Law Seminars International Presents

Mining Patent Portfolios

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

October 29, 2004
The Mid-America Club in Chicago, IL
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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 lawyers, CFO’s, accountants, CIO’s and technology professionals. ~ Program Co-Chairs: Paul R. Gupta, Esq. and Michael O. Warnecke, Esq.

Agenda

Friday, October 29, 2004
8:00 am Registration and Continental Breakfast
8:30 am Introduction and Overview
  Paul R. Gupta, Esq., Program Co-Chair
 Mayer, Brown, Rowe & Maw LLP / New York, NY
  Michael O. Warnecke, Esq., Program Co-Chair
 Mayer, Brown, Rowe & Maw LLP / Chicago, IL
8:45 am Assessing a Patent Portfolio: Is There Any Gold to Mine?
  Relevant legal developments: The impact of recent cases on patent portfolio values and management strategies; the implications for patent prosecution strategies and implementing litigation strategies to protect and enhance patent values
  Edward D. Manzo, Esq.
 Cook, Alex, McFarron, Manzo, Cummings & Mehler, Ltd. / Chicago, IL
  The latest thinking on 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 Corporation / Dayton, OH
10:15 am Break
10:30 am Valuation
  Valuation has numerous meanings depending on the ultimate use of the results.  When mining a portfolio, how to insure that you have captured all the value of the technology and patents; tips to make sure you leave no money on the table
  Kathleen M. Kedrowski, CPA, Partner
 Ernst & Young LLP / Chicago, IL
11:15 am Special Issues for Small Companies
  Cost effective steps for commercializing a patent
  Judie D. Dziezak, Esq.
 Dziezak Law Firm, P.C. / Hoffman Estates, IL
12:00 pm Lunch (on your own)
1:15 pm Negotiating Strategies: How Do I Get the Most for the Gold
  Initial approach: what to say in demand letters; negotiating techniques; defeating stalling tactics; best negotiating value; resolving concerns about declaratory judgment actions; mediation; selecting the best forum; ITC and Section 337 proceedings
  Paul R. Gupta, Esq., Program Co-Chair
 Mayer, Brown, Rowe & Maw LLP / New York, NY
  The Willful Infringement Sword: Was an in-fringement opinion obtained once the alleged in-fringer became aware of the asserted patent? Was the opinion competent, timely, actually relied upon by appropriate management members of the defendant?
  Michael O. Warnecke, Esq., Program Co-Chair
 Mayer, Brown, Rowe & Maw LLP / Chicago, IL
2:45 pm Break
3:00 pm Litigation Strategies: What if I Must Fight for the Gold?
  Working with experts; developing an appropriate offensive or defensive strategy; analysis of possible damages recovery; consideration of potential counterclaims
  Margaret Daley, Esq.
 Navigant Consulting, Inc. / Chicago, IL
  Key elements of pre-litigation preparation for plaintiffs; pre-filing investigation; settlement before litigation; how to prepare for a successful conclusion
  Raymond P Niro, Esq.
 Niro, Scavone, Haller & Niro, Ltd. / Chicago, IL
  Key elements for defendants
  William H. Frankel, Esq.
 Brinks Hofer Gilson & Lione / Chicago, IL
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 | IN CLE 6.8 & 6.8 new lawyer (#0080717) | MO CLE 7.8 | NY CLE 7.5 (0 ethics, nontransitional) | OH CLE 6.5 (#000147787) | WA CLE 6.5 (# 126452) | WI CLE 7.5

Cost

Our complete Homestudy Course, consisting of a VHS or DVD recording and the written course materials, is available for $605. The written 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 (whichever is later).
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Faculty Bios

Paul R. Gupta, Program Co-Chair, is a partner at Mayer, Brown, Rowe & Maw LLP, focusing his practice on intellectual property, information technology, antitrust and other complex litigation. According to the Wall Street Journal, he is "a leading patent litigator." Mr. Gupta represents Fortune 500 and other clients throughout the nation in the following industries: computer, e-commerce, and outsourcing; telecommunications; financial services, including banking, insurance and securities; scientific, photographic and control equipment; chemicals; medical products; and energy.

Michael O. Warnecke, Program Co-Chair, is a partner at Mayer, Brown, Rowe & Maw LLP in the intellectual property area. Mr. Warnecke is first chair in numerous major patent litigation cases and particularly experienced in international patent and technology licensing. Mr. Warnecke was selected by the People's Republic of China trade delegation led by Vice Premier Li Lanqing to host a two-day seminar for American automotive and after-market companies and the Chinese delegation on the legal aspects of doing business in China.

Judie D. Dziezak is a member at Dziezak Law Firm, P.C. Ms. Dziezak practices in the areas of intellectual property, patents, trademarks, trade secrets, copyrights, licensing, unfair competition.

William H. Frankel is a partner at Brinks Hofer Gilson & Lione where he is the head of the Copyright Practice Group. Mr. Frankel concentrates his practice in the areas of patent, trademark, copyright, trade secrets and unfair competition litigation in jury and non-jury cases; international intellectual property litigation and counseling; and licensing.

Kathleen M. Kedrowski is a partner in Ernst & Young LLP's Investigative & Dispute Services practice where she leads the Intellectual Asset Solutions team. Ms. Kedrowski has testified numerous times as an expert on damages and valuation in numerous intellectual property and other business disputes. She also consults with companies on the strategic use and commercialization of intellectual assets.

Edward D. Manzo, is a founding member of Cook, Alex, McFarron, Manzo, Cummings & Mehler, Ltd. He is a registered patent attorney licensed by the U.S. Patent and Trademark Office. Mr. Manzo has decades of experience in intellectual property lawsuits and has litigated utility patents, design patents, trade dress, trademarks, trade secrets, and copyrights. He represents both plaintiffs and defendants at the trial court and appellate court levels.

Raymond P. Niro is the senior partner of the intellectual property litigation firm of Niro, Scavone, Haller & Niro, Ltd.. Mr. Niro has represented corporate and individual clients in hundreds of cases and has successfully tried patent, trademark, trade secret and copyright cases in courts throughout the United States

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.