Law Seminars International Presents

A must-attend workshop for general counsel, IP lawyers, CFO's, CPA's, CIO's and technology professionals

Mining Your Patent Portfolio

Legal and business strategies for maximizing the value of a patent portfolio

May 17, 2004
Hotel Cosmo in San Francisco, CA
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Who Should Order Homestudy

Lawyers and business executives involved in managing patent portfolios

Why Order

"Senior management at many companies know that their Intellectual Property portfolios can be developed into major profit centers. This is true for companies in all industries, and those who are not developing and exploiting their IP are being left behind by their competitors. What documentation, legal, marketing and valuation techniques will allow your company to maximize the potential value of a patent portfolio? A faculty of nationally-recognized experts will discuss proven legal and business strategies for developing and mining your patent portfolio to maximize the return from those assets. This is a must-attend course for general counsel, IP counsel, IP lawyers, CFO’s, accountants, CIO’s and technology professionals."~ Program Co-Chairs: Paul R Gupta, Esq. and Philip J. McCabe, Esq.

Agenda

Monday, May 17, 2004
8:30 am Introduction and Overview
  Paul R. Gupta, Esq., Program Co-Chair
 LeBoeuf, Lamb, Greene & MacRae L.L.P. / New York, NY
  Philip J. McCabe, Esq., Program Co-Chair
 Kenyon & Kenyon / San Jose, CA
8:45 am Assessing a Patent Portfolio: Is There Any Gold to Mine?
  Techniques for sorting patents into priority categories; analyzing patent scope; weighing validity considerations; creating a "short list" of key patents
  Christopher Ricci, Esq., Chief Licensing Counsel
 NCR Corportation / Dayton, OH
  Analyzing your portfolio for weaknesses and gaps; filling in the missing pieces; techniques for soliciting invention disclosures from employees; approaches to acquiring patents from companies or brokers
  Joby A. Hughes, Esq., Sr. VP, National Practice Leader, Intellectual Asset Mgmt.
 Marsh Risk Consulting / Houston, TX
10:15 am Break
10:30 am Negotiating Strategies: How Do I Get the Most for the Gold?
  Initial approach; what to say in "demand" letters; key negotiating techniques; how to defeat "stalling" tactics; how to get the best value from the negotiation; resolving concerns about declaratory judgment actions; advantages of mediation;
  Paul R. Gupta, Esq., Program Co-Chair
 LeBoeuf, Lamb, Greene & MacRae L.L.P. / New York, NY
  Initial approach; what to say in “demand” letters; key negotiating techniques; how to defeat “stalling” tactics; how to get the best value from the negotiation; resolving concerns about declaratory judgment actions; advantages of mediation;
  William A Tanenbaum, Esq.
 Kaye Scholer LLP / New York, NY
12:00 pm Lunch
1:15 pm Corporate and Venture Capitalist Perspectives: How Do I Use the Gold?
  Analysis of industry participants; strategies to get the best return; use of patents as leverage in cross-license negotiations; analysis of literal and doctrine of equivalents infringement under current Federal Circuit law
  William G. Becker, Esq., Deputy General Counsel—Intellectual Property
 3Com Corporation / Santa Clara, CA
  Mark Gorenberg
 Hummer Winblad Venture Partners / San Francisco, CA
2:45 pm Break
3:00 pm Litigation Strategies: What if I Must Fight for the Gold?
  Key elements of pre-litigation preparation; planning and budgeting the case; the importance of the "Markman" claim construction hearing; how to conclude the case efficiently.
  Philip J. McCabe, Esq., Program Co-Chair
 Kenyon & Kenyon / San Jose, CA
  Richard J. Lutton, Jr., Chief Patent Counsel
 Apple Computer, Inc. / Cupertino, CA
  Working with experts; developing an appropriate offensive or defensive strategy; analysis of possible damages recovery; consideration of potential counterclaims
  Catherine F. de Madrid
 Navigant Consulting / San Francisco, 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 self-certifies CLE credits for Washington, California, and Alaska. For other locations, we automatically seek CLE credit approval for the state in which a seminar is held. On request, we will apply for credits from other bar associations or the accrediting bodies for other professions. The current credits status for this program is CA MCLE 6.75 | NY CLE 7.5 (0 ethics, nontransitional) | TX CLE 6.5 # (000064146) | WA CLE 6.5 (#118464)

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

Paul R. Gupta, Program Co-Chair, a partner at LeBoeuf, Lamb, Greene & MacRae, L.L.P., principally concentrates on intellectual property, IT, and antitrust litigation, as well as licensing & technology transfer matters. According to The Wall Street Journal, he is "a leading patent litigator." Further information about Mr. Gupta can be found in Who’s Who in the World.

Philip J. McCabe, Program Co-Chair, is a partner at Kenyon & Kenyon and works primarily in the field of patent and trademark litigation and counseling and has extensive experience in rendering validity and infringement opinions. He has worked on numerous patent infringement actions for major computer hardware and software clients, particularly companies in the Silicon Valley area.

William G. Becker is Deputy General Counsel - Intellectual Property for 3Com Corporation’s Santa Clara office where he is responsible for all IP programs for 3Com and its subsidiaries worldwide.

Catherine F. de Madrid is a Director in Navigant Consulting’s San Francisco office. Ms. Madrid has experience in both IP damages analysis and IAM consulting. Her IP dispute work has involved various lost profit and reasonable royalty analyses. Her IAM work has included a variety of strategic and tactical areas, including commercialization analysis, portfolio mining, technology scoring and licensee identification.

Mark Gorenberg is a partner at Hummer Winblad Venture Partners. Mr. Gorenberg has spent over 20 years in software development and has been a software manager in both large corporations and entrepreneurial environments. Prior to joining Hummer Winblad Venture Partners, he was a Senior Software Manager in advanced product development at Sun Microsystems. His positions have included direct experience in a number of software technologies.

Joby A. Hughes is Senior Vice President, National Practice Leader and Intellectual Asset Managing Consultant at Marsh USA, Inc. Prior to joining Marsh, he founded and was President of Litigation Risk Management, Inc. (LRM). Prior to founding LRM, Mr. Hughes was an intellectual property attorney for 10 years with a practice focusing on both licensing and litigation.

Richard J. Lutton, Jr. is Chief Patent Counsel at Apple Computer, Inc. He is involved in all aspects of patent development, licensing and litigation for Apple’s hardware and software business. Prior to joining Apple, he was an Assistant General Counsel for Intellectual Property at Sun Microsystems, Inc.

Christopher Ricci is currently Chief Licensing Counsel for NCR Corporation where he is charged with generating revenue from NCR’s intellectual property portfolio along with associate P&L responsibilities. Prior to joining NCR, Mr. Ricci was General Counsel, Vice President of Finance and Human Resources, and Secretary for Clearway Technologies, LLC.

William A. Tanenbaum is the international chair of the Technology, Intellectual Property & Outsourcing Group at Kaye Scholer LLP. His practice focuses on technology transactions, intellectual property protection and IP and technology litigation, with a particular emphasis on software licensing, outsourcing, privacy and data protection, and establishing IT and IP infrastructures in China.