The Top Ten Things a Startup Needs to Know
When: January 25, 2012
11:30 AM - 2:00 PM
Where: Perkins Coie, 3150 Porter Drive, Palo Alto, CA 94304
Sponsored and hosted by: Perkins Coie
Moderated by Daphne Higgs, a senior licensing and technology attorney, the panel will address a number of important issues relation to start-up companies at various stages of development. Specific discussion topics will include general information related to startups, best pitch practices, how to develop and follow a business plan and other important legal considerations.
2011 IP Cases Overview
When: December 14, 2011
11:30 AM - 2:00 PM
Where: Sullivan Cromwell
Sponsored and hosted by: Sullivan Cromwell
Using Patent Litigation Data for Licensing and Valuation
When: November 16, 2011
11:30 AM - 2:00 PM
Where: DLA Piper, 2000 University Avenue, East Palo Alto 94303
Sponsored and hosted by: DLA Piper
Access to powerful patent litigation data can transform licensing and valuation decision-making. Josh Walker and Owen Byrd from Lex Machina will provide a demonstration of their online patent litigation database with a specific focus on using it for licensing and valuation. One of the serious faults with current valuation methods is that they rely on questionable methodologies. For example, traditional measures of patent value like forward patent citations and assertion in litigation have been found to predict lower value and/or invalidity in certain case types.* By pioneering the use of empirical litigation data in patent valuation, quality and technology field analysis, Lex Machina has empowered CFOs and licensing professionals, risk managers and financial markets to use more objective benchmarks. For example, in the Kodak case, the market will more than likely under- or over-value the company by misreading highly complex litigation benchmarks, through failed outcomes analysis, and by failing to account for the fact that Kodak bankruptcy chatter may give litigation opponents in Federal Court and the ITC a new bargaining edge. Larger companies routinely fail to systematically and empirically value patent portfolios by failing to diligence the litigation graph. What is different today -- thanks to Lex Machina -- is that independent data points for valuation are available, and "Moneyball" for IP is now possible.
Pitfalls in Monitoring and Enforcing Licensing Agreements
When: October 26, 2011
11:30 AM - 2:00 PM
Where: The Sheraton Palo Alto Hotel, 625 El Camino Real, Palo Alto, CA 94301
Sponsored and hosted by: Moss Adams
Participants in this panel include specialists in negotiating and writing technology licenses, royalty accounting, auditing and monitoring royalty income, IP transactions, patent enforcement and licensing management. Specific discussion will include proper management of an IP license portfolio, defining license royalty reporting requirements, setting performance expectations, negotiating license terms and implementing a systematic license-monitoring and compliance program.
Technology Escrow: Everything You Should Think About Before You Enter One
When: September 21, 2011
11:30 AM - 2:00 PM
Where: The Computer History Museum, 1401 N. Shoreline, Mountain View, CA 94043
Sponsored and hosted by: US Bank
Parties to technology deals often want to insure the continuity of a technology arrangement, even if the parties themselves either cease to exist or cease to perform their obligations. To do so, one party frequently requests a technology escrow, where source code and other documented technical know-how are deposited with a third-party provider, to be released upon certain conditions of a vendor or licensor's insolvency or non-performance. The fundamental issues with such escrows include: (1) making sure sufficient materials are deposited in the escrow account, as well as regularly updated and tested, (2) agreeing upon what conditions should lead to the release of the materials, (3) the procedures involved in triggering the release, including dispute resolution and cure periods, and (4) the terms and conditions under which the materials are used once they are released. This panel will discuss the procedures by which parties set up such technology escrows as well as the legal and practical issues involved.
Launch Party and Networking Mixer, Leading Women in Technology
When: July 29, 2011
5:30 PM - 7:30 PM
Where: The Four Seasons Hotel, 2050 University Avenye, East Palo Alto, CA
Sponsored and hosted by: Leading Womein in Technology Cost is free; to register for event send an email to LWTprograms@gmail.com
Come and join leading professional sin the local technology industry at this celebration launch of Leading Women in Tecnology, a non-profit Bay Area organization dedicated to unleasing the potential of professionals who advise technology businesses and executives. Adriane Brown is President and COO of Intellectual Ventures. With nearly 30 years of management experience from the factory floor to the boardroom, Ms. Brown has learned firsthand that a company’s success begins with its people. Her leadership expertise and business acumen serve as the cornerstone for building strong, global performance at Intellectual Ventures. In 2009, Ms. Brown was named one of Black Enterprise Magazine’s 100 Most Powerful Executives in Corporate America. In 2006, she was named one of Fortune Magazine’s Women to Watch and in 2005, Automotive News featured her in its list of the 100 leading women in the North American automotive industry. Ms. Brown is a respected public speaker, is recognized for mentoring women and girls from all walks of life, and for developing leaders and emerging talent.
Strategic Considerations in the Interplay Between Licensing, Litigation and Reexamination
When: July 27, 2011
11:30 AM - 2:00 PM
Where: Arnold & Porter, LLP 1801 Page Mill Road, Palo Alto, CA 94304-1216
Sponsored and hosted by: Arnold & Porter and STLGip
Patents are routinely licensed and litigated. Patent reexaminations are often used either to strengthen patent claims by the patentee or to weaken patent claims by third parties. Patent reexaminations can also be a useful strategy in licensing and litigation where they may be used to delay or otherwise alter the speed of litigation or value of a patent in settlement and/or licensing negotiations. The expert panelists will discuss the principles behind patent re-examination and how they may affect licensing and litigation strategies using real case examples from technology and life science industries. Topics covered will also include: ex parte and inter partes patent reexamination as distinguished from patent reissue; strategies, advantages, and cautionary considerations regarding reexaminations, how patent reexamination affects licensing and how to use patent reexamination as an advantage in licensing negotiations; how patent reexamination affects litigation, and how it can be used as a tool during litigation and settlement discussions.
Video Games: Meeting the IP and Competitive Challenges
When: June 15, 2011
08:00 AM - 1:30 PM
Where: The Sheraton, 625 El Camino Real, Palo Alto, CA 94301
Sponsored and hosted by: Ropes & Gray
Come hear the biggest names in video gaming: Zynga, EA, Microsoft, Sony, Activision Blizzard and Leapfrog address the big issues: Liability for humans imitating games, effects of patents on game innovation, any patent trolls knocking on publishers' doors, models of startups, how to assure ownership of content, how to protect trademarks in a purely virtual world. Speakers include Reggie Davis, General Counsel, Zynga Ada Duan, VP Licensing Leapfrog Terri Durham, Senior Vice President, Activision Blizzard Natalie Fay, CEO Wedding Street David Figatner, Senior Attorney, Microsoft Game Studios Dan Figueroa, Director Legal and Business Affairs, Sony Computer Entertainment America Mark Holmes, CEO RavenWhite Security, Inc. Carol Sands, Manaing Member, The Angel's Forum Ian Sobieski, Managing Director, Bank of Angels Sharon Zezima, Vice President Legal Affairs, Electronic Arts Luncheon Panel speakers from Ropes & Gray include Steven Baughman, Partner, Jim Batchelder, Partner Thad David, Partner Agenda: 8:00 - 9:00 Registration and Continental Breakfast 9:00 - 9:15 Welcome remarks 9:15 - 10:00 Panel: "Games Startups and Investors: what a startup wants, what investors need" panelists: Natalie Fay, Carol Sands, Ian Sobieksi 10:00 - 10:30 Break and networking 10:30 - 12:00 Morning panel: "The Big Issues in Video Gaming" Moderator: Mark Holmes Panelists: Reggie David, Ada Duan, Terri Durham, David Figatner, Dan Figueroa, Sharon Zezima 12:00-1:15: Presentation by Ropes & Gray LLP: "IP Implications in the Gaming World" speakers: Jim Batchelder, Steve Baughman, Thad David 1:15 - 1:30 Concluding remarks To register go to www.lesusacanada.org/svc
Uniloc v. Microsoft: The 25% Rule
When: May 25, 2011
11:30 AM - 2:00 PM
Where: Fenwick West; 801 California Street Mountain View, California 94041
Sponsored and hosted by: Fenwick West
Legal Frontiers in Digital Media Conference
When: May 19, 2011
08:00 AM - 5:00 PM
Where: Stanford University
This intensive event is designed for lawyers and Web publishing professionals responsible for sorting out the emerging legal issues surrounding the distribution of content on digital platforms. Among the issues on the agenda for this conference are presentations and discussion on the wireless ecosystem, search and the privacy, copyright and other key issues it creates, apps development and distribution, content regulation, the world post-Wikileaks, the digital future and venture capital concerns. This is a great opportunity to meet and learn from a diverse group of talented individuals who focus on the legal, technological and business concerns of the digital content environments. For registration information and more: http://mlrc-digitallaw.stanford.edu/
LES Silicon Valley Chapter 11th Anniversary Conference: The Tranformation of American Creativity -- Licensing's Role in the Growth of New Enterprise
When: April 27, 2011
08:00 AM - 04:15 AM
Where: Hewlett Packard Company, Palo Alto
Sponsored and hosted by: Cooley LLP Innography Hewlett Packard Royse Law Firm Unycom To register go to www.lesusacanada.org/svc/april for questions regarding online registration contact chapters@les.org or 703-836-3107
Enjoy a day of meeting people you know and shaking hands with new contacts. LES-SVC is providing you a unique experience to hear and meet some of the major innovators of Silicon Valley and Northern California. Successful entrepreneurs and business leaders, both private and venture capital investors, academics from Stanford and UC, plus resource and service providers in all areas of creating new ventures to manufacturing and marketing new products. Meeting Format: 8:00 – 9:00 Registration and Continental Breakfast 9:00 – 9:15 Welcome Presentation by Charlie Chapman, Vice President, IP Licensing at Hewlett Packard 9:15 – 10:00 Keynote: “Made in America” Keynote Speaker: Curtis L. Landi, President and CEO of Supracor Inc. 10:00 – 10:30 Break and Networking 10:30 – 12:00 Morning Panel: “Building a New America” Moderator: Damon Matteo, VP & Chief IP Officer, PARC Panelists: Charles Comey, Principal at Morrison & Foerster LLP Kamran Elahian, Chairman of Global Catalyst Partners Nader Mousavi, Partner at Sullivan & Cromwell LLP Paul Rhodes, CEO of Evolved Machines Michael Waltrip, Technology Commercialization Manager PARC 12:00 – 1:00 Buffet Lunch and Networking 1:00 – 2:00 Keynote: “12 Innovations To Future Proof Your Company and Career” Keynote Speaker: Rich Karlgaard, Publisher of Forbes Magazine 2:00 – 2:30 Break and Networking 2:30 – 4:00 Afternoon Panel: “Investing in the Future” Moderator: Bill Reichert, Managing Director of Garage Technologies Panelists: Annie Hazlehurst, Partner at Draper, Fisher, Jurvetson Steve Krausz, General Partner of U. S. Venture Partners Nola Masterson, Managing Director of Science Futures Inc. Steve Millard, Co-Founder of five NASDAQ companies Norman Smith, Managing Director of C4Cube 4:00 – 4:15 Closing
Cruise Ship Versus Speed Boat: Which IP Strategy is Right for You?
When: April 5, 2011
11:00 AM - 12:00 AM
Where: A Webinar with Innography and LES SVC Advisory Board Member Joe Beyers, CEO, Ambature
Sponsored and hosted by: Innography -- LES Silicon Valley Chapter Sponsor, To register go to www.innography.com/405
As an intellectual property expert and 34 year HP veteran, Joe knows what it takes to drive the IP licensing strategy of a big corporation. Now as Chairman and CEO of Ambature, his position at the helm of this energy start up provides many new insights on how to successfully launch emerging technologies. Sponsored by Innography, you are invited to join Joe on April 5th for a live 60-minute video webinar where he will share his perspectives and strategies on navigating the diverse waters of large vs. small IP environments. Through this presentation with moderated chat, you will learn about different models for leveraging, managing and measuring your IP investments, and have the opportunity to ask Joe questions for discerning useful best practices in your organization.
“People Driving Cleantech: IP Trends in the Renewable Energy Generation, Storage, Efficiency, Transportation,and Recycling Markets”
When: March 23, 2011
11:30 AM - 02:00 AM
Where: Santa Clara University, High Tech Law Institute
Sponsored and hosted by: Foresight Valuation Pat Reilly - IP Society
Increased environmental awareness is driving consumers and businesses to reduce their carbon footprint. Energy Generation, Storage and Efficiency as well as Transportation and Recycling are some of the key areas where IP and innovation play a critical role in technological development and commercialization. Converging factors in residential and commercial energy usage and alternatives to carbon based technology solutions are at the forefront of the Cleantech revolution, including: increased consumer awareness, national and international government participation, Venture Capital and Private Equity funding, large corporate and utility initiatives, and new innovations being developed at Universities, Research Labs and Startups. The program features a multi-disciplinary panel of experts, covering the business, legal, technical, and financial considerations driving the creation and management of IP in these sectors. The panel will be moderated by Eric Wesoff, a Senior Analyst at Greentech Media.
"The New Anatomy of an Outsourcing Deal"
When: February 23, 2011
11:30 AM - 2:00 PM
Where: Cooley LLP
Sponsored and hosted by: Cooley LLP
The new economy has changed the way outsourcing transactions are structured and negotiated. Today's market is focused on increased process efficiency and compressed timeframes to get deals done. Outsourcing specialists will share their views on the new outsourcing transaction paradigm and how to efficiently and effectively structure and negotiate outsourcing transactions in today's market. The panel will address the role of consultants and counsel in various types of international and domestic outsourcing transactions while discussing many of the friction points that often arise during negotiations.
The 2011 LES Winter Meeting- February 10 - 11
When: February 10, 2011
09:00 AM - 05:00 AM
Where: San Jose Marriott
The 2011 LES Winter Meeting will focus on challenges and opportunities facing IP, licensing and business professionals in the High-Tech Industry. Featured speakers include Damon Matteo, VP of Intellectual Capital Management & Commercialization from PARC, formerly Xerox PARC; Nola Masterson, Founder & Managing Director of Science Futures, Inc.; and the Honorable Bruce Lehman, Chairman and President of the International IP Institute & former Under Secretary of Commerce for IP and Commissioner of the USPTO. Access the top IP minds in Silicon Valley and beyond, including executives from Nokia, Cisco, Salesforce.com, Rockwell Collins, Microsoft, ARM, Visa, Intel, Garmin, and HP Labs, and engage in panel conversations on today's hot topics - Cloud Computing, Content Online, Mobile Computing, Nanotechnology, Semiconductors and High-Tech Companies in China. Register by 12/23 and save! For more info and to register, go to www.lesusacanada.org/WN11.
"The Economy in 2011: The Critical Role of Innovation"
When: January 26, 2011
11:30 AM - 2:00 PM
Where: Offices of Wilmer Hale, 950 Page Mill Road
Sponsored and hosted by: WilmerHale
Brief Description: Join us for this lively discussion: How will the shift in the economic and political landscape affect investments in innovation in 2011? • Corporations have amassed huge cash reserves ready for possible deployment. • The government is moving forward with a focus on internet privacy • Cloud panic is producing new strategies by legacy technology companies • Will corporate, venture and private equity players change their interest level for IP assets? Featured Speakers are Adit Khorana and Jim Anderson. Adit Khorana is a partner in WilmerHale’s Corporate and Transactional Department, and a member of the Technology Transactions and Licensing Practice Group. Jim Anderson joined Silicon Valley Bank’s Corporate Finance Division in February where he heads up the software, internet and eCommerce practice. To register go to www.lesusacanada.org/svc or call Franca Gargiulo at 415-564-2600, franca.gargiulo@att.net
"Can Offering a Patent for Sale Get you DJ'ed?"
When: December 9, 2010
11:30 AM - 2:00 PM
Where: Wilmer Hale, 950 Page Mill Road, Palo Alto, CA
Sponsored and hosted by: Inflexion Point
After the Supreme Court’s decision in Medimmune, declaratory judgment actions have become an attractive option for patent licensees since now they may challenge validity and/or infringement of the licensed patents without breaching or having to terminate the license agreement. In the situation where there is an offer of a license, a series of Federal Circuit and district court cases following Medimmune have focused on the communications between the parties in order to determine whether an “actual controversy” existed sufficient to create declaratory judgment jurisdiction. The panel will explore the implications of the recent offer to license case law on patent sale activities and will discuss whether and how offering a patent for sale may create an actual controversy in light of the newly adopted “all circumstances” test.
Licensing Agreements and Royalty Payments: What Could Go Wrong?
When: November 18, 2010
11:39 AM - 2:00 PM
Where: Wilmer Hale, 950 Page Mill Road, Palo Alto, CA
Sponsored and hosted by: Sponsored by WilmerHale and Licensing Executives Society, Silicon Valley Chapter
Designed for licensing professionals and attorneys who want to develop and/or improve their understanding of the accounting and financial aspects of licensing agreements, royalty payments and royalty audits. Learn: - Licensing agreements- What makes them so complex? - Royalty calculations and payments- Reasons why they may not be accurate o Royalty statements and other “documentation” - Royalty investigations (audits)- To audit or not to audit? o Locks keep honest people honest - Avoiding problems with agreements and audits- Is there a better way? Featured Speakers: Jeff Redman, Founder of Redman Disputes & Investigations Group. Jeff has over twenty five years of experience in forensic accounting, royalty compliance auditing and calculating damages in commercial litigation. Jeff has provided consulting and expert witness services in many types of projects, including royalty compliance audits, product liability, breach of contract, intellectual property infringement, business interruption, business failure analysis, antitrust (including below-cost pricing - California BPC Section 17043), internal investigations, and fraud investigations. Jeff has been involved with LES for about 5 years and is serving as the Treasurer for the Advisory Board of our Silicon Valley Chapter. Eric Sinrod, Partner in the San Francisco office of Duane Morris LLP. Eric’s trial, appellate, and overall litigation practice, which includes significant jury and court trial experience and advocacy before the United States Supreme Court, has covered a number of important Internet, software, software defect, technology, intellectual property (trademark, copyright, patent, trade secrets), information, communications, commercial, antitrust, eDiscovery, environmental, and insurance coverage issues. He has represented domestic and international clients in major class actions where hundreds of millions of dollars have been at stake. He also has handled numerous matters for smaller companies and individuals. Eric has been highlighted by an outside publication as "the leading IP attorney in the land," and he has been selected by his peers as one of the "Best Lawyers in America" in the area of Cyber Law and annually as a "Super Lawyer" for Business Litigation. To register online go to www.lesusacanada.org/svc
Patent Reform by Fiat: The Federal Circuit Takes Charge
When: October 28, 2010
11:30 AM - 2:00 PM
Where: Howrey LLP (sponsor) at The Sheraton Palo Alto
Sponsored and hosted by: Howrey LLP
The last two years have seen an increasingly aggressive Federal Circuit move to address a number of issues, especially those that have been driving the patent reform debate. By repeatedly taking matters en banc, issuing writs of mandamus, and even sitting by designation, the Federal Circuit has moved to take center stage. This program will review the recent activity by the Federal Circuit covering the issues of inequitable conduct, venue, and damages.
Licensing and Litigating Reasonable Royalties for the Patents in Technical Standards
When: September 22, 2010
11:30 AM - 2:00 PM
Where: Weil Gotshal & Manges, LLP
Sponsored and hosted by: Weil, Gotshal & Manges LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 and NERA Economic Consulting
Technical standards are an important component of the process of turning intellectual property into marketable products. Usually participants in a standard-setting organization are required to agree to license any of their intellectual property that is incorporated into a standard on Fair, Reasonable and Non-Discriminatory (FRAND) terms. Licenses with specific royalty rates are generally negotiated after the standard has been established. A frequent difficulty in the process of negotiating these licenses is defining a FRAND royalty, an issue that often results in litigation. This program will discuss the meaning of FRAND in the context of licensing a patents in a standard, and how FRAND would compare to reasonable royalties under Georgia-Pacific, a case that describes the factors that courts should consider in determining a reasonable royalty on a patent. Panelists from NERA Economic Consulting and from Weil, Gotshal & Manges will discuss 1) the economics of standards and FRAND, 2) what happens when these issues get taken up in the courts and 3) the impact of these considerations on the bylaws, rules and operations of standard-setting organizations







