Law Seminars International Presents

Developing, Protecting & Exploiting Software

Drawing a roadmap from initial planning through distribution

August 5 & 6, 2004
San Francisco Downtown Courtyard by Marriott in San Francisco, CA
Order      Download PDF Brochure

Who Should Order Homestudy

In-house counsel, IP/technology lawyers, CFOs, CPAs, CIOs and technology professionals involved in managing software patent portfolios

Why Order

"In an ever-competitive global economy, software products have almost unlimited potential to add profitability to companies, but evaluating strengths and weaknesses in a product before it hits the market is crucial. Any successful corporate intellectual property program needs a roadmap to identify the market opportunities, assess the value of the portfolio, establish the critical terms of contracts and determine what it will take to distribute the product.This two-day conference will convene leading industry executives and practitioners to discuss the trends in software development, production and marketing, as well as strategies for protecting and defending your software including patents. They will address issues of forming strategic business alliances, using open source code, developing patent protection strategies that work, and planning and setting up effective distribution." ~ Program Co-Chairs: Brian S. Kelly, Esq. and Rauer L. Meyer, Esq.

What You Will Learn

- Finding a Place in the Software Industry - Software Building Blocks - Leveraging Open SourceTechnology - Unique Issues in Jointly Developed or Owned Software - The Latest Thinking onTraditional SoftwareProtection Strategies - Planning and Setting Up Distribution - Getting the Economics to Work - When and How to Pursue a Patent Protection Strategy - Defending Against Patent Infringement Claims

What Attendees Said

"This seminar was extremely helpful "Excellent CLE classes" "Unique topics"

Agenda

Thursday, August 05, 2004
8:00 am Registration & Continental Breakfast
8:30 am Introduction and Overview
  Brian S. Kelly, Esq, Program Co-Chair
 Manatt, Phelps & Phillips LLP / Los Angeles, CA
  Rauer L. Meyer, Esq., Program Co-Chair
 Thelen Reid & Priest LLP / San Francisco, CA
8:45 am Finding a Place in the Software Industry
  The coming major transformation in the software and IT services markets in the next two years
  Jim Watson, General Partner
 CMEA Ventures / San Francisco, CA
  Funding for new software development projects: How much money is available and where is it going?
  Mark Gorenberg, Partner
 Hummer Winblad Venture Partners / San Francisco, CA
10:15 am Break
10:30 am Software Building Blocks: Weighing the Risks and Potential Benefits from Using Open Source Code
  Litigation update on SCO vs. IBM and other key cases: Lessons for lawyers and business people
  Lawrence Rosen, Esq., General Counsel for the Open Source Initiative
 RosenLaw.com / Ukiah, CA
  Leveraging open source technology in your business: Practical tips for structuring and implementing software development projects using open source code; what to do if you questions arise during or after completion of the project
  Stacy A. Snowman, Esq., Partner
 Gray Cary / San Francisco, CA
12:00 pm Lunch (on your own)
1:15 pm Unique Issues in Jointly Developed or Owned Software: In Development, Who Does What? Afterwards, Who Owns What? Who Can Do What?
  Entering into a new project: Finding the optimal business structure; key contract elements and common terms
  Grant Jones, Regional Sales Manager
 DSI Technology Services / San Francisco, CA
  Practical tips for effective project and relationship management; retaining the ability to access technical expertise after the end of the project; specifying and handling ongoing support and maintenance obligations
  Robert M. Di Giovanni, Esq.
 Shaw Pittman LLP / Los Angeles, CA
  Ownership issues in previously developed software: Tips for determining the extent of your rights to distribute the software
  Lorin Brennan, Esq
 Gray Matter LLC / Newport Beach, CA
3:15 pm Break
3:30 pm The Latest Thinking on Traditional Software Protection Strategies
  Copyrights: Lessons and practice tips from recent cases
  Kristie D. Prinz, Esq.
 Prinz Law Offices / Los Gatos, CA
  Trade secrets in the software development cycle: Recent cases; terms you need and don’t want in your employment contracts
  R. Mark Halligan, Esq.
 Welsh & Katz, Ltd. / Chicago, IL
5:00 pm End of Day

Friday, August 06, 2004
8:00 am Registration & Continental Breakfast
8:30 am Planning and Setting Up Distribution
  Distribution expertise: Identifying what kind of help you need and finding a partner to help get your product ready for market; key elements of a Distribution Agreement
  Celia Pantle Van Gorder
 Howard Rice Nemerovski Canady Falk & Rabkin / San Francisco, CA
  Distribution expertise: Identifying what kind of help you need and finding a partner to help get your product ready for market; key elements of a Distribution Agreement
  Stephen M. Fronk, Esq.
 Howard Rice Nemerovski Canady Falk & Rabkin / San Francisco, CA
  Key elements for your contract with your customers; common provisions for warranties, indemnifications, and other "boilerplate" terms
  Stephen D. Gillespie, Esq.
 Fenwick & West LLP / San Francisco, CA
10:00 am Break
10:15 am Getting the Economics to Work
  Pros and cons of various licensing models (subscription vs. perpetual license vs. managed services); identifying and responding to customer preferences and expectations
  Andrew Basile, Jr., Esq., Moderator
 Cooley Godward LLP / Palo Alto, CA
  Dorena J. Chan, Esq., Managing Counsel
 Oracle Corporation / Redwood Shores, CA
  Joe Chernesky, Managing Director
 IPotential LLC / San Mateo, CA
  Steve Crown, Esq., Associate General Counsel
 Microsoft Corporation / Redmond, WA
12:00 pm Lunch (on your own)
1:30 pm When and How to Pursue a Patent Protection Strategy
  Overview of patent law and cases as they relate to software
  Robert E. Krebs, Esq.
 Thelen Reid & Priest, LLP / San Jose, CA
  How patents can protect software; practical tips for compiling a software patent portfolio
  Stephen C. Durant, Esq.
 Morrison & Foerster LLP / San Francisco, CA
2:30 pm Defending Against Patent Infringement Claims
  Patent infringement claims: Legal and business perspectives on what to do when the infringement letter arrives; negotiating points for dealing with valid claims; strategies for dealing with junk patents, sham patents, and extortion demands.
  Yar R. Chaikovsky, Esq
 Weil, Gotshal & Manges LLP / Redwood Shores, CA
  Rajiv Patel, Esq.
 Fenwick & West LLP / Mountain View, CA
3:30 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 12.25 | OH CLE 12 (#000146532) | OR CLE 12.75 (#2104*203) | WA CLE 12 (#121548)

Cost

Our complete Homestudy Course, consisting of a VHS or DVD recording and the written course materials, is available for $905. 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

Brian S. Kelly, Program Co-Chair, is a partner in the Los Angeles office of Manatt, Phelps & Phillips LLP. He advises providers and consumers of technology in all aspects of strategic identification, protection, and commercialization of intellectual property assets.

Rauer L. Meyer, Program Co-Chair, a partner with Thelen Reid & Priest, covers all facets of national and international franchising in his practice. His intellectual property practice includes the protection of rights in technology, trademarks, software, copyrights, and trade secrets; licensing, distribution, transfers, and other transactions involving intellectual property.

Andrew R. Basile is a partner in the Technology Transactions practice group and a member of Cooley Godward’s Business department. He handles technology related commercial transactions including strategic alliances and joint ventures, inbound and outbound licensing of software, hardware and other technology, IT procurement and outsourcing, distribution agreements, and development and systems integration projects.

Lorin Brennan is a principal in a software development firm, Gray Matter LLC, which he co-founded in 1999. The firm develops automated contracting and rights management software for intellectual property licensing. As an attorney he specializes in international intellectual property licensing.

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. Mr. Chaikovsky has extensive experience in exploiting and managing intellectual property assets, litigation and dispute resolution, negotiating technological relationships and commercial transactions, developing licensing and acquisition programs, and creating worldwide intellectual property portfolios. Prior to joining Weil, Gotshal, Mr. Chaikovsky served as Chief Patent Counsel for Yahoo! and General Counsel for Zaplet, Inc., an enterprise software company primarily funded by Kleiner, Perkins, Caufield & Byers.

Dorena J. Chan is currently a Managing Counsel at Oracle Corporation and the group leader for commercial licensing for strategic accounts. In her career at Oracle, she has concentrated on licensing matters, with expertise in distribution, development, inbound, outbound and services-related licensing. Prior to joining Oracle, Dorena worked as an associate for Morrison & Foerster in San Francisco. While at Morrison, she worked in the business department in both the corporate finance and financial services groups. Dorena received her A.B. in history from Stanford University and her J.D. from the University of California, Hastings College of the Law.

Joe Chernesky co-founded IPotential in 2004. IPotential is a Silicon Valley-based Intellectual Property Services Company that specializes in helping leading technology companies create and manage world-class Intellectual Property (IP) strategies and execute IP-based transactions to gain optimal value from their IP assets. Prior to IPotential, Joe served as Vice President of Boeing Management Company (a subsidiary of The Boeing Company responsible for its IP policy, strategies and initiatives), and prior to Boeing, Joe spent 6 years at Intel responsible for developing intellectual property licensing strategy and managing patent and technology licensing activities. Joe is proud to have served for ten years as a U.S. Naval Officer in various active and reserve assignments throughout the world. Joe holds a Bachelor of Science and Masters of Business Administration from the University of Arizona. 

Steve Crown is Associate General Counsel, Windows Client, Microsoft Corporation. He leads the legal team that advises Microsoft's Windows Client Business Group, which includes the worldwide development, marketing and sales teams that produce and distribute such products as the Windows desktop operating systems, the Tablet PC operating system, and Microsoft's various Digital Media initiatives, e.g., Microsoft Windows Media Player. Steve received his undergraduate, graduate, and professional degrees from the University of Washington, Oxford University, and the Yale Law School.

Robert M. DiGiovanni, Program Co-Chair and a partner with Shaw Pittman LLP, devotes a significant portion of his practice to counseling clients on technology contracting matters and to negotiating and documenting substantial outsourcing and other complex technology transactions.

Stephen C. Durant is a partner in the San Francisco office of Morrison & Foerster and head of the Electronics, Software, and Telecommunications Patent Group. He earned a B.S. degree in Electrical Engineering from the University of Notre Dame in 1978 and a J.D. from Cornell Law School in 1981. He is registered to practice before the U.S. Patent and Trademark Office. Mr. Durant has over 20 years experience handling patent prosecution and related counseling and opinions in a wide range of high technology fields, including computer architecture, electronic circuits, optics, chip design software, business methods, wireless digital communications, network switching technologies, holography, MEMS, and computer software. He has served as primary outside patent counsel to numerous electronics, software, and telecommunications companies. His practice focuses on obtaining and structuring patent portfolios and counseling on patent infringement and validity in support of business strategies, litigation, and corporate finance transactions. His practice includes reexaminations, reissues, and appeals. He was a partner with Wilson, Sonsini, Goodrich & Rosati in Palo Alto (1992-1997) where he established that firm’s patent prosecution practice. He has been a corporate patent attorney for Hughes Aircraft Company, Space and Communications Group (1984 1986).

Stephen Fronk, with Howard Rice Nemerovski Canady Falk & Rabkin, focuses his practice on intellectual property transactions. He advises both emerging and public companies on a wide range of intellectual property issues, including those relating to software and hardware development and distribution, copyright, patent, trademark, and trade secret licensing, protection, and enforcement, and privacy and other regulatory matters.

Stephen D. Gillespie's practice concentrates on structuring, drafting and negotiating complex transactions relating to intellectual property, including national and international technology development and distribution agreements, in-bound and outbound technology license agreements, strategic alliances and IP issues arising in mergers and acquisitions. He also has expertise in issues arising from use of "Open Source" software and U.S. export control regulations.

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.

R. Mark Halligan, Esq. is a principal in the Chicago intellectual property law firm of Welsh & Katz, Ltd.  Mr. Halligan also serves on the Adjunct Faculty at John Marshall Law School in Chicago where he teaches Advanced Trade Secrets Law and Trade Secrets Litigation. Mr. Halligan is a prolific lecturer and writer on the law of trade secrets and the sponsor of the world-renowned TRADE SECRETS HOME PAGE on the Internet. Mr. Halligan is recognized nationally as an expert in trade secrets law and the Economic Espionage Act of 1996 which makes the theft of trade secrets a federal criminal offense.

Grant Jones, Regional Sales Manager for DSI, has been involved in the technology escrow field for more than eight years. His main focus is helping companies create solutions relating to protecting intellectual property assets. Mr. Jones has presented to various bar and software association groups across the West Coast. Mr. Jones is considered an authority in the field of technology escrow and issues surrounding the role of a neutral third party in protecting intellectual property. Technology escrow is the best protection against mergers, bankruptcies or other events that impact the ability of vendors to support their technology. A technology escrow agreement could mean the difference between losing mission-critical software that would cripple a company’s operations and maintaining continued business success. Also, an escrow account can serve to protect software from patent, copyright or trade secret infringement. Courts have ruled that source code kept with a neutral third party helps meet the burden of proof for conception of an idea and serves as documentation of how a technology was developed.

Robert E. Krebs focuses his practice on: 1) Intellectual Property litigation, including right-to-use and infringement opinions in patent matters; and 2) prosecution of patent and trademark applications at the United States Patent & Trademark Office. He has both broad experience and current technical qualifications in telecommunications, electronics, and medical device technologies. He was named as one of California´s "Top Patent Lawyers" in California Lawyer. Mr. Krebs has he held positions as both general counsel and patent counsel for a group of technology companies within a Fortune 500 corporation (now, Baker-Hughes).

Rajiv Patel represents companies from privately held start-ups to publicly traded corporations on a wide variety of complex intellectual property issues and matters. Mr. Patel counsels companies on patent portfolio development and management strategies, patent enforcement strategies, and patent and high technology licensing agreements, and strategies. Mr. Patel also leads intellectual property audits to help companies identify key intellectual assets and evaluate protection options for such assets.

Kristie D. Prinz, of Prinz Law Offices, represents biotechnology, electrical engineering, software, telecommunications, and Webbased technology companies in a variety of domestic and international transactional matters, including technology licensing and research collaborations; supply and distributorship, purchase, and other commercial service agreements; nondisclosure agreements; mergers and acquisitions; financings; employment and severance agreements; and corporate formations.

Lawrence E. (Larry) Rosen is both an attorney and a computer specialist. As an attorney Larry's specialty is technology, but he is also a skilled litigator and negotiator, and is a legal advisor to individuals and companies throughout the world. He also has extensive experience teaching computer programming, and has been a department and product manager in the computer and communications industry. Larry is very involved in the open source community. He is the general counsel and secretary of the Open Source Initiative (OSI), and served as its executive director. OSI reviews and approves major open source licenses, several of which were written by Larry. OSI manages and promotes the Open Source Definition for the good of the community, specifically through the OSI Certified open source software certification mark and program. Larry often publishes and speaks around the world on open source licensing and patent issues. Some of his articles are displayed in the links below.

Celia Van Gorder of Howard Rice Nemerovski Canady Falk & Rabkin has a general transactional practice with particular focus on intellectual property licensing and complex commercial contracts. She has structured and negotiated numerous software and hardware distribution agreements with companies in the United States, Europe and the Asia-Pacific region.

Jim Watson joined CMEA Ventures as General Partner in 2001, and is on the Board of Directors of Apriso, the world’s premier provider of plant and warehouse automation solutions for the industrial sector; iSuppli Inc., a supply chain procurement firm; Key Research, creating a new category of servers through the convergence of processor, networking and storage technology; and Teros, a web security system. Prior to joining CMEA, Mr. Watson was consultant to several professional services firms and venture capital partnerships in the areas of strategic planning and partnering, board development, and supply chain management.