Law Seminars International Presents

Today's Best Practices for

Buying, Selling and Licensing Patents

New Case Law, Rules, Legislation and Markets

January 24 & 25, 2008
The Fairmont San Francisco Hotel in San Francisco, 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. Companies are buying and selling patents to supplement and expand their existing portfolios. Like land speculators, patent investors are pouring substantial sums into the market to amass assets that can be monetized for a substantial return. This is providing patent owners with new options for making money on their inventions. This conference will look at how the patent sale process really works for potential buyers and sellers. The faculty includes the country's leading patent buyers and market makers who will share their insights on the various venues for patent purchases and how to optimize those transactions. Entering this new marketplace as an opportunistic buyer of patents presents unique issues of confidentiality and exposure as well as real or perceived IP threats. Experienced counsel on the faculty will provide tips and strategies for managing the process and conducting due diligence. Attendees will have a chance to learn ways to manage risks and participate successfully in the market-making process through early access to those who are influencing a brave new world of intellectual property exchange. ~ Program Co-Chairs: Joe Chernesky, Chief Operating Officer and Marc S. Kaufman, Esq.

What You Will Learn

~Patent reform: Fundamental changes in the patent market ~Rising variety in patent sale business models ~Practical pointers for buyers and sellers ~Understanding patent investors ~Buyer's due diligence ~Lessons learned from the MOSAID-Agere patent sale ~Enhancing portfolio value ~Running effective corporate patent purchasing programs ~The impact of contractual encumbrances ~Maximizing the bottom line: Tax and accounting considerations


Thursday, January 24, 2008

8:00 am Registration and Continental Breakfast
8:30 am Introduction and Overview
  Joe Chernesky, Program Co-Chair, President and Chief Operating Officer
IPotential, LLC / San Mateo, CA
  Marc S. Kaufman, Esq., Program Co-Chair
Nixon Peabody LLP / Washington, DC
8:45 am Patent Reform: Update on Changes in Patent Law that Will Fundamentally Change Patent Strategies and the Patent Marketplace
  Recent case decisions and legislative initiatives: What are the implications for the patent marketplace in terms of the demand for, and supply of, patents and the value of patents?
  Robert E. Krebs, Esq.
Thelen Reid Brown Raysman & Steiner LLP / San Jose, CA
  Legislation, case law and rules: How reform affects patent prosecution strategy
  Ronald E. Myrick, Esq.
Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. / Cambridge, MA
10:15 am Break
10:30 am The Growing Variety of Patent Purchase and Sale Business Models: Assessing the Value They Bring and Their Impact on the Market
  Effects of the various types of patent monetizing business models on the marketplace; where they all fit into the value stream; emerging purchase models; who is doing what among the people making markets for IP; what value do they bring?
  Ron Laurie, Managing Director
Inflexion Point Strategy, LLC / Palo Alto, CA
  Greg Kisor, Vice President, Investor Relations
Intellectual Ventures, LLC / Bellevue, WA
12:00 pm Lunch (on your own)
1:15 pm Understanding Patent Investors
  The people who assemble patents into packages and market them: Who they are; how they make decisions; investment criteria; financing options; examples of completed deals
  Jonathan Taub, Vice President, Business Development and Licensing
Acacia Technologies Group / Newport Beach, CA
2:00 pm Practical Pointers for Buyers and Sellers
  The patent marketplace: Process for marketing and selling; seller positioning in light of buyer purchasing criteria; information the buyer needs; seller support of potential buyer's due diligence; valuation; use of transactions advisors; pitfalls to avoid
  Joe Chernesky, Program Co-Chair, President and Chief Operating Officer
IPotential, LLC / San Mateo, CA
2:45 pm Break
3:00 pm Buyer's Due Diligence
  Various levels of due diligence; infringement, validity and enforceability analysis; covering the basics; managing encumbrances; determining the nature and scope of the necessary legal documents; tips for developing efficient and effective processes
  Marc S. Kaufman, Esq., Program Co-Chair
Nixon Peabody LLP / Washington, DC
3:45 pm Case Study: Lessons Learned from the MOSAID-Agere Patent Sale
  Most patent transactions are private, but the MOSAID-Agere patent transaction was public: Lessons learned from a large patent buyer with a focus on this transaction
  Don Merino, Ph.D., General Manager, Intellectual Property
Intellectual Ventures, LLC / Bellevue, WA
4:30 pm Reception for Attendees and Faculty
  Sponsored by IPotential, LLC and Nixon Peabody LLP

Friday, January 25, 2008

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
  Steve Knauer, Esq., Chief Patent Counsel
IPotential, LLC / San Mateo, CA
  Practical tips: Overall patent strategy; managing the patent budget
  Mona Sabet, Vice President, Intellectual Property
Cadence Design Systems, Inc. / San Jose, CA
10:00 am Break
10:15 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, President and Chief Operating Officer
IPotential, LLC / San Mateo, CA
  Matt Gordon, MBA, Director of IP Acquisitions
Microsoft Corporation / Redmond, WA
  James E. Parsons, Esq., Vice President and Associate General Counsel
Foundry Networks, Inc. / Santa Clara, CA
12:00 pm Lunch (on your own)
1:15 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.
DLA Piper / East Palo Alto, CA
2:00 pm Maximizing the Bottom Line: Tax and Accounting Considerations
  Achieving tax benefits through holding companies to maximize revenue from strategic licensing and compliance; working with clients to effectively plan for and manage the returns on their intellectual property
  D. Clarke Norton, Managing Director
Duff & Phelps, LLC / San Francisco, CA
  James E. Pampinella, CPA, Director
Navigant Consulting, Inc. / San Francisco, CA
2:45 pm Break
3:00 pm Optimizing Patent Licensing Preparations and Engagements to Maximize Success: Tips for Engagement Strategies
  Licensor's prep plan: Assumptions; licensing objectives; licensing timeline; audience and decision makers; presentation strategy; next steps for closing the deal
  Ron Epstein, Esq., Co-Founder and CEO
IPotential, LLC / San Mateo, CA
  Licensee's prep plan: Stalling without getting sued; calculating potential damages award and how that relates to reasonable royalties calculation; non-infringing substitutes
  Fabio E. Marino, Esq.
Orrick, Herrington & Sutcliffe LLP / Menlo Park, CA
4:30 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 Friday, January 18, 2008. 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 12.5 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 Fairmont San Francisco Hotel, 950 Mason Street in San Francisco, CA 94108. Call the hotel at (800) 441-1414 for reservations at the special negotiated rate of $279 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, President and Chief Operating Officer of IPotential, LLC, a Silicon Valley-based Intellectual Property Strategic Consultancy and Brokerage firm. Previously, he served as Vice President of the Boeing Management Company (a subsidiary of The Boeing Company responsible for its IP policy, strategies and initiatives) and Senior Manager at Intel Corporation.

Marc S. Kaufman, Program Co-Chair, partner at Nixon Peabody LLP, 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. He has developed structured procedures for creating and executing intellectual property strategies that are aligned with overall business strategies.

Maureen S. Dorney, partner at DLA Piper, concentrates on Internet and electronic commerce, networking and wireless agreements, electronic and wireless gaming agreements, software licensing, strategic intellectual property counseling, copyright and trademark.

Ron Epstein, Co-Founder and CEO of IPotential, LLC, an Intellectual Property Strategic Consultancy and Brokerage firm, assists patent owners in developing and executing strategies to maximize patent values. His expertise is in developing and optimizing IP asset portfolios. Previously he was General Counsel of Brocade Communications Systems, Inc. and Director of Licensing at Intel Corporation.

Matt Gordon, Director of IP Acquisitions at Microsoft Corporation, helps evaluate and execute patent acquisition deals. Previously he spent 14 years at Intel and Intel Capital as the Director of the Seattle office.

Greg Kisor is Vice President, Investor Relations at Intellectual Ventures, LLC where he focuses on Intellectual Property and invention. Previously he was Vice President of Technology, and Group Portfolio Architect at Intellectual Ventures and also was Principal Engineer and Chief Patent Technologist at Intel Corporation.

Steve Knauer, Chief Patent Council at IPotential, LLC, has prepared and prosecuted hundreds of patent applications on sophisticated technologies. He counsels clients on strategic IP matters, such as developing and managing their patent portfolios and providing validity and infringement analysis.

Robert E. Krebs, partner at Thelen Reid Brown Raysman & Steiner LLP, focuses his practice on patent applications and Intellectual Property litigation. He was named one of California's "Top Patent Lawyers" in "California Lawyer" and was also profiled in the "Daily Journal" as one of California's "Top 30 IP Lawyers."

Ron Laurie, Managing Director of Inflexion Point Strategy, LLC, 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."

Fabio E. Marino, partner at Orrick, Herrington & Sutcliffe LLP, is chair of the Strategic IP Counseling Group, focusing on patent litigation. He has expertise in computer networks, software engineering, entertainment and Internet-related technologies. He was named a Northern California "Super Lawyer" and "Leading Lawyer in Intellectual Property", "Chambers USA."

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

Ronald E. Myrick, partner at Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., focuses on IP asset management, strategy setting and litigation management. He is listed in "Best Lawyers in America", was a charter member of the USPTO's Patent Public Advisory Committee and was nominated by the U.S. to the World Trade Organization Dispute Settlement Roster.

D.Clarke Norton, Managing Director in the San Francisco office of Duff & Phelps, LLC, is the U.S. service line leader for the Transfer Pricing Practice, and consults on tax planning issues. Previously she was the Chief Economist of the IRS's Advance Pricing Agreement Program.

James E. Pampinella, Director at Navigant Consulting, Inc., specializes in the area of intellectual property disputes and licensing negotiations, with an emphasis on accounting, economics, finance and statistics.

James E. Parsons, Vice President and Associate General Counsel at Foundry Networks, Inc., a networking company, is responsible for the IP program, including patent purchasing efforts. Previously he was at Bever Hoffman & Harms LLP, where he prepared and prosecuted patent applications.

Mona Sabet, Vice President, Intellectual Property, at Cadence Design Systems, Inc., directs and manages all aspects of the Intellectual Property strategy and portfolio. She has created a corporate-wide IP awareness program and implemented new technology platforms for managing their patent portfolio.

Jonathan Taub is Vice President of Business Development and Licensing at Acacia Technologies Group. Previously, he was Director of Strategic Alliances for Microsoft's Mobile and Embedded Devices division and Business Development Manager for Microsoft's Security Business Unit.