Law Seminars International Presents

Second Annual Chicago Conference on

Complex IP & Technology Transactions

Mastering the business and legal issues

March 21 & 22, 2007
The Gleacher Center in Chicago, IL
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Who Should Attend

In-house counsel, IP lawyers, CIOs, CFOs, CPAs and licensing professionals

Why Attend

In developing this program, our goal was to provide licensing executives and attorneys with an opportunity to develop a more solid working knowledge of the business and legal factors that must be addressed to achieve a mutually beneficial licensing arrangement. A multitude of legal issues can arise in today's complex licensing transactions, and the parties must create a well-drafted document to ensure that they will meet their business objectives. The licensing professionals advising on transaction structure and contract terms must understand the nature of the parties' business activities and the business people should have at least a basic understanding of the legal issues. We have assembled a group of leading licensing professionals to discuss the latest developments in the law, licensing strategies, due diligence and effective rights transfer mechanisms, pricing and special issues for technology transfers, transactions involving open source software, and international transactions. ~ Program Co-Chairs: Kenneth K. Dort, Esq. and Mark I. Feldman, Esq.

What You Will Learn

* Initial planning: Identifying the work to be done and setting up an organizational structure for accomplishing it * A key foundational element: Keeping up-to-date on the latest developments in substantive law * Avoiding antitrust risks * Special issues arising from the parties to the transaction * Selection, design and drafting of complex licensing documents * The blurring of technology transactions and IP transactions, and the need to keep up with privacy and data security laws * Special issues arising from the geographic scope of the transaction * Establishing a due diligence process that fits the deal * Information technology licensing transactions * Transactions involving use of trademarks and copyrighted materials on the Internet * Maximizing the bottom line and receiving full value * Ethics for transactional lawyers

What Attendees Have Said About Similar Programs

~ Much value was gained from attendees' questions and speakers' answers ~ Will apply many ideas to my practice ~ Quality of presentations was outstanding ~ Very good conference


Wednesday, March 21, 2007

8:00 am Registration & Continental Breakfast
8:30 am Introduction & Overview
  Kenneth K. Dort, Esq., Program Co-Chair
McGuireWoods LLP / Chicago, IL
  Mark I. Feldman, Esq., Program Co-Chair
DLA Piper / Chicago, IL
8:45 am Initial Planning: Identifying the Work to be Done, and Setting Up an Organizational Structure for Accomplishing It
  Mastering the negotiation process: Identifying negotiation team members and roles; assessing and enhancing leverage; importance of a pre-negotiation plan; building and maintaining effective relationships between business and legal teams
  Melinda Breitman, Manager of Contracts
OAG Worldwide Inc. / Downers Grove, IL
9:30 am A Key Foundational Element: Keeping Up- to-Date on the Latest Developments in Substantive Law
  Patents, copyrights and trade secrets
  Raymond T. Nimmer, Esq., Dean and Leonard H. Childs Professor of Law
University of Houston Law Center / Houston, TX
10:15 am Break
10:30 am Avoiding Antitrust Risks
  Collaborations with and exclusion of competitors: Strategies for structuring transactions to avoid antitrust problems; special issues arising from standards setting and patent pools
  M. Howard Morse, Esq.
Drinker Biddle & Reath LLP / Washington, DC
11:15 am Transactions with Public Entities
  University technology transfer and sponsored research: A careful look at licensing imperatives for tax-exempt organizations and institutions with bond-financed facilities
  Richard D. Harris, Esq.
Day, Berry & Howard LLP / Hartford, CT
12:00 pm Lunch (on your own)
1:15 pm Selection, Design and Drafting of Complex Licensing Documents
  Planning analysis and checklist; identifying licensees and beneficiaries; granting and withholding appropriate rights; adapting to different types of proprietary subject matter; building in scalability; ancillary documents
  Diana J.P. McKenzie, Esq.
Neal, Gerber & Eisenberg LLP / Chicago, IL
  Techniques to solidify deal: Timing of NDAs; use of letters of intent, MOUs, memorandum of agreements, and signed term sheets; establishing upfront the risk profile of the transaction; maximizing negotiation leverage pre-contract signing
  Dennis J. Gallitano, Esq.
Gallitano & O'Connor LLP / Barrington, IL
2:45 pm Break
3:00 pm The Blurring of Technology Transactions and IP Transactions, and the Need to Keep Up with Privacy and Data Security Laws
  Types of transactions giving rise to privacy and data security concerns; update on the substantive law; impact licensing and ancillary terms
  Gary Friedlander, Esq., Vice President and Division General Counsel
TransUnion LLC / Chicago, IL
3:45 pm Special Issues Arising from the Geographic Scope of the Transaction
  U.S. and foreign export controls requirements; global tax planning opportunities and challenges; vestiges of transfer of technology laws; some key countries; unique contract issues in cross-border licensing
  Michael S. Mensik, Esq.
Baker & McKenzie LLP / Chicago, IL
4:30 pm Establishing a Due Diligence Process that Fits the Deal
  Core and variable elements of a structured approach for verifying the licensor's IP rights and litigation status; identifying third-party technology and IP rights in the subject matter; tips for resolving issues that are discovered
  Mark I. Feldman, Esq., Program Co-Chair
DLA Piper / Chicago, IL
5:15 pm Reception for Attendees and Faculty Sponsored by DLA Piper and McGuireWoods LLP

Thursday, March 22, 2007

8:00 am Registration & Continental Breakfast
8:30 am Introduction & Overview
  Kenneth K. Dort, Esq., Program Co-Chair
McGuireWoods LLP / Chicago, IL
  Mark I. Feldman, Esq., Program Co-Chair
DLA Piper / Chicago, IL
8:45 am Special Issues Arising in Information Technology Transactions
  Software as a component: The expanding international use of Open Source software; General Public License Version 3.0 -- potential IP ramifications; licenses vs. covenants not to sue; Open Source enforcement effects on litigation in the U.S. and the EU
  Kenneth K. Dort, Esq., Program Co-Chair
McGuireWoods LLP / Chicago, IL
  Outsourcing transactions: Strategies and contract provisions to address evolving issues such as data transfers, information security, responsibility for regulatory compliance, step-in rights, IP protection and enforcement in foreign jurisdictions
  Vincent A. Sanchez, Esq.
DLA Piper / Chicago, IL
10:15 am Break
10:30 am Special Issues Arising in Transactions Involving Use of Trademarks and Copyrighted Materials on the Internet
  Content licensing and liability on the Internet: Misuse detection strategies; copyrighted content enforcement issues; defenses springing from Free Speech rights; offenses curtailing Free Speech rights; derivative liability for user-generated content
  Joseph J. Serritella, Esq.
Pepper Hamilton LLP / Philadelphia, PA
  Trademarks, branding and other forms of identity licensing: Strategies for maximizing value; licensing terms to include and avoid; structuring and implementing effective policing programs; enforcement strategies for misuse of trademarks on the Internet
  David S. Fleming, Esq.
Brinks Hofer Gilson & Lione / Chicago, IL
12:00 pm Lunch (on your own)
1:15 pm Maximizing the Bottom Line and Receiving Full Value
  Systems and procedures to avoid or reduce misreporting: Suggested agreement language to reduce ambiguity; effective auditing procedures; red flags that may indicate misreporting
  Debora R. Stewart, CPA, Managing Director
Invotex Group / Baltimore, MD
2:00 pm Ethics for Transactional Lawyers
  A key foundational element: Keeping up-to-date on the latest developments in substantive law
  Anne C. Keays, Esq.
Levin Ginsburg / Chicago, IL
3:00 pm Evaluations & Adjourn


Regular tuition for this program is $995 with a group rate of $895 each for two or more registrants from the same firm. For government employees, we offer a special rate of $795. For students and people in their job for less than a year, our rate is $497.50. 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 Thursday, March 15, 2007. 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

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


The conference will be held at The Gleacher Center at 450 North Cityfront Plaza Drive in Chicago, IL 60611, phone 312-464-8787. Check The Gleacher Center website for a list of area hotels at
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 $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

Kenneth K. Dort, Program Co-Chair, partner at McGuireWoods LLP, focuses his practice on technology related issues such as software development and licensing, and systems development and integration. He has litigated in copyright and trademark infringement, information systems development and implementation failures and trade secret protection.

Mark I. Feldman, Program Co-Chair, of DLA Piper, focuses his practice on trademarks, patents, copyrights, trade secrets, and Internet and technology law. He appears in An International Who's Who of Trademark Lawyers, was selected as a Leading Lawyer in IP law by the Leading Lawyers Network and was listed in Who's Who Legal: Illinois Trademark Lawyers; Chambers USA; Illinois Super Lawyers; and Best Lawyers in America 2007.

Melinda Breitman is the Manager of Contracts for OAG Worldwide Inc. She is a negotiator and contracts management professional with many years of experience in the technology, software and content licensing industries. She is working on a soon-to-be published book on negotiations for sales professionals.

David S. Fleming, partner at Brinks Hofer Gilson & Lione, concentrates his practice in trademark law, focusing on litigation. Recently in a trademark litigation trial, he secured a jury verdict in favor of R.J. Reynolds Tobacco Company. He is an Illinois Super Lawyer, IP Litigation, 2005, 2006, listed in Leading Lawyers Network, 2004, 2005, and in a Guide To The World’s Leading Trademark Law Practitioners, Euromoney Legal Media Group, 2002.

Gary Friedlander is a Vice President and Division General Counsel for TransUnion LLC. He provides legal and business guidance to management and internal operation units. He is a subject matter expert in dealing with a variety of legislative, regulatory and business issues including the Fair Credit Reporting Act, Gramm-Leach-Bliley, privacy and e-commerce issues.

Dennis J. Gallitano, partner at Gallitano & O'Connor LLP, focuses on information technology in software licensing, outsourcing, software development transactions, and licensing support systems for communications companies. He has been selected as a Leading Lawyer (Computer & Technology) and as an Illinois Super Lawyer in 2005 and 2006. He is a Board Member of the Center for Information Technology at DePaul University and is an Adjust Professor at the University of Illinois at Chicago.

Richard D. Harris is a partner at Day, Berry & Howard LLP and the chair of the Technology and IP Business Law practice group. His practice includes structuring, negotiating and documenting the acquisition, disposition and recapitalization of technology-related business enterprises and assisting clients in the implementation of strategic outsourcing arrangements.

Anne C. Keays, a partner at Levin Ginsburg, focuses on providing practical and strategic legal advice to clients on significant technology, privacy and security, and electronic commerce transactions. Her experience includes contracts in outsourcing, systems integration, strategic alliance, web hosting, electronic commerce, licensing, database protection and development and service agreements.

Diana J.P. McKenzie, partner at Neal, Gerber & Eisenberg LLP, is chair of the information technology practice group. She has been selected as one of America's Leading Lawyers for Business in Technology and IT Outsourcing by Chambers USA in 2006, is past President of the International Technology Law Association, and is in The Best Lawyers in America for Information Technology Law in 2006.
Full bio and contact info for Diana J.P. McKenzie at Neal, Gerber & Eisenberg LLP

Michael S. Mensik is the global coordinator of Baker & McKenzie LLP's Global Information Technology/Outsourcing/Privacy Law practice. He is also the North American editor of the "Global e-Law Alert," a weekly electronic bulletin that tracks information technology and e-commerce related developments throughout the world. His practice has an emphasis on copyright law.
Full bio and contact info for Michael S. Mensik at Baker & McKenzie LLP

M. Howard Morse, a partner at Drinker Biddle & Reath LLP, co-chairs the Antitrust Group. He represents businesses before the Federal Trade Commission, Department of Justice and State Attorneys General in antitrust investigations as well as in antitrust litigation, with a particular focus on high-tech industries and antitrust issues involving intellectual property. He previously served as Assistant Director of the FTC's Bureau of Competition.

Raymond T. Nimmer is Dean and the Leonard H. Childs Professor of Law at The University of Houston Law Center and also Co-Director of the Houston IP and Information Law Institute. He has authored ten books including "Modern Licensing Law," and is listed in "Who's Who in America," "Who's Who in Law," the "International Who's Who of Internet Lawyers" and the "International Who's Who of Business Lawyers."

Vincent A. Sanchez is a partner and co-chairs the Technology and Sourcing Practice Group at DLA Piper. He focuses his practice on technology-related transactions, electronic commerce and privacy, outsourcing, and general corporate law. He has been named by the Law Bulletin Publishing Company as one of "40 Illinois Attorneys under 40 to Watch", was designated an Illinois Super Lawyer, by Chicago Magazine, and is listed in Chambers USA: America's Leading Lawyers for Business.
Full bio and contact info for Vincent A. Sanchez at DLA Piper

Joseph J. Serritella is a partner in the litigation department of Pepper Hamilton LLP, focusing on IP-intensive businesses, particularly in computer science, marketing, and advertising. His practice includes copyright, trademark, patent, trade secret and unfair competition matters, as well as the law of defamation and free speech.
Full bio and contact info for Joseph J. Serritella at Pepper Hamilton LLP

Debora R. Stewart, CPA, is Managing Director of Invotex Group's IP Management & Finance practice, which assists clients in managing their intellectual assets. She provides strategic assistance and tactical expertise to help clients optimize the value of their IP, primarily in the areas of License Management and Royalty Compliance.

Firm Links

Baker & McKenzie LLP
DLA Piper
McGuireWoods LLP
Neal, Gerber & Eisenberg LLP
Pepper Hamilton LLP