IP Chat Channel – Transactions
Webinars are listed in chronological order with the most recent at the top of the page.
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Blockchain: What IP Lawyers Need to KnowWebinar Date: 08/23/2016
Will blockchain technology soon leap beyond its initial success in the currency Bitcoin to disrupt many industries and the legal profession itself? That remains to be seen. But companies and clients are curious about blockchain’s potential, regardless of its timetable or ultimate impact, and IP lawyers can benefit from a better understanding of the distributed ledger technology and its implications.
Our panelists include a legal pioneer who is the former General Counsel of the Bitcoin Foundation, the executive vice president of IP at a technology company specializing in digital watermarking who has questions about blockchain, and a patent litigator. After a brief introduction to the technology itself, they will discuss:
- New Applications: Which industries beyond finance will embrace new blockchain applications – 3D printing and digital rights management, logistics and supply chain management, energy grid management, capital markets trading, real property transfers?
- Smart Contracts: These are contracts written in source code, recorded on a blockchain and then automatically performed and enforced without the involvement of contracting parties or central authorities. Will smart contracts enter the mainstream? Do they challenge the basic principles of contract law, contract interpretation and the application of equitable principles
- Security: What is the focus of the debate about blockchain security?
The IP landscape of blockchain — Open source or proprietary?: Many founders of Bitcoin embrace open-source models, but at least one pioneer is reported to have recently filed patent applications on the building blocks of blockchain. Other companies are quickly trying to amass patent portfolios around blockchain applications. But questions about patent eligibility and obviousness loom. Are many blockchain patents and applications little more than the computerized and non-novel application of an “abstract idea”?
Paul Keller, Norton Rose Fulbright
Joel Meyer, Digimarc Corporation
Patrick Murck, Pillsbury Winthrop Shaw Pittman, LLP
Open Source Due Diligence in M&AWebinar Date: 08/04/2016
Open source software (OSS) can shorten product development cycles and is likely something you use every day. OSS, however, is not free, and compliance with open source software may be in terms of a patent or copyright license instead of a monetary payment. In fact, OSS costs in an acquisition or merger can impact the valuation of the target, delay, or even scuttle the deal.
This webinar will focus on exploring OSS issues during due diligence. This includes examining how OSS was used by the target of the acquisition and whether such use aligns with the acquirer’s business model. The discussion will include:
- Exploring how an acquisition target uses the open source;
- Determining possible impacts on a target’s intellectual property both in terms of copyright and patents;
- Determining possible impacts on the acquirer’s intellectual property; and
- Possible ways to mitigate open source use of the target when such use does not align with the acquirer’s business model.
The moderator and panelists are experts in OSS at major technology companies.
Moderator: Joseph D’Angelo, EMC Corporation
Victor Huang, eBay
Hanna Kim, Microsoft Corp.
Karla Padilla, Qualcomm, Inc.
Readying a Patent Portfolio for SaleWebinar Date: 06/22/2016
Sale prices for patents are way down from a few years ago, but that hasn’t stopped sellers from putting patents on the market. Companies that are discouraged by their own licensing or litigation prospects are trying to find buyers who want those patents for reasons of their own. This webinar will focus on the legal and strategic considerations in readying a patent portfolio for sale. The patent market is much more liquid than it was ten years ago, yet experts say that many patent sellers still come to the table unprepared to answer important questions. Our panel features an in-house counsel at an active buyer of patents, and lawyers at two top IP strategy firms. They will discuss important aspects of readying a patent portfolio for sale, including:
- Chain of title issues;
- Patent and invention assignment language;
- Inventorship; and
- Terminal disclaimers.
They also will discuss strategy issues about how to best highlight the value of a portfolio, the inclusion of non-U.S. patents, the optimal size of a portfolio, and the use of brokers.
Themis Chryssostomides, Qualcomm, Inc.
Kent Richardson, Richardson Oliver Law Group
James Trueman, Ocean Tomo
Damages on Extraterritorial Sales After Carnegie MellonWebinar Date: 02/24/2016
A final adjudication of the high-stakes patent litigation Carnegie Mellon v. Marvell could have helped resolve one of the biggest legal uncertainties in IP: whether and how reasonable royalties on domestic use of a patented technology can include extraterritorial sales as part of the royalty base. Litigation on this point often includes complicated fact patterns regarding, for instance, the path of foreign-manufactured components arriving in the U.S. through a long distribution channel. But those looking for answers, including whether a sale may have more than one location, must now look elsewhere — this month Marvell agreed to pay $750 million to CMU to settle all claims. Several ongoing cases incorporating these issues are still underway, however, including Western Geco (Schlumberger) v. Ion. Their results promise to have far-reaching consequences, not just for damages quantification, but also for where companies choose to conduct their R&D and sales support.
Savvy patent owners can already follow the path of recent case law to improve their chances in litigation and licensing. Our panelists will clarify the issues and give advice on new possibilities for royalty structures. Our panel includes a litigator who is involved in long series of cases involving foreign sales; a law professor who studies extraterritoriality; and a damages expert.
Blair Jacobs, Paul Hastings
Prof. Amy Lander, Drexel University, Thomas R. Kline School of Law