Law Seminars International Presents

An Advanced One-Day Workshop on

Patent Issues in Licensing Transactions

for attorneys and business people who are not patent specialists

April 5, 2004
Canterbury Hotel in San Francisco, CA
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Who Should Order Homestudy

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

Why Order

"Patents are a unique form of Intellectual Property that play a vital role in many types of technology licensing transactions. This program is designed for attorneys and business people involved in licensing transactions who are not patent specialists. It will provide essential insights into the special business and legal issues that arise when patent licenses are part of a more comprehensive transaction involving copyrights, trade secrets, and other forms of Intellectual Property. The program starts with a discussion of straight patent licensing issues and then addresses the complexities that arise with hybrid patent licensing. It then moves into consideration of three particularly problematic areas for non-specialists: Patent misuse and exhaustion, the uncomfortable intersection of antitrust law and patent protection in technology transactions, and international transactions. We hope you'll take advantage of this opportunity to gain key insights from a very experienced and diverse group of experts in patent licensing transactions." ~ Program Co-Chairs: Richard F. Cauley, Esq. and I. Neel Chatterjee, Esq.

Agenda

Monday, April 05, 2004
8:30 am Introduction and Overview
  Richard F. Cauley, Esq., Program Co-Chair
 McDermott Will & Emery / Palo Alto, CA
  I. Neel Chatterjee, Esq., Program Co-Chair
 Orrick, Herrington & Sutcliffe LLP / Menlo Park, CA
8:45 am Perspectives on the Business of Licensing Patents
  Factors to consider in deciding whether a patent license is the best approach; setting the business objectives; integrating business and legal considerations into an effective negotiating strategy; determining the best structure for the deal; looking for
  Taraneh Maghame, Esq., Senior Counsel - Intellectual Property Section
 Hewlett Packard Company / Cupertino, CA
  Laura Peter, Esq., Director of Intellectual Property
 Foundry Networks / San Francisco, CA
9:45 am Valuations of Patents in Licensing Transactions
  What are the common valuation models? How can you come up with economic estimates at reasonable expense? When do you want to go for a full litigation-style damages estimation?
  Brian W Napper, Esq., Global Principal
 Deloitte & Touche USA LLP / San Francisco, CA
10:30 am Break
10:45 am Key Issues, Deal Points, and Drafting Tips for Patent Licenses
  Straight patent licensing (exchange of a license for cash); narrow cross licensing as a business transaction; broad cross licensing as a limited peace treaty
  Yar R. Chaikovsky, Esq
 Weil, Gotshal & Manges LLP / Redwood Shores, CA
  Hybrid patent licensing: Legal and business perspectives on how to correctly do a mix of patents, trade secrets, copyrights, and trademarks
  Sanjay Prasad, Esq, Chief Patent Counsel
 Oracle Corporation / Redwood Shores, CA
12:15 pm Lunch
1:30 pm Patent Misuse and Exhaustion
  Spotting potential misuse problems in license transactions, handling license issues arising from standards activities, avoiding exhaustion of rights or implied license through sale or license of components
  Philip J. McCabe, Esq.
 Kenyon & Kenyon / San Jose, CA
2:15 pm Intersection of Antitrust Law and Patent Licensing
  Anti-trust lawyer’s perspective on what ties are illegal and why it is a much more uncomfortable intersection than the intersection in other technology transactions.
  Evangelina Almirantearena, Esq.
 Howrey Simon Arnold & White LLP / Menlo Park, CA
  IP Lawyer's Perspective
  Brian C. Burr, Esq.
 Orrick Herrington & Sutcliffe LLP / Menlo Park, CA
3:30 pm Break
3:45 pm International Patent Transactions
  The European Union: New technology transfer licensing competition rules
  Duncan Curley, Esq., Ph.D.
 McDermott Will & Emery / London, UK
  Pacific Rim (or EU)
  Shannon M. Hansen, Esq.
 Kirkland & Ellis 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 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 (non-transitional) | WA CLE 6.5 (#116929)

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

Richard F. Cauley, Program Co-Chair, is a partner in the Intellectual Property Department, of McDermott, Will & Emery. Mr. Cauley is an intellectual property and business trial lawyer who focuses his practice on intellectual property law and litigation, antitrust litigation and counseling and commercial litigation. He specializes in patent and licensing litigation, as well as antitrust litigation and counseling.

I. Neel Chatterjee, Program Co-Chair, a litigation and intellectual property partner at Orrick, Herrington & Sutcliffe LLP, concentrates his practice on complex litigation for technology companies. He has recognized expertise on the Digital Millennium Copyright Act and the Communications Decency Act. He also has significant experience in litigation and trial of extremely complex disputes wherein simplifying difficult technical concepts and effective case management are a key to success.

Evangelina Almirantearena is a partner at Howrey Simon Arnold & White, LLP where she focuses on antitrust and intellectual property litigation.

Brian C. Burr, a partner in Orrick, Herrington & Sutcliffe LLP, is a member of the firm’s Corporate Department. He leads Orrick’s technology transactions practice in the Silicon Valley and San Francisco offices. He represents companies in a wide variety of technology transactions, including joint ventures, development agreements, acquisitions, licensing arrangements, outsourcing and asset sale agreements. He also counsels clients in the areas of copyright, patent, trade secret, trademark, antitrust and marketing matters.

Yar R. Chaikovsky is Counsel in the IP Counseling Group at Weil Gotshal & Manges LLP. He specializes in providing legal advice to various companies involved in a wide range of technologies, with a particular expertise in patent, trade secret, copyright, Internet and corporate legal matters.

Duncan Curley is a partner in the European Intellectual Property Group of McDermott, Will & Emery. His practice focuses on intellectual property and licensing disputes and he is familiar with all forms of dispute resolution, including arbitration and mediation. Dr. Curley acted for the Claimant in one of the UK’s leading cases on anti-trust defences to patent infringement claims (Sandvik v Pfiffner) and he has successfully represented a client in its anti-trust defense to a breach of contract claim, which involved detailed consideration of the European Commission’s Technology Transfer Block Exemption Regulation.

Shannon M. Hansen, an intellectual property partner with Kirkland & Ellis LLP, is admitted to practice before the U.S. Patent and Trademark Office and has worked on complex commercial litigation. She has represented clients in a variety of businesses including biotechnology, telecommunications, television technology, software and chemical industries.

Taraneh Maghame is Senior Counsel in the Intellectual Property Section of Hewlett-Packard Company. Before the merger between Compaq Computer Corporation and Hewlett-Packard, she was Senior IP Counsel at Compaq, where she managed all of the company’s intellectual property litigation worldwide. Prior to joining Compaq, Ms. Maghame was associated with Brobeck, Phleger & Harrison in Palo Alto and Perkins Coie in Seattle, where she specialized in intellectual property litigation, licensing and counseling.

Philip J. McCabe, a partner at Kenyon & Kenyon, has worked 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.

Brian W. Napper is the Global Principal in Charge of Intellectual Property Services at Deloitte & Touche USA LLP. Mr. Napper has 20 years of experience in advising clients as to the valuation, commercialization, licensing, and management of their intellectual assets.

Laura A. Peter is the Director of Intellectual Property for Foundry Networks, Inc. with extensive experience both as a litigator in a law firm and as an in-house attorney. She is qualified to practice before the US Patent & Trademark Office. Her practice focuses on complex patent litigation, licensing and intellectual property portfolio development on a national and international scale.

Sanjay Prasad is Chief Patent Counsel for Oracle Corporation, where he is responsible for the company’s patent program and related enforcement, defense and licensing issues along with other issues related to technology and intellectual property. He serves on the Board of Directors of the Intellectual Property Owners Association and on the Board of Trustees for the Software Patent Institute. Mr. Prasad also writes and speaks regularly on topics pertaining to intellectual property law and related subjects.