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IP Chat Channel – Transactions

Webinars are listed in chronological order with the most recent at the top of the page.
In order to view past webinars click on the register button below.  Then click on “View Event Recordings” in the upper right hand corner.  All recordings are in chronological order, and can be searched by title using the find feature in your browser.

Please contact meetings@ipo.org if you have difficulty finding a recording.

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Blockchain: What IP Lawyers Need to Know

Webinar 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”?

Speakers:

Paul Keller, Norton Rose Fulbright
Joel Meyer, Digimarc Corporation
Patrick Murck, Pillsbury Winthrop Shaw Pittman, LLP




Open Source Due Diligence in M&A

Webinar Date: 08/04/2016

Click here to register to listen.

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

Speakers:

Victor Huang, eBay
Hanna Kim, Microsoft Corp.
Karla Padilla, Qualcomm, Inc.




Readying a Patent Portfolio for Sale

Webinar 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;
  • Encumbrances;
  • 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.

Speakers:

Themis Chryssostomides, Qualcomm, Inc.
Kent Richardson, Richardson Oliver Law Group
James Trueman, Ocean Tomo




Damages on Extraterritorial Sales After Carnegie Mellon

Webinar 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.

Speakers:
David Harkavy, The Claro Group
Blair Jacobs, Paul Hastings
Prof. Amy Lander, Drexel University, Thomas R. Kline School of Law



Global Developments in Standards and FRAND

Webinar Date: 08/25/2014

With key information technologies at stake, the possible abuse of standard essential patents (SEPs) is not just a U.S. issue. Investigations, litigation, and draft rules involving SEPs are springing up around the globe. This webinar will focus on recent developments in Asia and Europe, and compare them with the latest in the United States. Our panel includes an official of the U.S. Federal Trade Commission, a standards expert at a U.S. technology company, and a competition-law expert based in Brussels. They will analyze and compare:

  • The U.S. FTC Consent Decrees in Bosch and Motorola/Google
  • The European Commission’s two antitrust decisions this spring in Samsung and Motorola/Google which essentially create a “safe harbor” for willing licensees of FRAND-encumbered SEPs to avoid an injunction and address the circumstances under which a SEP holder may seek injunctive relief.
  • Recent developments in China including the Guangdong High People’s Court decisions in Huawei v. InterDigital, the decision of the Ministry of Finance (MOFCOM) in Microsoft-Nokia, the settlement of the National Development and Reform Commission (NRDC) with Interdigital, and new draft rules on FRAND from the State Administration for Industry and Commerce (SAIC).
  • Developments in other countries, including the decision of the Korean Fair Trade Commission in Apple, and the Competition Commission of India’s Investigative Orders in Ericsson.

Speakers:

  • Earl Nied, Intel Corp.
  • Christopher Thomas, Hogan Lovells
  • Koren Wong-Ervin, U.S. Federal Trade Commission



What Every IP Attorney Should Know About Open Source Software

Webinar Date: 07/31/2014

Hosted by IPO’s Open Source Committee

Moderator: Kenneth Corsello, IBM Corp.

If software is eating the world, then open source software has swallowed a big bite. Many products sold today – from gene sequencers to electric trains to stand alone software applications – contain open source software as part of or as a complement to that product. While product developers find open source to be a very valuable tool, it comes with some legal strings attached and should be used properly. Unfortunately, many business and IP professionals are unfamiliar with the legal issues and compliance requirements that open source licenses impose. As a result, many businesses do not have in place a review process to ensure compliance with the open license and to advise the business team on the legal impact of using a particular open source software package. Tune in to this webinar to learn the basics of open source from an IP law perspective.

  • What are “open source software” and “open source licenses”?
  • What are examples of conditions set by open source licenses and what is their relationship with IP law?
  • What happens if you use or distribute code without complying with an open source license?
  • How do you manage the risks associated with open source code?

Our panel includes in-house practitioners who advise their clients on open source issues on a regular basis. Among the issues they will discuss are:

Speakers:

  • Victor Huang, Illumina
  • Joseph D’Angelo, EMC Corp.
  • Elaine Lee, Hewlett-Packard Co.



Export Controls on IP: Understanding and Managing the Risk

Webinar Date: 04/09/2014

A U.S.-based inventor puts drawings or test results in an envelope and mails it to Germany. The same inventor walks across his lab and hands the data to a visiting scientist from China. Each of these is a technology export. So is allowing a foreign national or person in a non-U.S. jurisdiction to retrieve the information from a company or third-party server.

Most U.S. patent lawyers know about the USPTO’s Licensing and Review Office, which administers the Patent Secrecy Act and grants applicants a license to file patents abroad. But if that is all a patent lawyer knows about export controls, it exposes his or her clients to significant risk. Technology exports are also ruled by two other sets of export control regulations: the International Traffic in Arms Regulations (ITAR) and the Export Administration Regulations (EAR). Penalties that the Commerce Department administers under EAR (which cover “dual use” items), tend to be lower than those assessed by the State Department which administers ITAR (which cover defense/military items). But even EAR penalty exposure can be stiff, with statutory maximum civil penalties “the greater of $250,000 or twice the value of the transaction, per violation.” Then there’s the reputational damage associated with having a corporate name tied to violations of national security-related laws; the disruption and cost of dealing with an investigation; and the possibility of Commerce imposing a “denial of export privileges” and cutting off foreign sales.

Our panel includes the chief IP counsel of a major multinational technology company, and two law firm experts on export controls. They will;

  • give an overview of the export-control challenge facing corporate owners of IP
  • describe the regulatory regimes and the line between controlled and not-controlled information
  • focus on corporate environments (in addition to R&D) where export rules could come into play, such as mergers & acquisitions, cloud computing, and patent searching
  • outline key components of creating and monitoring a corporate compliance effort
  • discuss what it means to clean up past transgressions through a “voluntary disclosure” to federal authorities.

Speakers:

  • Daniel Staudt, Siemens Corp.
  • Scott Flicker, Paul Hastings LLP
  • Robert Torresen, Sidley Austin LLP



After Actavis: FTC Update

Webinar Date: 01/09/2014

The U.S. Supreme Court decision in Actavis last June removed the shield that had protected the pharmaceutical industry under the “scope of the patent”, allowing it to make settlement payments to generic companies in patent litigation. The court did not go so far as to find reverse payments presumptively illegal, but rather said a settlement’s possible pro-competitive benefits must be weighed against its potential anti-competitive effects. That leaves the parties designing a settlement, in the first instance, and then lower courts and the FTC, with the job of determining whether the terms of each deal constitute a likely antitrust violation.

The FTC is now reviewing the Hatch-Waxman settlements that have been submitted to it for review since June. Other recent relevant developments include Bayer’s $74 million payout to escape a consumer class action in November, decisions in the ongoing class action litigation regarding Nexium in the U.S. District Court of Massachusetts, and the FTC’s intention to pursue disgorgement of gains from past settlements.

An official from the FTC’s Bureau of Competition is the linchpin of a panel that includes two law firm attorneys. The topics they will discuss include the valuation of reverse payments in general, the role of ancillary agreements such as joint marketing agreements, and whether a branded company’s promise not to launch an authorized generic during the generic’s exclusivity period amounts to a reverse payment.

Speakers:

  • Steven Lee, Kenyon & Kenyon LLP
  • Michael Perry, Federal Trade Commission
  • Bruce Wexler, Paul Hastings LLP



Reverse Payments: Impact of U.S. Supreme Court on Hatch-Waxman Litigation

Webinar Date: 06/20/2013

On June 17, the U.S. Supreme Court altered the landscape of Hatch-Waxman litigation. In its 5-3 opinion in FTC v. Actavis, the court denied antitrust immunity for litigation settlements including reverse payments from innovative pharmaceutical companies to generic companies. The majority said the scrutiny for anti-competitive effects of such settlements must be done under a “rule of reason” framework and rejected the FTC’s view that reverse payments are presumptively illegal.

This new guidance to lower courts will impact the two dozen or so pending antitrust cases regarding reverse-pending settlements and will change the patent-challenge calculus going forward for both generic and innovator companies. Our panel includes an antitrust advocate who supported the FTC position, an appellate litigator who supported the now-rejected industry position, and another litigator with a broad background in antitrust. They will consider:

  • How will the “rule of reason” structure evolve in these cases?
  • What are the new rules for counseling generic companies considering launching a challenge?
  • Will the number of patent challenges by generic companies decline?
  • How will plaintiffs in antitrust cases meet post- Twombley pleading standards?
  • What will be the role of the merit of the patent?
  • Is Chief Justice Roberts’ correct in his dissent that the “court’s attempt to limit its holding to the context of patent settlements under Hatch-Waxman will not long hold”?

Speakers:

  • Jeffery Cross, Freeborn & Peters LLP
  • Albert Foer, American Antitrust Institute
  • Lawrence Rosenberg, Jones Day



Reverse Payments: U.S. Supreme Court Showdown

Webinar Date: 03/28/2013

Based on Monday’s U.S. Supreme Court argument in FTC v. Actavis, the devil may in the details of the opinion rendered. The FTC may not succeed in making all reverse settlements illegal until proven otherwise. But deals between research-based drug companies and generic companies that delay generic entry may face more scrutiny by judges than presently because of their potential impact on consumers.Some justices floated the idea of adopting a “rule of reason” test, widely-used in antitrust cases, which would require courts to weigh the pro- and anti-competitive aspects of the settlements. One point of contention among the justices: whether there needs to be a trial within a trial about the strength of the patent in question. “To say you can consider every other factor other than the strength of the patent is to leave out the elephant in the room,” stated Justice Scalia.

Our panelists, one of whom supports the FTC and the other the industry, will examine the nuances of the hearing and possible outcomes, including how companies should approach settlements now and what litigation about reverse settlements might look like in the future.

Speakers:

  • Jeffery Cross, Freeborn & Peters LLP
  • Albert Foer, American Antitrust Institute
  • Lawrence Rosenberg, Jones Day



Material Transfer Agreements: Best Practices & Pitfalls

Webinar Date: 11/29/2012

A Material Transfer Agreement (MTA) governs the transfer of tangible research materials between two organizations, and defines the rights of the provider and the recipient. The woes that can result from an ineffective MTA are highlighted by the recent petition for certiorari to the U.S. Supreme Court in Bard v. Gore, a long-running infringement dispute that started when Gore provided Bard with a material to see if it could become a blood graft. In her dissent to the Federal Circuit opinion, Judge Pauline Newman describes what can happen without a good MTA: “…A person who performs the requested test of a material that is provided to him for testing for a specified use, can then, when the test is successful, patent the material he was provided, for the use for which it was tested.”

Our panel will focus both on best practices in MTAs and avoiding pitfalls. Their discussion will include contract negotiations and provisions regarding:

  • Confidential information to make sure the recipient does not suffer contamination of its own IP
  • The permitted uses of the materials in experiments
  • IP issues, including who will own the IP created by experiments, and agreements regarding research publication and patent applications
  • Liability protection for the provider
  • Termination, including the return or destruction of the material
  • Issues unique to agreements with universities and other institutions receiving federal funding

Our panel includes a university technology transfer specialist, a biotech transaction lawyer, and an in-house counsel for an energy company.

Speakers:

  • David Giannantonio, Emory University Office of Technology Transfer
  • Charles Hoyng, Latham & Watkins LLP
  • Michael Kolman, BP America, Inc.

 




Inventor Compensation: A Global Approach Needed

Webinar Date: 10/31/2012

Many countries have detailed laws about the remuneration of employee-inventors that are quite different from U.S. laws, and these laws can prove quite costly. In 2009, for instance, GE Healthcare was told by a British court to pay £1,500,000 to two inventors who, as GE employees, had invented a commercially-successful radioactive imaging agent. Companies in France and Germany face such suits from employees regularly, while China added a new rigorous inventor compensation requirement to the Third Amendment of its patent law that went into force three years ago.

Our panel will illustrate the variations among laws internationally and give advice on how to implement systems within multinationals to aid compliance. For instance, it’s often necessary for inventor compensation to be addressed up-front in an employee’s initial employment contract, and attention needs to be paid to these details when a company is acquired. The panel will also focus on what kinds of records companies should keep, as well as the negative repercussions that can follow if an employer tells one version of the facts to foreign tax authorities and another version to labor regulators. Our panel includes an employment lawyer specializing in cross-border human resources issues, and two in-house patent counsel at large multinationals.

Speakers:

  • John Conway, Sanofi Aventis Groupe
  • Donald Dowling, White & Case
  • Matt Penarczyk, Microsoft Corp.



Part 2: IP in Bankruptcy

Webinar Date: 08/02/2012

IP can often be a troublesome issue in bankruptcy, and no wonder: the goals of bankruptcy law and IP law are often at odds. Bankruptcy law was designed to maximize the debtor’s value, while IP law aims to protect a party’s right to control access to its IP.

For example, when a company enters bankruptcy, a debtor generally enjoys nearly unfettered discretion to sell company assets and to assume, assign or reject contracts notwithstanding contractual provisions. But the rules become far more complicated, and the debtor’s options may be dramatically restricted, where the IP rights at issue are the subject of a license. Where the debtor has licensed its IP to an unaffiliated third party, section 365(n) of the Bankruptcy Code permits the licensee to retain certain of its rights under the license even after it has been rejected by the debtor-licensor if the licensee continues to pay all royalties. And if the debtor has licensed IP rights from a third party, IP laws may altogether prevent the debtor from assuming or assigning the underlying license absent the licensor’s consent.

Our panel, which includes two bankruptcy attorneys and an IP lawyer specializing in transactions, will consider key issues, including the current split among federal appellate courts regarding the test applied to determine whether a debtor-licensee may assume an IP license and when a debtor-licensee may assign its IP license to an unaffiliated third party. The panelists will also address section 365(n) and the ways in which patents, copyrights, and trademarks are treated differently in bankruptcy.

Speakers:

  • David Klein, Foley & Lardner, LLP
  • Kimberly Posin, Latham & Watkins LLP
  • Glenn Walter, Skadden, Arps, Slate, Meagher & Flom LLP



Part 1: IP in Debt Transactions

Webinar Date: 08/01/2012

As IP is increasingly recognized as a valuable asset, there are new opportunities for companies to use it as collateral or security for loans. For instance, the Financial Times recently reported that several U.S. banks want to insure the value of the IP holdings of some borrowers as a way of trimming the banks’ capital requirements. Such a move should allow the borrowers to win lower loan rates.

Our panel will analyze a broad spectrum of issues raised by IP in debt transactions, including due diligence, documentation, and perfection of the lender’s security interest. Sometimes IP can pose a hurdle in financing, for instance when a would-be borrower is a licensee of a valuable license for which no assignment can be made without the licensor’s consent. The possibilities and impediments to using IP rights in cross-border financial transactions will also be addressed.

Our panel includes three lawyers with experience in technology transactions, including the use of IP as collateral.

Speakers:

  • Roxanne Christ, Latham & Watkins LLP
  • David Klein, Foley & Lardner, LLP
  • Elaine Ziff, Skadden, Arps, Slate, Meagher & Flom LLP



Licensing Trade Secrets

Webinar Date: 05/17/2012

Licensing of patents continues to grow as a major source of income for many patent owners, both practicing and non-practicing.

The time may be ripe for more companies to consider monetizing their trade secrets. It is well known that trade secret protection lasts as long as the information remains secret, and royalties from the license of a trade secret can also last a very long time, with some historic trade secret licenses yielding income to the licensor for over a hundred years.

This webinar will explore fine points of licensing trade secrets in manufacturing, technology, data, and software. Topics covered include:

  • Drafting confidentiality, non-disclosure, non-use, and residual knowledge provisions;
  • Structuring a license to include patent rights and know-how;
  • Licensing trade secrets in the life sciences, including issues involving biological materials; and
  • Valuing and pricing trade secret licenses.

Our panel includes the head of IP for a major multinational automotive company, a transaction specialist in the life sciences, and an expert in the financial valuation of intangible assets.

Speakers:

  • William Coughlin, Ford Global Technologies LLC
  • Matt Moyers, Ocean Tomo
  • Amy Toro, Covington & Burling LLP



Legal Aspects of the "Make or Buy" Decision

Webinar Date: 04/11/2012

Companies have more options than ever before as they decide between investing in the development of a certain technological capability internally, licensing-in technology, or buying a patent or patents to obtain the freedom to operate.

To be effective, this decision-making process brings together representatives from R&D, strategic planning, business units and the legal department. The panelists of this webinar will discuss what IP lawyers both in-house and at law firms should bring to the table in these discussions. For instance, lawyers need to be ready to discuss whether a company’s existing or planned product lines infringe or are likely to infringe the claims of a patent under consideration, and also how a patent under consideration will hold up under the scrutiny of potential licensees. Lawyers should also be part of a discussion early on whether the purchaser just wants to use the patent for defensive purposes, or whether it will use it offensively in licensing and/or litigation.

Our panel includes a leading IP strategist, a law firm attorney who specializes in patent and licensing deals, and an in-house lawyer at a high-tech start-up who previously was head of IP for a major manufacturing company.

Speakers:

  • Suzanne Harrison, Percipience LLC
  • Eric Oliver, Richardson & Oliver LLP
  • Jim O’Shaughnessy, HarQen



IP Issues in M&A Transaction Agreements

Webinar Date: 03/01/2012

This webinar will consider important lessons in structuring the IP clauses of transaction agreements and related ancillary agreements for deals involving the purchase and sale of corporate stock and assets.

Our panel of experts will address:

  • Negotiating and drafting representations and warranties and indemnification provisions related to the seller’s IP.
  • The nuances of cross-licensing and post-closing transitional services agreements.
  • Issues regarding post-closing integration of acquired IP into the acquirer’s existing portfolio.

Speakers:

  • Paul Broude, Foley & Lardner, LLP
  • David Klein, Paul Hastings, LLP
  • Cynthia-Clare Martey, Caterpillar Inc.



Avoiding Pitfalls in IP Due Diligence

Webinar Date: 02/28/2012

A major technology company is on a fast track to sign a deal to acquire a multinational software vendor. In-house counsel at the acquirer engages two law firms to engage in the crucial IP due diligence. Our experienced panelists will rely on their real-life experiences as they act out this scenario, imparting key lessons on assessing ownership, infringement, and invalidity risks in the target company’s IP portfolio.

Among the considerations:

• How to manage the scope of the diligence to provide critical information to the team evaluating the deal
• The growing importance of scans for open-source software code in acquisitions of all types of companies
• Difficulties posed by the multi-national nature of the target, e.g. challenges in moving IP out of foreign jurisdictions and the mechanics of performing effective foreign diligence
• Spotting and managing conflicts, such as when the other clients of the outside firm hired to conduct the IP due diligence has IP agreements with the target
• How does privilege apply in requesting information on litigation strategy and patentability opinions from the target?
• Establishing and taking advantage of a post-closing window to complete deep diligence that could not be completed prior to closing.

Speakers:

  • Joseph Bracken, IBM Corp.
  • Daniel Marti, Kilpatrick Townsend & Stockton, LLP
  • David Teske, Alston & Bird, LLP



Best Practices in Invention Assignment Agreements

Webinar Date: 04/27/2011

Two high-profile cases in IP involve conflicts between inventors and the companies or universities where they worked. The bitter dispute over Bratz dolls began when Mattel said a designer came up with the idea for the edgy dolls when he worked there, before he moved to MGA which built the dolls in to a hugely profitable franchise. In Stanford University v. Roche, a case heard recently by the U.S. Supreme Court, some attorneys say Stanford’s plight in losing control of HIV discoveries, tangled with the Bayh-Dole Act, was the result of the University’s failure to negotiate a tight assignment agreement with its researchers and scientists. There are plenty of lower profile cases too. For instance, in the recent Federal Circuit case Advanced Magnetic Closures v. Rome Fasteners, an incorrect listing of multiple inventors led to the patent being deemed invalid. St. John’s University is suing the former head of its Department of Pharmacology and a former grad student for $30 million, 30 percent of the $100 million the two have earned by licensing patents on liquisolid systems.

Our panel of experts will consider best practices for employers globally on this issue. Topics covered will include invention assignment law and practice in the U.S. and in a cross-section of countries around the world. Consideration will also be given to how a multinational corporation should think about managing its invention assignment practices and how to avoid negative surprises after mergers and acquisitions. The panel includes an international employment law specialist, European patent lawyer, and an experienced in-house counsel.

Speakers:

• Daniel Brook
• Susan Eandi
• Noreen Johnson




Licensing: The Impact of Recent Decisions on Standing

Webinar Date: 03/09/2011

In an important decision regarding the standing to sue under a patent license, the Federal Circuit in late December clarified the meaning of “exclusive licensee” in WiAV v. Motorola. In reversing a district court, the court ruled for the plaintiff, holding that “a licensee is an exclusive licensee of a patent if it holds any of the exclusionary rights that accompany a patent.”

This follows an earlier Federal Circuit decision last year, Alfred E. Mann Foundation v. Cochlear, in which the issue on appeal was whether the license agreement transferred sufficient rights to an exclusive licensee to make it the owner of the patents, leaving the licensor without the standing to sue. In its opinion, the Federal Circuit discussed a number of factors for consideration in making such a determination, including exclusivity, reversion of rights after breach, the right to receive a portion of recovery, the right to supervise and control licensee’s activities, the obligation of licensor to pay patent maintenance fees, limitations on the right to sublicense and the license’s duration. Ultimately the Court ruled that “the nature and scope of the exclusive licensee’s purported right to bring suit, together with the nature and scope of any right to sue purportedly retained by the licensor, is the most important consideration.”

This panel brings together a specialist in IP transactions, an IP litigator, and an in-house counsel with extensive experience in business development and licensing. They will consider the impact of these two decisions on both licensors and licensees, in both the negotiation of new agreements and in litigation.

Speakers:

Greg Feulner, DuPont
Adam Ruttenberg, Cooley LLP
E. Robert Yoches, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP




Government Contracts Boot Camp: What IP Attorneys Need to Know

Webinar Date: 12/16/2010

The rules governing the generation, use, and control of IP when dealing with the federal government present risks and opportunities to companies that can be very different from the risks and opportunities found in the commercial environment. In fact, experts speak of a “fifth category” of IP (beyond patents, trade secrets, copyright and trademarks) when dealing with the federal government: Rights in “Technical Data” and “Computer Software”.

This webinar is a primer and update on IP issues in government contracts for the experienced IP attorney and executive. Our panel of specialists will discuss how rights in technical data and computer software are determined and allocated, and how to spot “red flags” in solicitations and subcontract agreements. They will provide strategies to maximize the protection of the contractor’s private rights. Current developments will also be touched on, such as the Department of Defense’s recently proposed rules which would amend regulations related to patents, data and copyrights.

Speakers:

  • W. Jay Devecchio, Jenner & Block
  • Douglas Lashmit, IBM Corp.
  • Nicole Owren-Wiest, Wiley Rein



Licensing In Innovation: Working With Independent Inventors And Small Companies

Webinar Date: 12/09/2010

Eager to jumpstart innovation and outthink competitors, corporations are casting a wider net for business ideas and technology. For instance, GE just named the first winners in a contest to identify promising ideas regarding smart grids. According to a recent article in Bloomberg Businessweek, Cisco Systems, Netflix, and PepsiCo have also launched competitions to encourage outsiders to submit inventive ideas, while P&G, Starbucks, Dell, and others use their websites to encourage inventors, entrepreneurs and customers to suggest new products.

But IP professionals know that such outreach has its dangers, and that relationships between individual inventors and entrepreneurial small companies, on the one hand, and large corporations, on the other, can be a challenge for both sides. IP professionals at large companies need to ensure that their companies have no liability for using internally-generated discoveries that submitters might claim is their IP. And lawyers who counsel inventors have to educate them on the realities of licensing and tone down often-outsize expectations.

Our panel of experts include an in-house counsel at P&G, a leader in open innovation which has licensed more than 1,000 ideas from outsiders, a law firm attorney with experience working both with individual inventors and in-house, and the principal of a firm that acts as an intermediary between inventors and large companies.

Speakers:

  • Kim Zerby, P&G
  • John T. Funk, Evergreen Innovation Partners
  • Earl LaFontaine, Brooks Kushman P.C.



R&D Collaborations: With Competitors, Vendors, Customers And Others

Webinar Date: 12/02/2010

Companies increasingly recognize that cooperation with other companies may be the most efficient way to solve technological problems and increase the value of their own R&D. But only a foolhardy company would embrace this new openness without considering the risks.

This webinar will consider a company’s overarching concerns entering an R&D collaboration, including maximizing the IP produced in the venture, allocating ownership and rights, and protecting background IP. It will examine how those goals may be influenced by the kind of IP produced: product designs, manufacturing processes or software.

Specific provisions in a collaboration contract will be examined in detail. Topics include:

• the advantages and disadvantages of joint ownership of the collaboration’s IP
• concerns regarding joint ownership of IP by companies in different countries
• special issues regarding trade secrets
• control and obligations regarding patent prosecution and copyright registration
• IP enforcement.
• licensing rights among the collaborators.

Our expert panelists have negotiated many such deals and will give sophisticated advice on judging alternatives and avoiding pitfalls.

Speakers:

  • Kenneth Seddon, Numonyx B.V.
  • Jennifer Wuamett, Freescale Semiconductor, Inc.
  • Ron Ben-Yehuda, Gibson, Dunn & Crutcher



Apportioning Risk in Sales & Licenses: Warranties, Limitations of Liability and Indemnification

Webinar Date: 09/23/2010

Companies that buy or license technology from others didn’t used to have to worry much about being sued for patent infringement on that technology — the patent holder would take its dispute up directly with the other supplier, because the buyer or licensor was also likely the patent holder’s own customer or potential customer. But that equation has changed. For instance, when Rembrandt Technologies wanted to enforce its patents involving digital TV, the patent holding company sued a group of cable systems operators including Cablevision and Time Warner, but not the manufacturers whose components allegedly infringed the patents.

This situation has heightened the tensions between suppliers and buyers/licensors. In May, for instance, Sprint Nextel sued its suppliers Sanyo, Kyocera and Palm in the U.S. Court for the District of New Jersey, claiming that they are obligated to pay Sprint’s defense costs and potential liabilities in an infringement case brought against it by Digital Technology Licensing.
This panel of experts will give sophisticated advice on these situations, including how to draft agreements that eliminate ambiguity and properly allocate risk, strategy on how to enforce indemnities through litigation if necessary, and how to deal with lurking problems in existing patent and license portfolios.

Speakers:

Allen Baum, Brinks Hofer Gilson & Lione
Terry Garnett, Paul, Hastings, Janofsky & Walker LLP
Krish Gupta, EMC Corp.




IP Issues in the IT Cloud

Webinar Date: 08/26/2010

Cloud computing offers compelling savings to corporations eager to reduce their computing costs, but numerous legal issues remain unanswered. Many experts have focused on concerns about privacy and security in the cloud, but this webinar will concentrate on IP issues. For instance, how can a customer structure a contract so that it is indemnified against any patent infringement claims against the host? What issues are raised when data are housed on a server in another country? Based on content lodged in its cloud, does a host run the risk of infringing copyright? Infringing trademarks?

Our panel of experts includes two law firm experts and a senior director of IP at Symantec Corp., which has both inked a deal to offer services through Amazon’s cloud service and moved its own IP infrastructure to a third-party cloud provider.

Speakers:

  • Robert Blasi, Goodwin Procter
  • Meredith McKenzie, Symantec Co.
  • Mark Wittow, K&L Gates



Recent Decisions in Licensing: The Importance of Who, What, Where, and When

Webinar Date: 03/11/2010

A handful of recent significant appellate decisions underline the key importance of careful drafting in license agreements, particularly when it comes to delineating exactly who the parties are, what’s being licensed and the implications of future business events. These decisions include Imation Corp v. Koninklijke Philips and TransCore v. ETC at the Federal Circuit, Warf v. Xenon at the 7th Circuit Court of Appeals, and Cincom Systems v. Novelis at the 6th Circuit Court of Appeals. This panel of experts will draw out the practical ramifications of these decisions for licensing agreements and litigation.

Speakers:

Barton E. Showalter, Baker Botts LLP
Paul Devinsky, McDermott Will & Emery LLP
Lisa K. Jorgenson, STMicroelectronics, Inc.




Moving Away From the Billable Hour in Patent Litigation

Webinar Date: 11/12/2009

The demise of the billable hour has been predicted for years, but today’s economic woes are finally pushing alternative fee arrangements into the mainstream. Fixed fees seem an odd fit for high-stakes patent litigation, but that doesn’t mean they haven’t been tried. Hear how the experiment works out for clients and top law firms.

Speakers:

Kevin Rhodes, 3M Innovative Properties
John Adkisson, Fish & Richardson
William Lee, WilmerHale