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Agenda
Day 1 July 20, 2006
8:00 am
Registration & Networking
8:30 am
Identifying the Right IP Strategy for Your Business
Carrot licensing vs. stick licensing
Best practices for in-licensing versus out-licensing
Revenue generator vs. bargaining chip
Propriety of overlapping licenses
Degree of litigiousness
Best practices for cross-licensing to avoid taxation
Risk reduction strategies
Building an IP strategy that reflects a companys goals and culture
Modulating your IP strategy to fit within your overall business plan
Moderator:
Scott P. Cooper, Partner, Proskauer Rose LLP
Panelists: Timothy J. Hadlock, Senior Counsel Intellectual Property, Chevron Corporation
Gene Potkay, Ph.D., Vice-President, Intellectual Property Patent & Licensing
Management, Avaya Inc.
Sharon K. Grosh, Director, Strategic
Intellectual Asset Management, 3M
Innovative Properties Company
Matthew M.
Sarboraria, Patent Counsel, Oracle Corporation
9:15 am
Financing IP Litigation
When should you consider a contingency fee agreement with your lawyers?
What type of case is of interest to contingent fee lawyers?
When can you use a contingency fee agreement in a defensive case?
What are the risks and benefits of a contingency fee agreement?
What considerations should you take into account when hiring a contingency law firm?
What are the various types of contingency fee arrangements?
What are the alternatives to contingency lawyers insofar as financing IP litigation?
Speaker: Ronald J. Schutz, Partner, Robins, Kaplan, Miller & Ciresi
L.L.P.
Robert Kramer, Founder, Altitude Capital
10:00 am
Coffee & Networking Break
10:30 am
Computer and Internet Law and the Safeguarding of Trade Secrets
The FTCs undermining of online contracts
Blogs and online postings
Open-sourcing, sharing or giving away, non-core IP
Modification of IP for personal use
The implications of the Grokster decision
Outsourcing the manufacture and design of product
Disintermediation of the supply chain
Participation in standards setting
Speakers: Mark D. Rasch, Senior Vice President and Chief Security Counsel, Solutionary, Inc.
Mark Tolliver, CEO, Palamida, Inc.
11:15 am
Using IP Securitization to Drive Your Business Strategy
Using IP securitization as a business tool
Creating liquidity through IP securitization
Achieving GAAP sale treatment through IP securitization
Using IP securitization as a risk transfer vehicle
Using IP securitization to expedite joint ventures and joint marketing initiatives
Is your IP portfolio suitable for the capital markets?
What is life like after IP securitization?
Supporting case study
Speakers: Ronald S. Borod, Chair of Structured Finance Group, Brown Rudnick Berlack Israels LLP
Don Davis, Managing Director and General Counsel, Commercial Strategy
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12:00 am
Luncheon & Networking
Sponsored by Proskauer Rose LLP
1:15 pm
Imperative Legal Issues
Mitigating The Risks of Countersuits
Knowing when and how to file suit
Cross-licensing to competitors
Building a feared patent portfolio
Patent assertion vs. litigation
Class Action Law Suits - An overview of the trends, causes, merits, and settlements of class action lawsuits brought about by allegations of mismanagement of intellectual property.
Best Practices for Electronic Records Management
The Impact of the Changing Supreme Court on IP Rulings
Speakers: Kristin H. Neuman, Senior Counsel, Proskauer Rose LLP
Steven M. Bauer, Partner, Proskauer Rose LLP
2:15 pm
Patent Trolls: Identifying Them & Mitigating Their Damage
Why trolls are
becoming more prevalent
Distinguishing between patent trolls and legitimate
asserters
Ways unfair assertion impacts innovation and ROI
How trolls contribute to uncertainty and cost
Troll defenses
Moderator: Bruce Berman, President, Brody Berman Associates, Inc.
Panelists:
Irv Rappaport, Co-Founder, IP Checkups
Joe
Beyers, VP - Intellectual Property Licensing,
Hewlett-Packard
Terry Ludlow, Founder and CEO, Chipworks
Peter N. Detkin, Managing Director, Intellectual Ventures
Alan Grimaldi, Co-Chair, Intellectual Property Practice, Howrey LLP
3:30 pm
Coffee Break & Networking
3:45 pm
Using Intellectual Property to Make Investment and Merger & Acquisition Decisions
Investment
Considerations
Escrowing for contingencies
IP Assets: With or without a royalty stream
Return on R&D
Cost per patent
The inherent weaknesses of "goodwill"
GAAP Accounting
Determining the role of IP assets in driving corporate performance
M&A Considerations
Trademark searches
Representations and warranties
Evaluating value of IP
Licensing programs
Redundant IP
Encircled IP
Securing trade secrets
Moderator: Ron Laurie, Managing Director, Inflexion Point Strategy
Panelists: Tim Croll, Senior Corporate Counsel - IP & Asst. Corporate Secretary,
LSI Logic Corporation
David Frankel, Managing Director, Blueprint Ventures
Mark Menna, CEO, NanoVentures LLC
Mark Ick, Director of Business Development and Licensing,
Motorola, Inc.
4:30 pm
Due Diligence for Executing Your Licensing Strategy
Addressing the future - best practices to deal with difficult assessments
The effective due diligence report
Structuring the diligence - the right assessment for the right deal
Due diligence as assessment tool
Disclosure schedules consistent with findings
Protection mechanisms
Speaker: Ira J. Levy, Partner, Goodwin Procter LLP
5:00 pm
Adjournment & Cocktail Reception
Sponsored by
Chipworks
*agenda subject to change
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