed startup tech companies. He is a frequent lecturer, published a book on patents, and written for numerous publications.

Michael J. Kreiger. PhD., J.D. is of counsel with Willenken Wilson Loh & Stris, and a lecturer on computer sciences at UCLA. He has spent 20 years practicing high technology and IP law, emphasizing strategic counseling, litigation strategy and preventative methods. His clients range from start-ups to industry leaders, governments and the United Nations. At UCLA he launched the nation’s first entrepreneurship/computer science course. He has been a Fulbright Scholar and a National Science Foundation recipient.

Burt Magen is a founder of the San Francisco IP law firm Vierra Magen. His practice emphasizes patent prosecution in the technology areas of computer architecture and organization, network and internet technologies, software, graphics, operating systems, peripherals, semiconductor materials, television and video, and medical equipment. He has extensive experience in and has written on advanced claim drafting and patent prosecution amendment writing. His pre-law background is in electrical engineering.

Don Merino is General Manager, Intellectual Property, at Intellectual Ventures where he focuses on a variety of projects relating to invention and innovation. Prior to joining Intellectual Ventures, Dr. Merino spent 4 years at Intel Corporation where he was Director, Strategic Business Development. In this position, Dr. Merino was responsible for managing the Intel licensing program.

Gary S. Morris is a partner in Kenyon & Kenyon LLP’s Washington D.C. office where he specializes in identifying and resolving patent, trademark and copyright issues that arise in the field of computer science. He has counseled both large and small companies with regard to software patents, licensing and trademarks in the fields of digital rights management, cryptography, trusted computing and network services.

William K. Wells is a partner in Kenyon & Kenyon's Washington DC office. He has responsible for several major US and foreign client's patent, trademark and copyright portfolios, and for establishing a proprietory position in the US and overseas. Most activity relates to utility and design patents. Significant litigation includes a landmark misuse and license case decided by the U.S. Supreme Court. He appears in various U.S. Federal Courts and the International Trade Commission.

Jason Wilson is partner in the trail frim Willenken Wilson Loh & Stris. He litigates and tries IP and commercial disputes for businesses ranging from technology transfer start-ups to Fortune 500 clients, including Hilton Hotels and Taco Bell. Mr. Wilson speaks frequently on open source software litigation issues and advises corporate clients on how to reduce their open source sonfware litigation risks.