Law Seminars International Presents

An Advanced One-Day Seminar on

Mining Your Patent Portfolio

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

October 26, 2005
Omni Parker House Hotel in Boston, MA
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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~Lee Carl Bromberg, Esq. and Paul R. Gupta, Esq.

What You Will Learn

* Assessing a Patent Portfolio: Is There Any Gold to Mine? * Valuation * Special Issues for Financial Institutions * Negotiating Strategies: How Do I Get the Most for the Gold? * Best Battles: What if I Must Fight for the Gold?

Agenda

Wednesday, October 26, 2005
8:00 am Registration and Continental Breakfast
8:30 am Introduction & Overview
  Lee Carl Bromberg, Esq., Program Co-Chair
 Bromberg & Sunstein LLP / Boston, MA
  Paul R. Gupta, Esq., Program Co-Chair
 Mayer, Brown, Rowe & Maw LLP / New York, NY
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
  Maureen K. Toohey, Esq., General Counsel
 DEKA Research and Development Corporation / Manchester, NH
  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 P. Ricci, Esq., Chief Licensing Counsel
 NCR Corporation / Dayton, OH
  Techniques and tools to assess the portfolio and to build a value proposition case with partners and licensees
  Joseph G. Hadzima, Jr., Esq., Managing Director
 Main Street Partners LLC/IP Vision, Inc. / Cambridge, MA
10:30 am Break
10:45 am Valuation: How Much is the Gold Worth?
  Using valuation results: 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
  Barry S. Sussman, Managing Director
 Huron Consulting Group / Boston, MA
11:30 am Special Issues for Financial Institutions
  The evolving and integral role played by business method patents in the financial and insurance services industry; strategic and tactical concerns that manifest for legal IT and business professionals regarding financial patents
  Dauna R. Williams, Esq., Associate General Counsel
 MetLife / Long Island City, NY
12:15 pm Lunch (on your own)
1:30 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
  Michael B. Keating, Esq.
 Foley Hoag LLP / Boston, MA
  Resolving concerns about declaratory judgment actions; mediation; selecting the best forum
  Cynthia D. Vreeland, Esq.
 Wilmer Cutler Pickering Hale and Dorr LLP / Boston, MA
  How negotiating strategies can change after the pre-litigation stage; ITC and Section 337 proceedings
  J. Anthony Downs, Esq.
 Goodwin Procter LLP / Boston, MA
3:15 pm Break
3:30 pm Best Battle Strategies: What if I Must Fight for the Gold?
  Plaintiff, defendant, and judicial perspectives on which cases should settle; tips for presenting technical information in a way that is compelling and persuasive for a judge or jury; examples of excellent approaches and ones to avoid
  Lee Carl Bromberg, Esq., Program Co-Chair
 Bromberg & Sunstein LLP / Boston, MA
  Paul R. Gupta, Esq., Program Co-Chair
 Mayer, Brown, Rowe & Maw LLP / New York, NY
  The Hon. William G. Young, Chief Judge
 U.S. District Court - District of Massachusetts / Boston, MA
5:00 pm Adjourn

Cancellation

There is a $25 cancellation fee for Course Materials orders and $50 for Homestudy orders

Continuing Education Credits

This program qualifies for WA CLE 6.25 credits. On request, we will apply for CLE credits in other states and other types of credits.

Cost

Our complete Homestudy Course, consisting of a VHS or DVD recording and the written course materials, is available for $705. 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).
Order Homestudy

Faculty Bios

Lee Carl Bromberg, Program Co-Chair, is co-founder of Bromberg & Sunstein LLP where he chairs the Litigation Practice Group. He handles a wide range of technology-based disputes, including numerous patent infringement actions, and trademark, copyright, trade secret, and unfair competition cases in high technology areas. He is Vice President of the Boston Patent Law Association.

J. Anthony Downs, a partner in the Litigation Department of Goodwin Proctor LLP, practices general civil litigation with a specialization in patent, copyright, antitrust/competition law, securities and other alternative dispute resolution procedures. Additionally, Mr. Downs has considerable appellate experience.

Paul R. Gupta, Program Co-Chair, is a Partner and Firm Practice Leader in the New York office of Mayer, Brown, Rowe & Maw LLP, one of the world's ten largest law firms. His is listed as a Leading Lawyer in Chambers USA 2005. The Wall Street Journal has also said that Paul is "a leading patent litigator." His practice includes IP matters as well as antitrust, IT and other commercial disputes. He serves on the Board of Directors of the New England Legal Foundation. Further biographical information about Paul can be found in Who's Who in the World.

Joseph G. Hadzima, Jr. is a Managing Director of Main Street Partners LLC, a venture development and technology commercialization firm. He is also President of IP Vision, Inc., which provides services and systems for the management of patent portfolios. He has been a Senior Lecturer at the MIT Sloan School of Management since 1985.

Michael B. Keating is the principal trial attorney and Chairman of the Litigation Department at Foley Hoag LLP. He has been named by the National Law Journal as one of the ten outstanding litigators in Massachusetts, and ranked by Chambers USA as one of Massachusetts' leading general commercial litigators. He is also listed in Best Lawyers in America.

Christopher P. Ricci is Chief Licensing Counsel for NCR Corporation where he is charged with generating revenue from the IP portfolio. Prior to joining NCR, Mr. Ricci was General Counsel for Clearway Technologies, LLC, where he managed legal and financial activities while playing a key role in operational pursuits. He has lectured and been published both domestically and abroad on a variety of business and IP law subjects.

Barry S. Sussman is a Managing Director with the Huron Consulting Group. He concentrates his practice on accounting, financial and business matters. He provides expert assistance in IP disputes, valuing intangible assets, consulting with companies regarding licensing rates and strategies, and performing royalty audits for licensors.

Maureen K. Toohey is General Counsel for DEKA Research & Development Corporation, a dynamic research and development company founded by prolific inventor Dean Kamen. She also serves as IP Counsel to its affiliated companies, including Segway LLC and as an advisor to FIRST (For Inspiration and Recognition of Science and Technology), a non-profit organization dedicated to inspiring young people to pursue a career in science and engineering.

Cynthia D. Vreeland is a Co-Chair of the IP Litigation Group at Wilmer Cutler Pickering Hale and Dorr LLP. She focuses her practice on patent and trade secret litigation and has represented a wide range of clients in a variety of commercial matters. She was named a "Massachusetts Super Lawyers Rising Star" in IP litigation in the May, 2005 edition of Boston Magazine.

Dauna R. Williams is Associate General Counsel, managing MetLife's IP and General Contracts unit. She has focused on building patent practices in the financial services industry, including Merrill Lynch and Lehman Brothers. Previously, she founded Content360, a new media ASP. She also served as Vice Chair of the ABA's Committee on the Law of Commerce in Cyberspace's Subcommittee on Electronic Financial Services and taught as an adjunct professor at New York Law School.

The Honorable William G. Young, Chief Judge of the United States District Court, District of Massachusetts, has been an active trial judge for more than 25 years, also serving on the Massachusetts Superior Court. He has taught evidence and trial advocacy at Harvard, Boston College and Boston University law schools.