Law Seminars International Presents: An Important Two-Day Conference on

Complex Intellectual Property Licensing
Your annual update to stay ahead of the game

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(For this past program, we offer two options for purchase: a Homestudy (DVD and written materials) or written materials alone.)

June 21 & 22, 2007
The Rittenhouse Hotel in Philadelphia, PA

Who Should Order This Homestudy

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

Why Order

In developing this program, our goal was to provide licensing executives, business managers, and their attorneys with an opportunity to develop a more solid working knowledge of the business and legal factors that must be addressed to achieve mutually beneficial licensing and technology transfer arrangements. 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 it will meet their business objectives. Licensing professionals advising on transaction structure and license terms must understand the nature of the parties' business activities and 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, antitrust issues, due diligence and effective rights transfer mechanisms, pricing and special issues for technology transfer, transactions involving open source software, and international transactions.

~ Program Co-Chairs: George A. Frank, Ph.D., Esq. and Frederic M. Wilf, Esq.

What You Will Learn

Agenda

Thursday, June 21, 2007

8:00 am

Registration and Continental Breakfast

 
8:30 am

Introduction and Overview

George A. Frank, Ph.D., Esq., Program Co-Chair
Drinker Biddle & Reath LLP / Philadelphia, PA

Frederic M. Wilf, Esq., Program Co-Chair
Morgan, Lewis & Bockius LLP / Philadelphia, PA

 
8:45 am

Current Best Practices for Covering the Fundamentals: Making Sure There Will Be a Match Between What You Want To Get Out of the Deal and What You Actually Get

A structured approach to verifying the licensor's IP rights and litigation status; third-party technology and rights in the subject matter; verifying the other party's financial stability; tips for resolving issues that are discovered

Craig H. Evans, Esq.
Craig H. Evans, Esq. LLC / Westmont, NJ

 
9:30 am

Legal Update on A Big Year for Major Recent and Pending Cases Affecting IP Licensing

MedImmune v. Genentech: When a patent licensee in good standing can challenge the validity of a patent; MedImmune v. Centocor

George A. Frank, Ph.D., Esq., Program Co-Chair
Drinker Biddle & Reath LLP / Philadelphia, PA

 
10:15 am

Break

 
10:30 am

Legal Update (continued)

Aspex Eyewear, Inc., et al. v. Miracle Optics, Inc.: The Federal Circuit held that an exclusive patent licensee, with all substantial rights to a patent, but for only a limited portion of the patent term, does not have standing to bring suit on the patent

Timothy J. Szuhaj, Esq.
Spector Gadon & Rosen, P.C. / Moorestown, NJ

KSR v. Teleflex: KSR's challenge to the Federal Circuit's 20 year old teaching/suggestion/motivation (TSM) test for obviousness in favor of a more restrictive test that would make it harder to obtain a patent

C. Randolph Ross, Esq.
Buchanan Ingersoll & Rooney PC / Philadelphia, PA

AT&T v. Microsoft: When can a U.S. patent be used to recover damages for infringement occurring abroad?

John D. Vandenberg, Esq.
Klarquist Sparkman, LLP / Portland, OR

 
12:15 pm

Lunch (on your own)

 
1:30 pm

The Impact of Business Structures on Your Licensing Strategy

Assessing whether a holding company, joint venture, partnership or other business entity is the right structure to maximize and protect your patent rights from a litigation and business perspective

Martin G. Belisario, Esq.
Akin Gump Strauss Hauer & Feld LLP / Philadelphia, PA

 
2:15 pm

Maximizing the Bottom Line and Receiving Full Value

Effective auditing procedures: How to define royalty base; royalty triggering events; parent subsidiary relationships

Debora R. Stewart, CPA, Managing Director
Invotex Group / Baltimore, MD

Sub-licensing strategies: How to define royalty base; royalty triggering events; parent subsidiary relationships

Kathleen M. Kedrowski, CPA, Managing Director
Navigant Consulting, Inc. / Chicago, IL

 
3:30 pm

Break

 
3:45 pm

New Developments at the Intersection of Antitrust Law and Intellectual Property Protection

What the IP lawyer needs to know about antitrust; update on patent tying, standard setting and patent pools; strategies for structuring transactions to avoid antitrust problems

M. Howard Morse, Esq.
Drinker Biddle & Reath LLP / Washington, DC

Lessons from recent EU Commission actions against Microsoft in which the Commission leveraged antitrust authority to regulate licensing terms, and the lessons for other U.S. companies; prospects for Japan and other Asian countries following the EU lead

Jennifer M. Driscoll, Esq.
Morgan, Lewis & Bockius LLP / Washington, DC

 
5:00 pm

Reception for Attendees and Faculty Sponsored by Drinker Biddle & Reath LLP and Morgan, Lewis & Bockius LLP

 

Friday, June 22, 2007

8:00 am

Registration and Continental Breakfast

 
8:30 am

Licensing of Video Content in the YouTube and iPhone Era

Overview of licensing issues arising from major recent business and technological developments such as Google's acquisition of YouTube and Apple's announcement of the iPhone: How will content licensing change from the early days of iTunes?

Ira M. Kalina, Esq.
Drinker Biddle Gardner Carton / Chicago, IL

Content carrier perspective

Kevin J. Kuzas, Esq., Vice President and General Counsel
Comcast Interactive Media / Philadelphia, PA

Dawn M. Botti, Esq., Senior VP, Business & Legal Affairs
NBC Universal Television / New York, NY

Ross D. Vincenti, Esq., Senior Counsel
Sprint Nextel Corp. / Reston, VA

 
10:00 am

Break

 
10:15 am

Other Trademark, Copyright and E-commerce Related Licensing Transactions

Trademarks and branding: Strategies for maximizing the value of trademarks; terms to include and avoid in trademark licensing agreements

Joseph J. Serritella, Esq.
Pepper Hamilton LLP / Philadelphia, PA

E-commerce and other Internet-related transactions: Unique terms and enforcement strategies for licensing trademarks and copyrighted materials for use on the World Wide Web

Barry M. Benjamin, Esq.
Day Pitney LLP / New York, NY

 
11:30 am

University Technology Transfer and Licensing with Biotechnology and Pharmaceutical Companies

The necessary and unique approach for licenses of life sciences technologies from universities and research institutions; the differences from traditional licenses between commercial entities; the impact on the terms of the deal

Christopher F. Wright, Esq.
McCausland Keen & Buckman / Radnor, PA

 
12:15 pm

Lunch (on your own)

 
1:30 pm

Special Issues in Information Technology Transactions

Free and open source code licenses: The new version of the GNU General Public License; digital rights management after Grokster and Sony BMG

Frederic M. Wilf, Esq., Program Co-Chair
Morgan, Lewis & Bockius LLP / Philadelphia, PA

 
2:15 pm

Special Issues for Outsourcing Transactions

Checklist for necessary clauses; terms for ensuring compliance with privacy, information security, and other regulatory requirements; norms for indemnifications, liabilities, and warranties

Vito Petretti, Esq.
Morgan, Lewis & Bockius LLP / Philadelphia, PA

 
3:00 pm

Break

 
3:15 pm

Dealing with Risky Partners

Avoiding problems arising from licensing with troubled companies: Update on issues related to the interface between intellectual property law and insolvency law

Gerry J. Elman, Esq.
Elman Technology Law, P.C. / Swarthmore, PA

 
3:45 pm

Special Terms for International Transactions Involving the Export or Import of Technology

Update on export control and the Freedom of Information Act; technology transfer licensing competition rules in the EU and Pacific Rim

Robert P. Seitter, Esq.
RatnerPrestia P.C. / Valley Forge, PA

 
4:30 pm

Evaluations & Adjourn

 

Cancellation

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

Continuing Education Credits

This program qualifies for 12.5 PA CLE credits. Upon 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 $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

George A. Frank, Program Co-Chair, joined Drinker Biddle & Realth LLP after serving as Corporate Counsel and IP Group Leader for E. I. du Pont de Nemours and Company. He is chair of the Licensing and Technology Transfer Practice Team and focuses his transactional and litigation practice on corporate partnering, licensing, and joint ventures involving patent law, chemical technologies, and biotechnology.

Frederic M. Wilf, Program Co-Chair, is Of Counsel at Morgan, Lewis & Bockius LLP, where he practices technology, intellectual property and business law with a focus on information technology and Internet issues. His practice includes the development, licensing and transfer of technology, outsourcing, privacy and e-commerce matters. He also arbitrates business, technology and intellectual property disputes.

Martin G. Belisario, partner at Akin Gump Strauss Hauer & Feld LLP, is the co-chair of the Intellectual Property section. He practices intellectual property and technology law, including representation before the U.S. Patent and Trademark Office and foreign patent offices, technology licensing, counseling and litigation. He is listed in Chambers USA, The Best Lawyers in America and has been named a Pennsylvania Super Lawyer.
Full bio and contact info for Martin G. Belisario at Akin Gump Strauss Hauer & Feld LLP

Barry M. Benjamin, partner at Day Pitney LLP, focuses his practice on intellectual property and financial services, handling complex commercial cases, trademark and false advertising claims under the Lanham Act, trade dress violations, copyright claims and fraud claims. He also drafts and negotiates contracts on licensing deals, website content and development agreements, and affiliate agreements.

Dawn M. Botti is Senior Vice President, Business & Legal Affairs for NBC Universal Television and New Media Distribution. She specializes in the distribution of television and film content across linear and on-demand platforms, including television, internet, wireless and other digital/new media offerrings, and negotiating content license agreements.

Gerry J. Elman is a patent attorney at Elman Technology Law, P.C. He was a pioneer in developing a legal practice relating to biotechnology, as well as one of the first attorneys to work with computers and online information technology. He represents clients in trademarks and proprietary names, licensing, IP rights, the resolution of disputes, the conduct of IP audits, and technology law and trade regulation issues.

Craig H. Evans is founder of Craig H. Evans, Esq. LLC, with over 20 years of patent and license experience as Corporate IP Counsel at E.I. du Pont de Nemours and Company, advising on licensing transactions and intellectual property issues. His practice includes structuring and negotiating agreements associated with transfer of technologies. He is currently President Elect of the Benjamin Franklin American Inn of Court in Philadelphia.

Ira M. Kalina, partner at Drinker Biddle Gardner Carton, joined the firm after serving as Licensing Counsel at Midway Games Inc. and Vice President of Business Development and Legal Affairs at MovingStation.com. He focuses his practice in information technology, intellectual property licensing, e-commerce and media transactions. He regularly assists clients in leveraging content onto platforms such as mobile devices, web sites, PDAs and interactive television.

Kathleen M. Kedrowski, Managing Director at Navigant Consulting, Inc., is involved in economic, business and financial analyses in IP, licensing, and other disputes. She also advises clients on the strategic use of intellectual assets, such as effective utilization, monetization and strategies throughout the intangible asset life cycle.

Kevin J. Kuzas is Vice President and General Counsel at Comcast Interactive Media, the division that develops and operates its emerging Internet business, including the comcast.net site. His experience is with copyright, content and technology issues. Previously, he was a partner in a large law firm in Washington, D.C., where he represented several traditional media companies in their push into digital media.

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 and litigation, with a focus on high-tech industries and antitrust issues involving intellectual property. He previously served as Assistant Director of the FTC's Bureau of Competition.

Vito Petretti, attorney at Morgan, Lewis & Bockius LLP, is a member of the Global Outsourcing Practice. His practice focuses on technology and outsourcing matters, software licensing and development, web and application hosting, privacy, e-commerce and other general technology matters.

C. Randolph Ross, shareholder at Buchanan Ingersoll & Rooney PC, focuses his practice on patent litigation, with significant experience in general commercial and construction litigation as well. He has served as litigation counsel in cases in federal and state courts.

Robert P. Seitter, a shareholder at RatnerPrestia P.C., focuses his practice on IP strategies and transactions that enhance the value of a business. He has built and licensed valuable IP portfolios, evaluated infringement risks, and structured and negotiated IP issues in business transaction in the U.S., Europe and the Far East. Previously, he was General Patent Counsel for ITT Automotive, and then General Patent Counsel for ITT.
Full bio and contact info for Robert P. Seitter at RatnerPrestia P.C.

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.

Debora R. Stewart 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.

Timothy J. Szuhaj, partner at Spector Gadon & Rosen, P.C., chairs the Intellectual Property Group. He specializes in intellectual property law and portfolio management, technology law, internet law, and e-commerce law, and also handles general corporate and commercial matters. His practice includes prosecution of trademark, service mark and copyright applications and assignments, negotiating and drafting licenses, and managing intellectual property portfolios.

John D. Vandenberg, partner at Klarquist Sparkman, LLP, has been litigating patent disputes continuously since 1983. His areas of expertise include jury trial, bench trial, and appellate IP practice, and he has defended Microsoft in patent litigations since 1991.

Ross D. Vincenti is Senior Counsel and Director of Technology Transactions and Media/Content Licensing at Sprint Nextel Corp. He specializes in technology and content licensing, and complex commercial transactions involving large scale deployments of technology.

Christopher F. Wright, shareholder of McCausland Keen & Buckman, handles all aspects of entrepreneurial endeavors with an emphasis on business and intellectual property law. He focuses on growth technology companies, equity investors, and universities and research institutions that license technology. Previously, he served as Associate General Counsel for the University of Pennsylvania and Director of Legal Affairs for Penn's Center for Technology Transfer.

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