Law Seminars International Presents

An Important Two-Day Seminar on

Standards Setting & Patent Pools

Key legal and business issues, including biotech and medical patent pooling

October 17 & 18, 2005
Hotel Monaco in Washington, DC
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Who Should Order Homestudy

In-house counsel, IP and technology lawyers, technology executives, engineers and anyone involved in Standards Setting and Patent Pools

Why Order

The importance of technical standards-setting efforts and patent pools is at an all-time high in the electronics industry. The market demands interoperability in the computer and communication systems that businesses use every day, but the necessary patent rights are owned by a patchwork of companies. In biomedicine, in contrast, while patent pools are presently uncommon, many applications such as diagnostics using microarrays are hindered by equally complicated patent thickets. This conference will give an overview of how technical standards are agreed upon and how patent pools are formed to license the patents necessary to practice these standards. The program will also address the antitrust hurdles that patent pools must clear. Real world examples involving the MPEG standards and the Rambus/Infineon dispute, among others, will be reviewed. ~ Program Co-Chairs: David A. Balto, Esq. and Jorge A Goldstein, Ph.D., Esq.

What You Will Learn

* Legal Perspective on Intellectual Property Issues in Standard Setting * Legal Issues in Setting up Patent Pools Related to Technical Standards * Patent Pool Formation Strategies * Standard Organization's Pesective on Legislative, Legal and Practical Issues * Perspectives on the Rambus Case * Standard Setting in Medicine * Patent Pools in Biotechnology and Medicine * Cross Licensing in Standard Setting & Patent Pools * Calculating Reasonable Royalties in Resolving Patent Disputes

Agenda

Monday, October 17, 2005
8:30 am Introduction and Overview
  David A. Balto, Esq., Program Co-Chair
 Robins, Kaplan, Miller & Ciresi LLP / Washington, DC
  Jorge A. Goldstein, Esq., Ph.D., Program Co-Chair
 Sterne, Kessler, Goldstein & Fox P.L.L.C. / Washington, DC
8:45 am Standards Bodies: How They Work (and How They Are Supposed to Work)
  Legal perspective on the intellectual property issues and increasingly complex negotiations over patent rights and license terms in standards setting
  Eric A. Prager, Esq.
 Darby & Darby P.C. / Seattle, WA
9:30 am Patent Pools: How They Work (and How They Are Supposed to Work)
  Discussion of legal issues and practical experience in setting up patent pools related to technical standards
  Glen P. Belvis, Esq.
 Brinks Hofer Gilson & Lione / Chicago, IL
10:15 am Break
10:30 am The Role of the Antitrust Enforcement Agencies in Standards Setting and Patent Pooling: Jurisdiction & Regulatory Priorities
  FTC: Standards Development Organization Advancement Act; enforcer's perspective on benefits of standards and dangers to competition from imbuing technology with market power; disclosure issues; agency processes and priorities
  Gail Levine, Esq., Deputy Assistant General Counsel
 Federal Trade Commission / Washington, DC
  Frances E. Marshall, Esq., Special Counsel for Intellectual Property
 U. S. Department of Justice - Antitrust Division / Washington, DC
12:00 pm Lunch (on your own)
1:15 pm Patent Pool Formation Strategies: Tips for Structuring the Pool to Minimize Antitrust Enforcement Problem
  Identifying pro-competitive business needs (e.g. design freedom) for coordination of rights among patent holders; distinguishing essential/blocking patents (good to include) from substitute/rival patents (better kept separate)
  A. Douglas Melamed, Esq.
 Wilmer Cutler Pickering Hale & Dorr LLP / Washington, DC
2:00 pm Tips for Avoiding Antitrust Problems in Standard Setting
  FTC vs. Unocal; Acceptable conduct before administrative agencies; revealing ownership and IP rights in the technology you're advocating; Noerr-Pennington - competitors getting together to influence government standards
  Robert Skitol, Esq.
 Drinker Biddle & Reath / Washington, DC
  Armando Irizarry, Esq., Counsel for Intellectual Property
 Bureau of Competition - Federal Trade Commission / Washington, DC
2:45 pm Break
3:00 pm Standards Setting from an Insider's Perspective
  The top legislative, legal, and practical issues from a standards organization's perspective
  Patrick Morris, Executive Director
 InterNational Committee for Information Technology Standards / Washington, DC
  Michael A. Lindsay, Esq.
 Dorsey & Whitney LLP / Minneapolis, MN
3:45 pm The Natural Tension between Cooperation and Competitive Advantage: Perspectives on the Rambus Case and The Challenge of Disclosure
  A. Douglas Melamed, Esq.
 Wilmer Cutler Pickering Hale & Dorr LLP / Washington, DC
  M. Sean Royall, Esq.
 Gibson Dunn & Crutcher LLP / Dallas, TX
5:00 pm Reception for Faculty and Attendees

Tuesday, October 18, 2005
8:30 am Practical Aspects of Participation in Standards Setting and Patent Pools
  Effective processes for working through the key legal and business issues in participating in standards setting bodies or patent pooling arrangements; tips for getting the most out of those activities; thoughts on situations of concern to the audience
  Geoffrey Oliver, Esq., Assistant Director - Anticometitive Practices Section
 Federal Trade Commission / Washington, DC
  Standards setting in medicine: A major roadblock to successful pools in biomedicine is the lack of standards setting. How might existing standards bodies for diagnosis and therapy be used to help implement patent pools in biomedicine?
  Jorge A. Goldstein, Esq., Ph.D., Program Co-Chair
 Sterne, Kessler, Goldstein & Fox P.L.L.C. / Washington, DC
10:00 am Break
10:15 am Case Study: Patent Pools in Biotechnology and Medicine
  Combinations of several essential molecules (proteins, DNA, or synthetics), patented by multiple owners, are increasingly needed for diagnostic, therapeutic, or prophylactic uses: Are patent pools the answer?
  Jorge A. Goldstein, Esq., Ph.D., Program Co-Chair
 Sterne, Kessler, Goldstein & Fox P.L.L.C. / Washington, DC
  The Public IP Resources for Agriculture Pool
  Alan B. Bennett, Ph.D., Associate Vice Chancellor
 University of California, Davis / Davis, CA
  The SARS pool
  Willard K. Tom, Esq.
 Morgan Lewis & Bockius, LLP / Washington, DC
  The AIDS pool
  Robert Weissman, Esq.
 Essential Inventions, Inc. / Washington, DC
12:15 pm Lunch (on your own)
1:30 pm Cross Licensing in the Context of Patent Pools and Standards Setting
  A walk through key terms in a hypothetical cross licensing agreement
  Benjamin Hershkowitz, Esq.
 Goodwin Procter LLP / New York, NY
  Designing a cross licensing program to comply with FTC and DOJ guidelines
  Sean P. Gates, Esq., Staff Attorney
 Anticompetitive Practices Division - Federal Trade Commission / Washington, DC
3:00 pm Break
3:15 pm Resolving Patent Disputes: Calculating Reasonable and Nondiscriminatory Royalties
  The correct economic factors for calculating reasonable royalties
  Timothy P. Daniel, Ph.D, Senior Vice President
 NERA Economic Consulting / Washington, DC
  A walk through a complex hypothetical scenario
  David M. Maxwell, Esq.
 Alston & Bird LLP / Atlanta, GA
4:30 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 aproval 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: VA CLE 13 | NC CLE 12.75 | PA CLE 12.5 | TX CLE 12.75 | WI CLE 15.3 | (Call about others)

Cost

Our complete Homestudy Course, consisting of a VHS or DVD recording and the written course materials, is available for $1005. 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

David A. Balto, Program Co-Chair, a partner at Robins, Kaplan, Miller & Ciresi LLP, has practiced antitrust law for over 20 years in the government and private practice. He counsels a wide variety of companies on FDA regulation, strategic alliances, distribution issues, mergers and joint ventures. Previously, he was Policy Director of the Bureau of Competition of the FTC and attorney advisor to Chairman Robert Pitofsky.

Jorge A. Goldstein, Program Co-Chair, is a Director in the Biotechnology/Chemical Group at Sterne, Kessler, Goldstein & Fox P.L.L.C. His intellectual property experience has been principally in areas such as genomics, molecular and cell biology, and recombinant DNA technology. He has prepared and prosecuted patents before the U.S. and foreign patent offices. He has specialized in university-industry relations and in interferences, particularly in the area of biotechnology.

Glen P. Belvis is a shareholder at Brinks Hofer Gilson & Lione where his practice encompasses all facets of intellectual property law, including patents, trademarks, copyrights, trade secrets and related antitrust matters. He has substantial patent litigation experience, including bench and jury trials, appeals before the Federal Circuit, and alternate dispute resolutions, and has participated in several multinational litigations involving related patent lawsuits in the U.K., Europe, Asia, Canada and the United States.

Alan B. Bennett is the Associate Vice Chancellor for Research - Technology and Industry Alliances and Professor of Plant Sciences, University of California, Davis. He is also the Founding Executive Director of the Public Intellectual Property Resource for Agriculture (PIPRA).

Timothy P. Daniel is a Senior Vice President of NERA Economic Consulting (NERA). His areas of specialization include the economics of antitrust and intellectual property, and the calculation of commercial damages. Prior to joining NERA, he was Assistant Director for Antitrust at the Federal Trade Commission where he worked on numerous matters with an intellectual property component.

Sean P. Gates is a Staff Attorney in the Anticompetitive Practices Division of the Federal Trade Commission's Bureau of Competition. He has litigated both antitrust and patent cases and was part of the trial team for the Commission's case against Unocal. He also investigated potential matters involving patent pools and patent predation.

Benjamin Hershkowitz, a partner with Goodwin Procter LLP, works extensively on intellectual property litigation matters. He is also a frequent author on business patent methods, financial considerations in prosecution, participation in standardization organizations and collaborative research agreements.

Armando Irizarry is Counsel for Intellectual Property at the Federal Trade Commission - Bureau of Competition. Previously, he taught IP law at Michigan State University and practiced patent litigation at the firm of Fish & Neave.

Michael A. Lindsay, is a partner at Dorsey & Whitney LLP, and Co-Chair of the Antitrust Trial Practice group. He practices in the area of general litigation, with a strong emphasis on antitrust (litigation & counseling), trademark and unfair competition, commercial, securities, and product liability defense.

Frances E. Marshall is Special Counsel for Intellectual Property in the Antitrust Division at the U.S. Department of Justice. She advises the Division on a wide range of matters in which competition and intellectual property law and policy intersect. Previously, she was an Attorney-Advisor in the General Counsel's Office at the U.S. International Trade Commission.

David M. Maxwell, a partner and member of the Intellectual Property - Litigation Group at Alston & Bird LLP focuses his practice on dispute resolution and counseling in the areas of patent copyright, trademark and related business disputes. He is also the author of several articles on intellectual property litigation and related subjects.

A. Douglas Melamed, a partner at Wilmer Cutler Pickering Hale & Dorr LLP, is co-chair of the firm's Antitrust and Competition Department. He served in the US Department of Justice from October 1996 to January 2001, first as Principal Deputy Assistant Attorney General and then as Acting Assistant Attorney General in charge of the Antitrust Division.

Patrick Morris is the Executive Director of InterNational Committee for Information Technology Standards (INCITS), the primary U.S. focus of standardization in the field of Information and Communications Technologies (ICT). Previously, he served as the Secretary-General of the International Federation for Produce Coding and was responsible for standards and technology issues.

Eric A. Prager is a principal at Darby & Darby P.C. and focuses his practice on counseling, licensing, and litigation concerning all types of intellectual property rights, with a particular focus on new media issues. He represents one of the Big Five record companies in its digital content delivery initiatives and prepares and negotiates the associated license agreements.

M. Sean Royall, a partner at Gibson Dunn & Crutcher LLP, specializes in antitrust and commercial litigation and also co-chairs the Firm's Antitrust and Trade Regulation Practice Group. He recently completed a two and a half year tenure as Deputy Director of the Bureau of Competition and the Federal Trade Commission in Washington, DC.

Willard K. Tom, a partner at Morgan Lewis & Brokius, LLP, has more than 25 years of experience in the antitrust field, both in private practice and in government, and has been recognized by his peers by a listing in the 2005-2006 edition of the Best Lawyers in America.

Robert Weissman serves as counsel to Essential Inventions, Inc., a nonprofit corporation that works to promote the creation and distribution of essential inventions, and also serves on EII's board. He has worked as an advisor on patent policy issues for several governments, UN agencies and nongovernmental organizations.