Law Seminars International Presents

A New Advanced Conference on

Best Practices for Buying, Selling, and Licensing Patents

How the Process Works, Benefits and Challenges

January 22 & 23, 2007
Crowne Plaza Hotel Palo Alto in Palo Alto, CA
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Who Should Attend

Attorneys and business executives involved with selling and acquiring Intellectual Property

Why Attend

The market for patents has exploded over the past several years. Many buyers have entered the market, including companies seeking to supplement or expand their existing portfolios or to respond to real or perceived IP threats. Patent investors have been pouring substantial sums into the market, like land speculators of a different time, seeking to amass assets that can be monetized for a substantial return and buy patents with the potential to be monetized. All of this has provided patent owners with new options to obtain a return on their inventive efforts. This conference will address the opportunities and challenges associated with buying and selling patents as well as give both potential buyers and sellers insight into how the patent sale process really works, and will be relevant to those looking to buy, sell or support the marketplace. The country's leading patent buyers and market makers will present their views and experiences on patent on the pros and cons of the various venues for patent purchase and share their experiences on how to optimize those transactions. 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: Joe Chernesky, CEO and Maureen S. Dorney, Esq.

What You Will Learn

* The current patent marketplace * Who is buying and selling * Buyer's due diligence * Red flags for sellers in sales transactions * Patent purchase agreements * Auction processes and on-line exchanges * Enhancing the value of your portfolio; infringement and enforceability * Running an effective corporate patent purchasing program * Understanding the impact of contractual encumbrances * Optimizing patent licensing preparations and engagements to maximize success

What Attendees Have Said About Similar Programs

* A dynamic faculty! * Content was interesting and informative * Very well organized seminar * Other seminars do not compare to LSI's tight-focused, advanced and relevant seminars.


Monday, January 22, 2007

8:00 am Registration and Continental Breakfast
8:30 am Introduction & Overview
  Joe Chernesky, Program Co-Chair, Co-Founder and Chief Operating Officer
IPotential, LLC / San Mateo, CA
  Maureen S. Dorney, Esq., Program Co-Chair
DLA Piper / East Palo Alto, CA
8:45 am Today's Patent Marketplace
  Overview on how companies use patents to support the business; options for obtaining value from patents; why patents are being sold and acquired; historical perspective of the market
  Ron Epstein, Esq., Co-Founder and CEO
IPotential, LLC / San Mateo, CA
  Legal issues that can influence a company's decision to sell patents vs. create a patent licensing program; tips for in-house and outside counsel in advising management on patent monetization strategy
  Marc S. Kaufman, Esq.
Nixon Peabody LLP / Washington, DC
10:15 am Break
10:30 am Buyers and Sellers
  Who is selling and why: Use of transactions advisors; marketing options; process for marketing and selling; evaluating and preparing; identifying potential buyers; positioning for greatest price; supporting potential buyer's due diligence
  Joe Chernesky, Program Co-Chair, Co-Founder and Chief Operating Officer
IPotential, LLC / San Mateo, CA
  Who is buying: What information is needed; purchasing criteria; valuation processes; tips for finding assets that best meet buyer's needs and ensuring that acquisiton of the assets will deliver the benefits the buyer expects
  Ron Laurie, Managing Director
Inflexion Point Strategy, LLC / Palo Alto, CA
12:00 pm Lunch (on your own)
1:15 pm Buyer's Due Diligence
  Various levels of due diligence; infringement, validity and enforceability analysis; making sure you cover the basics (title, etc); managing encumbrances; determining the nature and scope of the necessary legal documents
  Craig P. Opperman, Esq.
Morgan, Lewis & Bockius LLP / Los Altos, CA
  Practical tips for developing and implementing efficient and effective due diligence processes
  Don Merino, Ph.D., General Manager, Intellectual Property
Intellectual Ventures, LLC / Bellevue, WA
2:30 pm Red Flags for Sellers in Sales Transactions
  Dealing with troubled companies; addressing potential collaborations between the buyer and your competitors
  Michael Stern, Esq.
Cooley Godward Kronish LLP / Palo Alto, CA
3:15 pm Break
3:30 pm Drafting Patent Purchase Agreements
  Structure of the agreement; essential elements; process; warranties and representations; closing processes; common pitfalls; lessons learned; walk through an example agreement
  Joseph R. Bond, Esq.
Bond Law Office, LLC / Heber City, UT
4:15 pm Auction Processes and On-line Exchanges
  Private auction; public auction; online exchange; acquisition of IP as a driver in M&A transactions; selecting the transaction structure that will maximize the contribution to the bottom line
  James E. Malackowski, President and CEO
Ocean Tomo, LLC / Chicago, IL
5:00 pm Reception for Attendees and Faculty Sponsored by DLA Piper

Tuesday, January 23, 2007

8:00 am Registration and Continental Breakfast
8:30 am Enhancing the Value of Your Portfolio
  How best to build and demonstrate the value of patents based on the two primary criteria - infringement and enforceability; overall patent strategy; managing the patent budget; obtaining patents with an eye toward use
  William G. Goldman, Esq.
DLA Piper / East Palo Alto, CA
  Practical tips: Overall patent strategy; managing the patent budget
  Keith A. Rutherford, Esq.
Wong, Cabello, Lutsch, Rutherford & Brucculeri, L.L.P / Houston, TX
  Damon K. I. Kali, Esq.
Stevens Law Group, P.C. / San Jose, CA
10:15 am Break
10:30 am Running an Effective Corporate Patent Purchasing Program
  Structure of in-house purchasing groups; development of patent wish list; obtaining budget from reluctant executive management; organization; dealing with unsolicited acquisition proposals; managing purchase offers; corporate approval; budgets
  Joe Chernesky, Program Co-Chair, Moderator, Co-Founder and Chief Operating Officer
IPotential, LLC / San Mateo, CA
  Kelly H. Hale, Esq., IP Counsel
Broadcom Corporation / Irvine, CA
  David Lubitz, Esq., Senior Patent Attorney
Microsoft Corporation / Redmond, WA
12:00 pm Lunch (on your own)
1:15 pm Understanding Patent Investors
  Who they are; how they make decisions; investment criteria; financing options; examples of completed deals
  Michael J. Cannata, Partner
NW Patent Funding Corporation / Toronto, ON
  Bryan P. Lord, Esq., Vice President of Corporate Development
AmberWave Systems Corporation / Salem, NH
2:30 pm Understanding the Impact of Contractual Encumbrances
  How to maximize the value of patents: practical considerations; careful handling of key contractual provisions; covenants not to assert; co-assertion agreements; joint ownership provisions
  Maureen S. Dorney, Esq., Program Co-Chair
DLA Piper / East Palo Alto, CA
3:15 pm Break
3:30 pm Optimizing Patent Licensing Preparations and Engagements to Maximize Success
  Taking advantage of new upsides: Recent innovations and promising new trends
  Ira Blumberg, Esq., Vice President of Licensing
Rambus, Inc. / Los Altos, CA
  Avoiding downsides: Wrap-up update on lessons from key recent cases
  Asim Bhansali, Esq.
Keker & Van Nest LLP / San Francisco, CA
5:00 pm Evaluations and 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 Tuesday, January 16, 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

Law Seminars International is a State Bar of California approved MCLE provider. This program qualifies for 13.25 California MCLE credits. Upon request, we will apply for CLE credits in other states and other types of credits.


The conference will be held at the Crowne Plaza Hotel Palo Alto at 4290 El Camino Real in Palo Alto, CA 94306. Call the hotel directly at (650) 628-0157 for reservations at the special negotiated rate of $169 and mention that you are attending a Law Seminars International conference. Rooms are on a first come, first served basis.
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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

Joe Chernesky, Program Co-Chair, is Co-Founder and COO 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.

Maureen S. Dorney, Program Co-Chair, is a partner at DLA Piper, concentrating in Internet and electronic commerce, networking and wireless agreements, electronic and wireless gaming agreements, software licensing, strategic intellectual property counseling, and copyright and trademark.

Asim Bhansali is a partner at Keker & Van Nest LLP. His practice focuses on complex business litigation, including securities, RICO, intellectual property, and commercial cases. He has successfully defended clients in these matters, obtaining numerous dismissals of securities and general fraud claims in federal court.

Ira Blumberg is Vice President of Licensing at Rambus, Inc., responsible for creating and executing their intellectual property licensing strategy. Previously, he was Director of Licensing at Intel.

Joseph R. Bond, owner of Bond Law Office, LLC, specializes in assisting clients in buying, selling, and licensing intellectual property assets. His practice also encompasses assisting clients in addressing defensive and offensive patent assertions, and valuing intellectual property assets.

Michael J. Cannata is a partner in NW Patent Funding Corporation, which specializes in partnering with patent owners to provide the funding and expertise required to monetize patent assets through licensing or infringement litigation. He is an entrepreneur who has founded and run several technology companies.

Ron Epstein is Co-Founder and CEO of IPotential, LLC, an Intellectual Property Strategic Consultancy and Brokerage firm which assists patent owners in developing and executing strategies to maximize the value of their patents. Previously, he was General Counsel of Brocade Communications Systems, Inc. and as Director of Licensing for Intel Corporation.

William G. Goldman is a partner at DLA Piper. He concentrates his practice in litigation matters involving electrical systems; semiconductor technologies; computer memories; telecommunications; computer systems; Internet technologies; software; user interfaces, and others. He also counsels clients with regard to patent portfolio management, and patent/product analysis.

Kelly H. Hale is IP Counsel at Broadcom Corporation. He focuses primarily on the strategic acquisition and exploitation of patents. Previously, he was a semiconductor device engineer at various companies, including American Microsystems, RCA Solid State and Morton International.

Damon K. I. Kali is Of Counsel at Stevens Law Group, P.C. His practice emphasizes the preparation and prosecution of patent applications in a wide range of technologies including computer software, semiconductor device fabrication, bioinformatics, gene chip technology, and digital imaging equipment.

Marc S. Kaufman is a partner at Nixon Peabody LLP. He specializes in managing intellectual property assets in a variety of technical fields, including computer architecture, digital rights management, database technology, search engine technology, and data mining.

Ron Laurie is a Managing Director of Inflexion Point Strategy, LLC. He has advised companies on IP strategy, a subject he taught at Stanford and U.C. Berkeley law schools. He is listed in the Top 25 California IP Lawyers, Best Lawyers in America, America's Leading Business Lawyers, Global Counsel 3000, and International Who's Who of Business Lawyers.

Bryan P. Lord is Vice President of Corporate Development at AmberWave Systems Corporation, managing finance, legal and administrative matters. He is responsible for venture capital fundraising, licensing, litigation, public relations, and human resources.

David Lubitz is a Senior Patent Attorney in Microsoft Corporation's Intellectual Property and Licensing Department. He handles third party patent claims made against Microsoft and also acquisitions of third party patents. Previously, he was the Managing Partner of Hogan & Hartson's Tokyo Office.

James E. Malackowski is President and CEO of Ocean Tomo, LLC and a current and prior director of numerous corporate entities. 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.

Don Merino is General Manager, Intellectual Property, at Intellectual Ventures, LLC, where he focuses on invention and innovation. Previously he was at Intel Corporation where he was Director of Strategic Business Development, responsible for managing the licensing program.

Craig P. Opperman is a partner in the Intellectual Property Practice at Morgan, Lewis & Bockius LLP. Previously, he served as General Counsel and Chief Intellectual Property Officer of Health Hero Network, Inc.

Keith A. Rutherford is a partner at Wong, Cabello, Lutsch, Rutherford & Brucculeri, L.L.P. His practice focuses on patent litigation, IP strategy, pre-litigation conflict resolution, licensing/deal negotiations, analysis of patent portfolios both for offensive and defensive purposes, opinion work, and prosecution management.

Michael Stern is a partner in the Cooley Godward Kronish LLP business department and the head of the Technology Transactions practice group. He focuses on software licensing, hardware and software OEM, VAR and other distribution arrangements, product development, technology transfer and outsourcing agreements, electronic commerce and strategic relationships.