Law Seminars International Presents

A New Advanced Workshop on How to Use

Innovative Structures for Acquiring Intellectual Property

The Benefits, Challenges and Process

July 17, 2006
The Mid-America Club in Chicago, IL
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Who Should Attend

Attorneys and business executives involved with selling and acquiring Intellectual Property

Why Attend

Whether driven by the past euphoria of patent donation, the stigma now often associated with enforcement licensing, or increased cries from the executive suite to generate current period earnings from corporate intellectual property, the trend toward the outright sale of patents is clear. This conference will address the opportunities, challenges and process associated with buying from the growing number of patents offered for sale. The country's leading patent market makers will present their views on the pros and cons of the various venues for patent purchase. Experts on valuation will discuss the strategy of bidding and experienced counsel will provide tips on due diligence and process. Entering this new marketplace as an opportunistic buyer of patents presents unique issues of confidentiality and knowledge exposure long avoided. Attendees will have the chance to learn ways to manage these concerns and participate in the market making process by having early access to those who are influencing a brave new world of intellectual property exchange. ~ Program Co-Chairs: Thomas J. Filarski, Esq. and James E. Malackowski, CEO

What You Will Learn

~The Emergence of P-LECS (Trolls) ~Buying or Licensing IP ~Alternative Transaction Structures ~Private/Public Auctions ~The Role of the Transaction Advisor ~Legal Due Diligence ~Antitrust Issues ~Tips and Techniques from a Seasoned Corporate Buyer ~Case Studies of Innovative Transaction Structures

What Attendees Have Said About Similar Programs

~ Best patent law CLE course I have ever attended ~ Overall, the content was excellent as always! ~ Many useful and interesting business ideas ~ This was one of the better seminars I have attended. All speakers were knowledgeable, and generally they were effective in communicating the material.

Agenda

Monday, July 17, 2006
8:00 am Registration & Continental Breakfast
8:30 am Introduction & Overview
  Thomas J. Filarski, Esq., Program Co-Chair
 Brinks Hofer Gilson & Lione / Chicago, IL
  James E. Malackowski, Program Co-Chair, President and CEO
 Ocean Tomo, LLC / Chicago, IL
8:45 am The Evolving IP Marketplace
  Emergence of P-LECS (trolls) and their impact on the market; when buying is better than licensing; evolving participants and forums; trademark and copyright marketplace; industry trends; international activity
  Charles W. Shifley, Esq.
 Banner & Witcoff, Ltd / Chicago, IL
9:30 am Alternative Transaction Structures
  Private auction; public auction; online exchange; acquisition of IP as a driver in M&A transactions; picking the transaction structure that will maximize the contribution to the bottom line
  Andrew T. Ramer, Director
 Ocean Tomo, LLC / Chicago, IL
10:15 am Break
10:30 am The Role of the Transaction Advisor
  Seller's advisor: assembling assets into the most attractive package; cleaning, polishing and presenting the assets in their best light; due diligence processes for determining the reps and warranties you can offer
  Joe Chernesky, Co-Founder and Managing Director
 IPotential, LLC / San Mateo, CA
  Buyer's advisor: finding the assets that best meet the buyer's needs and ensuring that acquisition of the assets will deliver the benefits the buyer expects
  William Marino, Esq., General Counsel and Partner
 Altitude Capital Partners / New York, NY
12:00 pm Lunch (on your own)
1:15 pm Legal Due Diligence
  Making sure you cover the basics (title, etc); managing encumbrances; determining the nature and scope of the legal documents you will need
  Alejandro Menchaca, Esq.
 McAndrews, Held & Malloy, Ltd. / Chicago, IL
2:00 pm Advanced Legal Concerns
  Identifying and resolving situations giving rise to antitrust issues or willful infringement claims
  Glen P. Belvis, Esq.
 Brinks Hofer Gilson & Lione / Chicago, IL
2:45 pm Break
3:00 pm Tips and Techniques from a Seasoned Corporate Buyer
  Development of IP/technology target list; clean room to deal with unsolicited acquisition proposals; managing purchase offers; obtaining business unit participation; corporate approval, budgets; realistic timeline; corporate fears; understanding auctions
  David M. Braitsch, Ph.D., Director of Intellectual Property Asset Management
 Eastman Kodak Company / Rochester, NY
3:45 pm Case Studies of Innovative Transaction Structures
  Panelists share their experiences with tips for finding new win-win solutions and minimizing the risk of entering relatively uncharted waters
  Thomas J. Filarski, Esq., Program Co-Chair, Moderator
 Brinks Hofer Gilson & Lione / Chicago, IL
  Matthew J. Kelly, Esq., Chief Intellectual Property Counsel
 Chicago Mercantile Exchange, Inc. / Chicago, IL
  John B. Hall, Senior Vice President
 GE Commercial Finance / Chicago, IL
  David M. Schatz, Esq., Assistant General Counsel
 ESCO Technologies Inc. / Hebron, IL
  Michael D. Steffensmeier, Esq., Assistant General Counsel Intellectual Property
 Cardinal Health, Inc. / Dublin, OH
5:00 pm Reception for Faculty and Attendees
  Sponsored by Ocean Tomo, LLC and Brinks Hofer Gilson & Lione

Tuition

Regular tuition for this program is $695 with a group rate of $620 each for two or more registrants from the same firm. For government employees, we offer a special rate of $545. For students and people in their job for less than a year, our rate is $347.50. All rates include admission to all seminar sessions, food and beverages at breaks, and all course materials. Make checks payable to Law Seminars International.

Cancellation & Substitution

You may substitute another person at any time. We will refund tuition, less a $50 cancellation fee, if we receive your cancellation by 5:00 p.m. on Tuesday, July 11, 2006. After that time, we will credit your tuition toward attendance at another program or the purchase of a homestudy. There is a $25 cancellation fee for Course Materials orders and $50 for Homestudy orders.

Continuing Education Credits

This program's credits for IL are currently pending. Upon request, we will apply for CLE credits in other states and other types of credits.

Location

The workshop will be held at the The Mid-America Club at 200 East Randolph Drive, Aon Center-80th Floor in Chicago, IL 60601. For sleeping rooms, check the Chicago Convention and Visitors Bureau website at http://www.choosechicago.com, and select the Loop location to see the hotel list.
More about the Location
Map & Directions

If You Cannot Attend

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

Thomas J. Filarski, Program Co-Chair, is head of the Chemical Practice at Brinks Hofer Gilson & Lione. His practice includes litigation and counseling in patent, trade secret and related unfair competition law on a variety of inventions. He has been named an Illinois Super Lawyer, Intellectual Property Litigation, 2005, 2006, and a Leading Intellectual Property Lawyer by Leading Lawyers Network, 2004, 2005.

James E. Malackowski, Program Co-Chair, is the President and CEO of Ocean Tomo, LLC and 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 IP Institute, and a former Resident Advisor for the U.S. Department of Commerce and U.S. Information Agency.

Glen P. Belvis is a shareholder at Brinks Hofer Gilson & Lione where his practice focuses on patents, trademarks, copyrights, trade secrets and 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 patent lawsuits.

David M. Braitsch is the Director of Intellectual Property Asset Management at the Eastman Kodak Company, and a member of the Licensing Group. During his career at Kodak he has contributed as a scientist, project manager and commercialization manager in multiple technologies. Previously, he was an Assistant Professor of Chemistry at the University of Rochester.

Joe Chernesky is co-founder of IPotential, LLC, an Intellectual Property Services Company that specializes in helping leading technology companies create and manage world-class IP strategies and execute IP-based transactions to gain optimal value from their IP assets. Previously, he served as Vice President of Boeing Management Company.

John B. Hall is Senior Vice President of GE Commercial Finance, responsible for the origination of IP transactions. He served in several capacities in the firm's Capital Markets and Vendor Finance Divisions and has also been utilized by executive management to restructure large distressed investments in the portfolio.

Matthew J. Kelly is the Chief Intellectual Property Counsel at the Chicago Mercantile Exchange, Inc. He is responsible for patents, trademarks, trade secrets, technology licensing and intellectual property litigation.

William Marino is General Counsel and Partner at Altitude Capital Partners. He has successfully litigated patents, trademarks and other intellectual property cases. Previously, he was a senior attorney at Robins, Kaplan, Miller and Ciresi and Mintz Levin Cohn Ferris Glovsky and Popeo. He has also negotiated many patent licenses and other agreements involving intellectual property.

Alejandro Menchaca is a shareholder at McAndrews, Held & Malloy, Ltd. where his practice includes every facet of patent, trademark, copyright, and related law. He has extensive experience in litigation and prosecution of patents, trademarks and copyrights and has prepared opinions in each of these areas.

Andrew T. Ramer is a Director at Ocean Tomo, LLC where he is responsible for the development, marketing and overall operations of the Patent Ratings business. Previously, he spent five years with Motorola Ventures, the venture capital arm of Motorola, where he made investments in early stage technology companies.

David M. Schatz is Assistant General Counsel for ESCO Technologies Inc., with responsibility for intellectual property issues such as portfolio development and licensing, mergers and acquisitions, and litigation management. ESCO is a leading supplier of engineered filtration products to the process, healthcare, and transportation markets worldwide.

Charles W. Shifley, a partner at Banner & Witcoff, Ltd., concentrates on IP transactions and trials. His recent successes include: brought the defense of a major instant message provider against a $160M claim to a successful summary judgment; accomplished the same result for a major tier-one automotive supplier; enforced a patent for a start up company against a multimillion-dollar defense effort. In 2005, he was named an Illinois Super Lawyer and in the Top 100 Super Lawyers in Illinois.

Michael D. Steffensmeier is Assistant General Counsel - Intellectual Property at Cardinal Health, Inc., ranked number 16 on the Fortune 500 list. His practice includes strategic management, counseling, design around efforts, due diligence, prosecution and handling patent, trademark, and copyright law in the medical device, electrical, mechanical, business methods, and software arts.