Law Seminars International Presents

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

Mining Patent Portfolios

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

September 13, 2004
Renaissance Seattle Hotel in Seattle, WA
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Who Should Order Homestudy

Lawyers and business people involved in managing patent portfolios

Why Order

"Senior management at many companies know 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: Philip P. Mann, Esq. and Toussaint L. Myricks,Esq.

What You Will Learn

An overview of how compalnies successfully leverage their portfolios for value Emerging financial concepts in IP patent assett management Developing objectives and strategies for maximizing value Strategic management of an Intellectual Property patent portfolio

Agenda

Monday, September 13, 2004
8:00 am Registration and continental Breakfast
8:30 am Introduction & Overview
  Phillip P. Mann, Esq., Program Co-Chair
 Mann Law Group / Seattle, WA
  Toussaint L. Myricks, Esq., Program Co-Chair
 Vulcan, Inc. / Seattle, WA
8:45 am An Overview of How Companies Successfully Leverage Their Portfolios for Value
  How leading companies are realizing value from their portfolios: A view from the frontlines on the best practices relating to IP value extraction, and a business perspective on portfolio mining
  Donald Merino, PhD., Director of Acquisitions
 Intellectual Ventures, LLC / Bellevue, WA
  Joe Siino, Esq., Managing Director
 Inflexion Point Strategies, LLC / Palo Alto, CA
  How leading companies are realizing value from their portfolios; A review of the frontlines on the best proactices relating to IP valuation extraction, and a business perspective on portfolio mining
  Howard A Skaist, Esq.
 Berkely Law & Technology Group / Beaverton, OR
10:15 am Break
10:30 am Emerging Financial Concepts in IP Patent Asset Management
  Leveraging intellectual property: The monetization and evaluation of a patent portfolio, and the evolution of patents as an alternative asset class; Intellectual asset equity management.
  James E. Malackowski, Esq., President and CEO
 ICMB Ocean Tomo / Chicago, IL
  Placing IP assets in their true perspective: IP as primarily legal assets requiring legal expertise seasoned with business knowledge to accurately assess their value in different contexts
  Karl Jorda, Esq., Director, Germeshausen Center
 Franklin Pierce Law Center / Concord, NH
12:00 pm Lunch (on your own)
1:15 pm Developing Objectives and Strategies for Maximizing Value
  Determining which patents to exploit to develop significant revenue; how to position those patents
  David V. Carlson, Esq.
 Seed IP Law Group / Seattle, WA
  Assertive licensing positioning; contingent fee patent licensing; strategic considerations of patent portfolio litigation risk analysis
  Phillip P. Mann, Esq.
 Mann Law Group / Seattle, WA
2:45 pm Break
3:00 pm Strategic Management of an Intellectual Property Patent Portfolio
  Developing a relevant IP portfolio straregy; anlyzing key patent portfolios; identifying high value products with their patents; developing an appropriate offensive and defensive strategy; building and managing a strategic portfolio
  Toussaint L. Myricks, Esq.
 Vulcan, Inc. / Seattle, WA
  Developing a relevant IP portfolio strategy; Ana-lyzing key patent portfolios; Identifying high value products with their patents; Developing an appropriate offensive and defensive strategy; Building and managing a strategic portfolio
  Ronald Epstein, Esq., CEO
 Ipotential / San Mateo, CA
  Outsourcing IP development; creating and managing a team of outside expets; solving future "choke point" problems
  Ronald Laurie, Esq., Vice-President and General Counsel
 Inflexion Point Strategy, LLC / Palo Alto, 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: WA CLE 6.5 (#124236) | CA MCLE 6.75 | NY CLE 7.5 (0 ethics, non-transitional) OR CLE 7 (#2104*205)

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

Philip P. Mann, Program Co-Chair, is the founder of The Mann Law Group, where he focus on counseling and execution of strategic patent management issues. Prior to the Mann Law Group he was a member of the IP law firm of Christensen O’Conner Johnson & Kindness, where he was a trial lawyer on patent and other intellectual property disputes. He has served as plaintiff’s and defendant’s counsel in numerous patent infringement matters involving medical electronic devices, software, digital process devices, and a variety of electronic and mechanical devices. He is a registered patent attorney and has a background in electrical engineering research and design.

Toussaint Myricks is chief in-house patent counsel for Vulcan Inc. where he has lead responsibility for developing and managing the company’s worldwide intellectual property portfolio. He is a registered patent attorney with the U.S. Patent and Trademark Office and a registered patent agent with the Canadian Intellectual Property Office. He has significant experience in software and technology licensing, patent application preparation and prosecution, intellectual property valuation, technology valuation, and the management of intellectual property portfolios.

David V. Carlson is a partner with the Seed IP Law Group and specializes in electrical and electronic patent matters, including licensing and litigation. Prior to joining Seed IP, he was a patent examiner for the U.S. Patent and Trademark Office. He previously worked as a patent attorney with Texas Instruments, where he specialized in obtaining U.S. and Japanese patent protection on semiconductor devices, computer design, and electronic systems. He is a faculty member of the University of Washington School of Law where he teaches a course on patent preparation and prosecution. He also lectures each summer for CASRIP (Center for Advanced Study and Research on Intellectual Property) on advanced patent preparation and prosecution topics.

Ronald Epstein is vice president & 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.

Karl Jorda is the David Rines Professor of Intellectual Property Law and Industrial Innovation and Director of the Germeshausen Center at the Franklin Pierce Law Center. Professor Jorda was a corporate patent and trademark lawyer at Miles Laboratories (now Bayer) in Indiana, and the Chief IP Counsel at CIBA-GEIGY Corporation (now Novartis) in New York. He is a former President of the New York Intellectual Property Law Association and the Pacific Intellectual Property Association (PIPA), as well as the recipient of the 1989 PIPA Medal for "Outstanding Contributions to International Cooperation in the Intellectual Property Field." Professor Jorda is also a former member of the Board of Directors, Council, or Executive Committee of: the American Intellectual Property Law Association; the American Bar Association, Intellectual Property Section; the Association of Corporate Patent Counsel; Intellectual Property Owners; the International Trademark Association; and the International Intellectual Property Law Association (AIPPI United States). Other professional activities include heading up several delegations of US patent counsel at Japanese Patent Office meetings, serving as consultant to Indonesian and Bulgarian Patent Offices, and participating in World Intellectual Property Organization symposia around the world.

Ron Laurie, is a managing director of Inflexion Point Strategy, LLC and has worked in Silicon Valley for over 40 years, first as a software engineer and then as one of the nation's top intellectual property lawyers. As an attorney, Ron advised computer, communications, semiconductor, media and financial services companies on IP strategy—a subject he taught at Stanford and U.C. Berkeley law schools—with a focus on the strategic use of IP assets in complex business transactions. He was a founding partner of the Silicon Valley offices of Skadden Arps and Weil Gotshal, and led IP teams in some of the largest technology deals in history, worth over $50 billion. Ron has been listed in virtually every peer review survey of leading IP lawyers including Top 25 California IP Lawyers, Best Lawyers in America, America's Leading Business Lawyers, Global Counsel 3000, and International Who's Who of Business Lawyers.

James E. Malackowski is the President and Chief Executive Officer of I|C|M|B Ocean Tomo, as well as a current and prior Director of numerous corporate entities, both public and private. He is a Past President of The Licensing Executives Society, a Trustee for the National Inventors Hall of Fame, a Director of the International Intellectual Property Institute, and a former Resident Advisor for the U.S. Department of Commerce and U.S. Information Agency on matters relating to intellectual capital. In 1988, he co-founded IPC Group, Inc.. Mr. Malackowski is an internationally recognized leader in the field of intellectual capital equity management as well as a noted expert in business valuation and intellectual property strategy. Prior to forming I|C|M|B Ocean Tomo, he was President and Chief Executive Officer of Duff & Phelps Capital Partners. His expertise extends to intangible asset portfolios as well as business segments and complete entities, and hidden intellectual capital within the Minority business community.

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.

Joe Siino is a managing director of Inflexion Point Strategy, LLC and has spent 20 years in the high tech intellectual property business, first as an engineer and later as a lawyer and business counselor. Joe has served as lead IP strategist, and managed IP deals worth hundreds of millions of dollars, for Silicon Valley's top technology companies. He founded the IP Strategy practice at Brobeck, where he managed more than 50 lawyers and was listed as one of the world's leading lawyers by Chambers Global.

Howard Skaist is the founder of Berkeley Law & Technology Group, LLC, an intellectual property law firm specializing in patent procurement and counseling clients on patent related matters with offices in Oregon and Washington. He was formerly Director of Patents for Intel Corp., where he developed and oversaw patent management and legal strategies. He is an adjunct professor of patent law at Boalt Hall Law School in California and Willamette School of Law in Oregon.