Law Seminars International Presents: Our Fifth Annual Conference on

Best Practices in Patent Monetization
Tips and strategies for buying and selling patents in today's markets

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

February 18 & 19, 2010
San Francisco Marriott Union Square Hotel in San Francisco, CA

Who Should Order This Homestudy

Attorneys and business executives involved with selling and acquiring intellectual property

Why Order

As a result of more open business models and liquidity in an emerging patent transaction marketplace, companies are increasingly buying and selling patents to supplement, expand and strengthen their existing portfolios as well as respond to specific IP threats. Like land speculators, patent investors are investing billions of dollars to amass assets that they intend to monetize for a substantial return. This activity and investment presents patent owners with increasing flexibility in monetizing their patents. Most recently, tight credit markets and court rulings have increased the emphasis on high quality patents. However, the market for patents is still quite active.

This conference will look at how the patent monetization process really works for 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 sales, with a focus on how to optimize those transactions to the benefit of both buyers and sellers.

Patents are knowledge assets, so to successfully transact patent transactions, sellers must understand how value is determined and how buyers make decisions. Experienced professionals will discuss and provide real world examples on how quality patents are developed, identified and sold within this context.

Attendees will learn tips and strategies for managing the buying process and conducting due diligence, and ways to manage risks and participate successfully in the market-making process.

~ Program Co-Chairs: Marc S. Kaufman, Esq. and Michael Pierantozzi

What You Will Learn

Agenda

Thursday, February 18, 2010

8:00 am

Registration and Continental Breakfast

 
8:30 am

Introduction and Overview

Marc S. Kaufman, Esq., Program Co-Chair
Nixon Peabody LLP / Washington, DC

Michael Pierantozzi, Program Co-Chair, Vice President Corporate Development
IPotential, LLC / San Mateo, CA

 
8:45 am

Patent Marketplace 2010: Investor's Outlook on Patents as Financial Assets

Trends in patent transactions, new players and new approaches for financing patent acquisitions in a value-based patent market

Michael Pierantozzi, Vice President Corporate Development, Program Co-Chair, Moderator
IPotential, LLC / San Mateo, CA

Peter Holden, Ph.D., Partner
Coller Capital / New York, NY

Chet White, Managing Director
Griffin Partners, LLC / San Francisco, CA

Michael J. Lasinski, CPA, Managing Director
Capstone Valuation Services, LLC / Chicago, IL

 
10:15 am

Break

 
10:30 am

Selection of Forum: An Increasingly Critical Issue

Plaintiff perspective on recent cases and how they impact the choice of venue: Differences in time frames, budgetary requirements and substantive outcomes

Gary S. Morris, Esq.
Townsend and Townsend and Crew LLP / Washington, DC

Defendant perspective

Justin A. Nelson, Esq.
Susman Godfrey LLP / Seattle, WA

 
12:00 pm

Lunch (on your own)

 
1:15 pm

Focusing Corporate Resources: Institutional Mechanisms to Maximize Shareholder Value from Patent Development Programs

Building a quality patent portfolio aligned to your business strategy to protect inventions, provide freedom to operate, affect competition and support licensing programs

Marc S. Kaufman, Esq., Program Co-Chair, Moderator
Nixon Peabody LLP / Washington, DC

Craig P. Opperman, Esq.
Reed Smith LLP / Palo Alto, CA

James E. Parsons, Esq., Senior Director Intellectual Property
Brocade Communications Systems, Inc. / San Jose, CA

 
3:00 pm

Break

 
3:15 pm

Running an Effective Patent Purchasing Program

Why and how companies and investors buy patents; setting goals for purchasing programs; typical structures of in-house purchasing groups and use of internal and external resources; levels of due diligence

Kevin Barhydt, Vice President of Acquisitions
RPX Corporation / San Francisco, CA

Abha Divine, Managing Director
Techquity Capital Management LLC / Austin, TX

Vinod Kumar, Director of Portfolio Development
MOSAID Technologies Incorporated / Kanata, ON

David Lubitz, Esq., General Manager, Patent Licensing and Sales
Microsoft Corporation / Redmond, WA

 
5:00 pm

Continue the Exchange of Ideas: Reception for Faculty and Attendees Sponsored by IPotential, LLC and Nixon Peabody LLP

 

Friday, February 19, 2010

8:00 am

Continental Breakfast

 
8:30 am

Designing and Implementing Patent Management and Monetization Programs: Decision Rules for When to Hold, Sell, License, or Abandon

Marketplace factors affecting the decision to license or sell patents; finding the right match between the market factors and characteristics of each form of monetization

Davina Inslee, Esq., IP Counsel
Vulcan Inc. / Seattle, WA

 
9:15 am

Patent Aggregators and Defensive Patent Funds

How companies evaluate and decide whether to participate

Kevin Barhydt, Vice President of Acquisitions
RPX Corporation / SAN FRANCISCO, CA

Michael C. Lee, Esq., Senior IP Counsel
Cisco Systems, Inc. / San Jose, CA

Daniel P. McCurdy, CEO
Allied Security Trust / Lambertville, NJ

 
10:30 am

Break

 
10:45 am

Corporate Patent Sales Programs: How Large Companies Sell Patents in Relation to the Overall IP Program

Lessons learned on how best to sell in the current market; obtaining needed internal approval to sell; interacting with the business units; running an effective sales program

Matt Gordon, MBA, Director of Licensing
Microsoft Corporation / Redmond, WA

Feisal Mosleh, Director Patent Sales Group
Hewlett-Packard Company / Palo Alto, CA

 
12:00 pm

Lunch (on your own)

 
1:15 pm

Patent Eligibility: Keeping on Top of Evolving Standards for Patentability and Implications for Creating Truly Valuable Patents

Relationship between value and the likelihood of surviving a validity challenge; areas of significant changes in legal standards in recent years

Fabio Marino, Esq.
Orrick, Herrington & Sutcliffe LLP / Menlo Park, CA

New leadership at the USPTO: Practical tips for dealing with the uncertainty arising from different standards and subsequent challenges in court and the USPTO; a perspective on patentability from the outcome on the Bilski case

Marc S. Kaufman, Esq., Program Co-Chair
Nixon Peabody LLP / Washington, DC

 
2:30 pm

Break

 
2:45 pm

Licensing or Litigation: When You Have a Patent Portfolio Worthy of Licensing, How Do You Determine the Appropriate Strategy to Meet Your Business Goals?

Growth in patent assertions and corresponding number of patent litigations filed; whether to file suit first, then negotiate settlement, or begin with a licensing approach strategy; understanding your options

Ron Epstein, Esq., Co-Founder and CEO
IPotential, LLC / San Mateo, CA

William Marino, Esq., General Counsel and Managing Partner
Altitude Capital Partners / New York, NY

John P. Veschi, Esq., Chief Intellectual Property Officer
Nortel Networks / Richardson, TX

 
4:30 pm

Evaluations and Adjourn

 

Cancellation

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 California MCLE 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 DVD recording and the course materials (either a binder or searchable CD), is available for $1255. The course materials alone are available for $100. We will ship your Homestudy order via UPS ground within two weeks after the seminar or from the date we receive payment.
Order Homestudy

Faculty Bios

Marc S. Kaufman, Program Co-Chair, partner at Nixon Peabody LLP, is the Leader of the Patents Group and specializes in managing intellectual property assets in a variety of technical fields, including computer architectures, digital rights management, database technology, search engine technology and data mining. He has been selected to the IAM 250 Most Influential People in Intellectual Property for 2009.

Michael Pierantozzi, Program Co-Chair, Vice President of Corporate Development at IPotential, LLC, is a technology entrepreneur and intellectual property business strategist, focusing on increasing liquidity in the global intellectual property markets, while helping businesses implement strategies that create, protect and leverage their intellectual property for profit. Previously he was Managing Director in HP's Intellectual Property Licensing group.

Kevin Barhydt, Vice President of Acquisitions at RPX Corporation, was Vice President of Acquisitions at Intellectual Ventures (IV) where he oversaw the completion of hundreds of patent acquisitions and launched key strategic initiatives to advance the Acquisitions program.

Abha Divine, Managing Director of Techquity Capital Management LLC, focuses on the acquisition, development and commercialization of intellectual property. Previously she launched and served as President and CEO of AT&T Knowledge Ventures.

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

Matt Gordon, Director of Licensing at Microsoft Corporation, focuses on patent licensing, sales and acquisitions. Previously he was at Intel and Intel Capital as the Director of the Seattle office.

Peter Holden, Ph.D., Partner, Head and Founder of the IP Investment Group at Coller Capital, focuses on licensing and intellectual property monetization programs with corporations, research centers and universities worldwide. Previously he held senior positions at Panasonic, IPVALUE Management, University Patents, and Invisible Hand LLC.

Davina Inslee is IP Counsel at Vulcan Inc., where she is responsible for the development and monetization of intellectual property. Previously she was Patent Counsel for T-Mobile USA, Inc.

Vinod Kumar, Director of Portfolio Development at MOSAID Technologies Incorporated, handles patent acquisitions and partnerships with IP holders, focusing on the licensing and development of semiconductor and communications technologies.

Michael J. Lasinski, CPA, Managing Director at Capstone Valuation Services, LLC, focuses on business and intellectual property valuation, strategic due-diligence and litigation consulting. Previously he was a Managing Director at Ocean Tomo, LLC.

Michael C. Lee, Senior IP Counsel at Cisco Systems, Inc. focuses on patent asset acquisitions, intellectual property licensing, standards and open source management strategy, and patent policy. Previously he was Senior Legal Director of IP Litigation and Conflict Management at Yahoo! Inc.

David Lubitz, General Manager, Patent Licensing and Sales, handles patent cross license negotiations with companies located in the U.S., Europe and Asia, and also acquisitions of third party patents. Previously he was the Managing Partner of a U.S. law firm's Tokyo office.

Fabio Marino, partner at Orrick, Herrington & Sutcliffe LLP, is chair of the Networking Practice Group. He focuses on intellectual property law with an emphasis on patent litigation. He was named a "Super Lawyer" and "Leading Lawyer" and is listed in Chambers.

William Marino, General Counsel and Managing Partner at Altitude Capital Partners, litigates patents, trademarks and other intellectual property cases, and negotiates patent licenses. Previously he was senior attorney at Robins, Kaplan, Miller and Ciresi L.L.P. and Mintz Levin Cohn Ferris Glovsky and Popeo P.C.

Daniel P. McCurdy, Chief Executive Officer of Allied Security Trust, is responsible for management of the Trust, patent acquisition and divestiture negotiations, and membership expansion. He remains Chairman of PatentFreedom, the on-line, subscription-based global authority on Non-Practicing Entities, sometimes called patent trolls.

Gary S. Morris, Partner-in-Charge of the DC office of Townsend and Townsend and Crew LLP, advises clients on intellectual property law. He is experienced in information technology, including computer and network security, cryptography and telecommunications.

Feisal Mosleh, Director of the Patent Sales Group, Intellectual Property Licensing at Hewlett Packard Company, has cross-functional experience managing sales teams, leading major software development projects to developing business strategies and executing market plans for high growth businesses.

Justin A. Nelson, partner at Susman Godfrey LLP, focuses on intellectual property, antitrust and appellate litigation. He was an Adjunct Professor at Seattle University Law School.

Craig P. Opperman, partner in Reed Smith LLP's Intellectual Property Group, focuses on U.S., European and Asian high-tech, clean-tech and medical device experience, and provides services centered on intellectual property as a strategic corporate asset.

James E. Parsons, Senior Director of Intellectual Property, at Brocade Communications Systems, Inc., a networking company, is responsible for the intellectual property program, including litigation, patent prosecution and patent purchasing. Previously he was VP, Associate General Counsel at Foundry Networks, Inc.

John P. Veschi is Chief Intellectual Property Officer at Nortel Networks.

Chet White is a founder and Managing Director at Griffin Partners, LLC, a growth capital and advisory firm. Previously he was a Managing Director in the Technology Investment Banking practice at MCF & Co.