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2015 Mid-Winter Institute Session Materials

Welcome to the 2015 AIPLA Mid-Winter Institute session materials page. Papers are available to all registered attendees. If a speaker has submitted material, there will be a link(s) to their bio, paper, and slides next to their name.

A DVD with all the submitted session materials will be sent to all registrants about 6 weeks after the conference.

To access the session handouts, please Sign-In by clicking "Sign In" in the upper right corner of this web page. If you are having any trouble accessing the session handouts, please send us an email or call 703.415.0780.


Download all Session Materials (24 MB - last updated 01/28/2015 at around 2:15 PM EST)


Wednesday Session Materials, January 28, 2015

 2:00 – 4:00 pm  Opening Plenary Session

Establishing Licensing in an IP Program and Partnering to Obtain or Procure IP

There are many aspects to developing and monetizing IP. This is particularly true in today’s environment of shifting legal standards and international marketplaces. A panel of in-house and outside counsel will address topics including developing and monetizing an IP portfolio in today’s changing times, the impact of corporate governance in licensing shared IP assets, alternative ways of transferring IP including mergers, acquisitions and joint ventures, and the role that governments can play in promoting international R&D.

The Essential Total Global IP Strategy

Moderator: Chris Lewis, Shareholder, Ratner Prestia, Berwyn, PA (Bio, Paper)

Successfully Developing and Monetizing an IP Portfolio in Challenging Times

  • John C. Paul, Finnegan Henderson Farabow Garrett & Dunner, LLP, Washington, DC (Bio, Paper, Slides)

The “In Crowd”: In-Licensing Through Crowdsourcing

Crowdsourcing—seeking solutions from a group or crowd of
knowledgeable problem solvers—is way to quickly bring fresh perspectives to problem solving and to obtain ownership of or licenses to innovative solutions. From carefully controlled private crowds to unrestricted public crowds, acquiring IP
rights through crowdsourcing presents a wide array of legal challenges. And although securing legal rights to IP is critical, practitioners and companies must be aware of the many perils that can arise with crowdsourcing, such as compliance export and other trade controls, defense against malicious attacks, click-wrap agreements, and even compliance with gaming regulations.

  • John J. Cheek, Senior Corporate Counsel, Intellectual Property Law and Public Policy, Legal Services Division,
    Caterpillar Inc., Peoria, IL (Paper, Slides)

Alternative Pathways for Transferring IP

In addition to “traditional” methods of IP transfer (e.g., licensing), alternative methods exist and can be used such as mergers, acquisitions, joint ventures, alliances, spinouts, licensing pools and associated due diligence, negotiations, and adding or holding back certain IP assets and rights thereto.

  • Bernie Plantz, Chief IP Counsel, Johnson & Johnson, New Brunswick, NJ (Bio, Slides)

International R&D Projects and the Role of Governments in Promoting Them

Joint R&D ventures across international lines and what role governments can and do take in promoting them. Joint government and private sector innovation. The Israel experience will be used as a specific example of government encouraged R&D.

  • Shlomo Cohen, Dr. Shlomo Cohen & Co., Bnei Brak, Israel (Bio, Paper, Slides)


4:00 – 5:30 pm Wednesday Concurrent Track 1

Licensing Refresher

Moderator: Raj S. Davé, Partner, Pillsbury Winthrop Shaw Pittman, LLP, McLean, VA

An overview of licensing basics to bring people new to licensing and those with “rusty” experience a chance to refresh their recollection. In particular: licensing fundamentals and license termination, including provisions in a license when negotiated; liquidated damages; executing a termination clause; and terminating without a pre-negotiated clause.


  • Michele Herman, Intellectual Ventures, Bellevue, WA (Bio, Paper)
  • Daniel Gaudet, Senior Director, Philips Intellectual Property & Standards, Burlington, MA (Bio)


4:00 - 5:30 pm Wednesday Concurrent Track 2 

The IP Marketplace

Moderator: Stephen A. Holzen, Director, Stout Risius Ross, Inc., Washington, DC

A discussion of markets related to licensing and sale of IP, with a focus on patents, and examine issues regarding fluidity in the market, patents available on the market and how patents are offered for licensing and sale.

Licensing Markets from a University Perspective: Opportunities and Challenges

  • Kathryn A. Donohue, Director, Legal Affairs, Penn Center for Innovation, University of Pennsylvania, Philadelphia, PA (Bio, Slides)

Recent Trends in the Patent Monetization Marketplace

  • Chad Hilyard, Rockstar Consortium, Plano, TX (Paper, Slides)

Licensing Markets: Gateway to Open Innovation

  • Matt Anderson, Associate General Counsel, Intellectual Property, Covidien, Boulder, CO (Bio, Paper, Slides)




9:00 am – 12:00 pm Plenary Session

IP Licensing: Royalties; Bankruptcy; Licensee Litigation; FRAND vs. Compulsory Licensing; and Survey Results

Moderator: Michael Drapkin, Holland & Hart LLP, Boulder, CO

Royalties in the Absence of a Valid Patent Claim: Know-How and Post-Expiration Royalties in the US and Europe

Whether, how much, and for how long royalties may be collected in the absence of a valid patent claim has been a problem plaguing licensors and licensees for decades. The session will address when such royalties are proper under current law and the potential for change in light of the pending petition for cert in Kimble v. Marvel. The paper will also look at how Europeans deal with the same issues under the EU Technology Transfer Bloc Exemption Regulations.

  • Colin Sandercock, Perkins Coie, Washington, DC (Bio, Paper)

Is it Safe? IP Licenses and Bankruptcy

Is your client’s vital patent, copyright, trade secret, or trademark license safe from being rejected, revoked, or terminated by a bankrupt licensor? How safe is your client’s license when the licensor resides and files for insolvency outside the US? How safe is your joint IP ownership interest when your co-owner files for bankruptcy? Can a bankrupt licensee transfer its license rights, under your clients IP, to a third party? How safe are your client’s patent licenses and patents after the Qimonda case?

  • Marc Sandy Block, Counsel, IBM Corporation, Armonk, NY (Bio, Paper)

Licensing Provisions Discouraging Licensee Litigation and Validity Challenges: Are They Ever Enforceable? Recent cases hold that patent licensors are limited in their ability to place disincentives on licensees and prevent patent
challenges. It is well established that no contest clauses are unenforceable, and more recently established that patent
licensees in good standing may challenge the validity of their licensed patents. The Supreme Court recently held that a
licensor maintains the burden of proof in a licensee’s declaratory judgment action for non-infringement. What are the limits on a licensor’s ability to restrict or discourage licensee challenges?

  • Richard S. Vermut, Rogers Towers, PA, Jacksonville FL (Bio, Paper)


Networking Break: 10:15 – 10:45 am


Comparing the Similarities of FRAND with Compulsory Licenses

We’ll compare two specific forms of licenses, being FRAND, used extensively to license in the software and smart phone industry, with compulsory licenses, a relatively unpopular form of license, to determine whether the similarities between these two forms can be useful to address trade issues that detrimentally affect access to medication.

  • Srividhya Ragavan, Professor of Law, University of Oklahoma College of Law, Norman, OK (Bio, Paper)

Important Considerations for Drafting High-Tech Versus Life Science Licenses

The session presents survey results on what factors IP licensing attorneys consider as being important for drafting high-tech and life science licenses.

  • Ami Patel Shah, Managing Director, Intellectual Property Finance Group, Fortress Investment Group, LLC, New York, NY


12:30 - 2:00 pm Luncheon

  • Ron Diftler  (Bio)
    NASA/Johnson Space Center



2:00 – 3:30 pm Concurrent Tracks, Session I

Track 1, Session I

Engineering Technology-Specific Licensing Issues (Open Source, FRAND, and 3D Printing)

Moderator: Monica Barone, Qualcomm, Inc., San Diego, CA

A panel of experts will explore three emerging environments—Open Source, FRAND and 3D Printing—by diving into the intricate licensing issues that each of these environments presents. Be part of the discussion and come to your own conclusions as to how each of these environments could affect the value of IP that you are trying to protect and enforce for your company or your clients. Our panelists will provide practical advice about what you should watch out for and what you can do to help your company or your clients effectively deal with these emerging environments by exploring how to repurpose strategies you may already be familiar with and how to develop new strategies that will have you thinking outside the box.

The Effects of the Licensing of Open Source Components in Proprietary Products

  • Cliff Allen, Senior Attorney, Microsoft Corporation, Redmond, WA (Bio, Paper, Slides)

The Latest Thinking on FRAND Licensing Assessments and Models

  • Anne Layne-Farrar, Vice-President, Charles River Associates, Chicago, IL (Bio, Paper, Slides)

The Intersection—and Some Would Say the Head-on Collision—Between 3D Printing and Intellectual Property

  • John F. Hornick, Partner, Finnegan Henderson Farabow Garrett & Dunner, LLP, Washington, DC (Bio, Paper)


Track 2, Session I

Where is My Crystal Ball When I Need it? Good Deals Gone Bad: A Case Study in Structuring License Agreements to Survive the Convulsions of Commerce

Moderator: Ada Nielsen, Chief Executive Officer, Foodexus, LLC, River Hills, WI (Bio, Paper (joint))

This will be a coordinated, round-robin session on a variety of issues illustrated by a case study. Audience participation is encouraged. The case study is loosely based upon an actual licensing deal that came out of a university, into a start-up, which was then acquired…. In short, it was riddled with complications due to corporate failures, M&A activity, and unforeseen events in general. Names have been changed to protect the innocent.


  • Pamela L. Cox, Partner, Chair IP Transactions, Marshall Gerstein & Borun, LLP, Chicago, IL (Bio, Paper (joint))
  • Matthew C. McNeill, Chief Innovation Officer, Rite-Hite Holding Corporation, Milwaukee, WI (Bio, Paper (joint))
  • Joseph T. Miotke, DeWitt Ross & Stevens SC, Brookfield, WI (Bio, Paper (joint))

3:30 – 4:00 pm Networking Break


4:00 – 5:30 pm Concurrent Tracks, Session II

Track 1, Session II - The New Life in Licensing Biotechnology Innovation

Moderator: Ed R. Ergenzinger, Life Sciences Patent Attorney, Raleigh, NC

This session will run the gamut of life in licensing, from technology transfer to commercialization to valuation for biotechnology innovations. Join us to learn of the tale of licensing a developmental Ebola vaccine from our neighbors to the north, the perspective of a small Florida biotechnology company in the new §101 world, and how changes to patent-eligibility have impacted on valuation.

Technology Transfer Perspectives on Partnering and Licensing, From Ebola Vaccines to the Next Big Thing

  • Darren Fast, Ph.D., Director of Technology Transfer, University of Manitoba, Winnipeg, Canada (Bio, Paper, Slides)

Licensing in the New 101 World: The Impact of Myriad and Prometheus on Small to Mid-Size Biotech from an In-House Perspective

  • Maxwell L. Minch, Banyan Biomarkers, Alachua, FL (Bio, Paper)

Advising Clients: Valuation Post-Myriad

  • Judy Roesler, Senior Intellectual Property Counsel, POET, Sioux Falls, SD (Bio, Paper)


Track 2, Session II - Licensing in an Uncertain World: Dealing with the Ever-Changing Landscape of Subject-Matter Eligibility and Trade Secrets in Licensing

Moderator: Dan Brownstone, Fenwick & West, LLP, San Francisco, CA (Bio)

A number of practical considerations will be discussed for drafting and resolving issues with license agreements in light of the changing criteria for determining patent eligible subject matter and the risk of patent invalidity. This includes a discussion of possible license provisions and contingency plans, alternative dispute resolution considerations, and the role of trade secrets in a license agreement.

Mayo, meet Alice: Abstract Idea or Inventive Concept

  • Warren Woessner, Schwegman, Lundberg & Woessner, PA, Minneapolis, MN (Bio, Paper, Slides)

Biotech Licensing with a Section 101 Contingency Plan

  • Robert S. MacWright, Director, Commercial Ventures & Intellectual Property, University of Massachusetts, Amherst, MA (Paper, Slides)

Licensing Pseudo-Proprietary Source Code as a Trade Secret


 FRIDAY, January 30, 2015

9:00 - 12:00 Noon - Plenary Session

A Web of Infringement: An Interactive Panel Exploring the Enforcement and Protection of Trademarks and Copyrights Online

This interactive panel will explore, from diverse perspectives, the protection and enforcement challenges associated with IP infringement in various online platforms. Panelists will tackle such issues as domain name violations, infringing apps, copycat websites, problematic user agreements, and overseas offenders. The advantages and shortcomings of existing enforcement tools and remedies will be addressed in a range of contexts, including those related to social media, search engines, and online retailers. The panel promises to be highly interactive among and between panelists and the audience.

Moderator: Elizabeth A. Rowe, Director, Program in Intellectual Property Law, Levin College of Law, University of Florida, Gainesville, FL

Current Trends in Domain Name, AdWord, and Online Copyrights Disputes

  • Matthew S. Nelles, Partner, Broad and Cassel, Fort Lauderdale, FL (Paper)

Networking Break: 10:15 – 10:45 am

Combating Trademark and Copyright Infringement in Social Media and Mobile Apps

  • John C. Wilson, Vice President and Chief Counsel, Intellectual Property, Caesars Entertainment Corporation, Las Vegas, NV  (Bio, Paper)

How Google Fights Piracy

  • Caleb Donaldson, Copyright Counsel, Google Inc., Mountain View, CA (Bio, Paper)

Stayin’ Alive: Enforcing Trademark Rights in the New World of Unlimited Top Level Domains

  • Anne E. Aikman-Scalese, Of-Counsel, Lewis Roca Roth Gerber, LLP, Tucson, AZ (Bio, Paper)


12:30 – 2:00 pm Luncheon—Licensing in the Fast Lane: Brand Protection & Expansion at NASCAR

  • Karen Leetzow (Bio)
    Deputy General Counsel-Vice President
    NASCAR, Inc.
    Daytona Beach, FL

 Friday, January 30 Afternoon Sessions

 2:00 – 3:30 pm Concurrent Tracks, Session I

Track 1, Session I:  Navigating the Compulsory Licensing World: A Guide for Patent Owners

Moderator: DeAnn F. Smith, Foley Hoag LLP, Boston, MA

The Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement includes several provisions concerning the right of its members to provide for compulsory licensing within their territories. Although the Agreement does not limit the grounds for granting or justifying a compulsory license, only grounds set by national legislations are allowed. Recent use of compulsory licenses in countries like India, particularly in the context of the pharmaceutical patents, are attracting attention around the world, prompting the question of what the proper role for compulsory licensing in today’s world is and to what extent the national governments should be allowed to encroach on patent owners’ rights. The panel will take a look at recent trends in compulsory licensing around the globe, with special emphasis on the developments in Brazil and India.

Walking the Tight Rope of Preventing the Abuse and Protecting the Rights of the Patent Owner:

  • Tomoko Miyamoto, Head, Patent Law Section, Patent Law Division, WIPO, Geneva, Switzerland (Bio, Paper, Slides)

Negotiating the Compulsory License Impediment in India

  • Hari Subramaniam, Subramaniam & Associates, Bara Hindu Rao, Delhi, India (Bio, Paper, Slides)

Why is the Brazilian Government Always Threatening to “Break” Your Patent?

  • Rodolfo H. Martinez y Pell Jr., Martinez & Associados, Sao Paulo, Brazil (Bio, Paper, Slides)


Track 2, Session I: License Negotiations with Foreign and Multinational Entities—Eliminating Bias for a Successful Outcome

(Session Qualifies for Elimination of Bias or Ethics CLE Credit) ETHICS CLE

Moderator: Ury Fischer, Lott & Fischer, PL, Coral Gables, FL

Strategies for eliminating obstacles due to multinational and multicultural origins of parties during licensing negotiations.

The program will provide insights concerning the point of view of foreign entities on the matter and will offer various strategies to overcome them as well as suggestions on how to better navigate issues due to differences in cultural and legal systems avoiding stereotypes and working instead for a successful outcome of licensing negotiations for all the parties involved.

Know the Prejudices of Continental Europeans and Make Licensing Negotiations Faster and Cheaper (and the Results, Perhaps, Even Better)

  • Dr. Ulrich Blumenröder, Rechtsanwalt, Grünecker Kinkeldey Stockmair & Schwanhäusser, Munich, Germany (Bio, Paper)

Know How to License in Brazil: A Pragmatic Approach to Cultural and Legal Differences Affecting Know-How Licensing Agreements

  • Elisabeth Kasznar Fekete (AIPPI Brazil President), Senior Partner, Kasznar Leonardos Intellectual Property, Brazil (Bio, Paper)

Know How to License and Negotiate in China

  • Hao Zhang, Partner, Patent Attorney, Unitalen Attorneys at Law, Beijing, P.R. China (Bio, Paper, Slides)


3:30 – 4:00 pm Networking Break

4:00 – 5:30 pm Friday Concurrent Tracks, Session II

Track 1, Session II: Strategies for Trademark Licensing

Moderator: Ava K. Doppelt, Allen, Dyer, Doppelt, Milbrath & Gilchrist, PA, Orlando, FL

The program will include tips from in-house counsel on getting your portfolio in shape for licensing and using licensing to support foreign registrations; quality control and other key issues in intercompany and service mark licenses; and advanced issues in brand licensing.

Leveraging High-Profile Brands: International Licensing and Registration Issues for Popular Brands

  • Laurie Dillon, Vice-President–Intellectual Property, Viacom Media Networks, New York, NY (Bio, Paper, Slides)

Dealing with “Control Issues.” Navigating Inter-Company and Service Mark Licenses

  • Dorothy von Hollen, Vice President, Prudential Insurance Company of America, Newark, NJ (Bio, Paper)

Advanced Issues in Brand Licensing: Different Licensing Schemes, Key Provisions and Considerations, and Avoiding Pitfalls

  • Caldwell A. Camero, Senior Intellectual Property Counsel, Trademarks, General Mills, Minneapolis, MN (Bio)


Track 2, Session II: Intersections Between Licensing, the International Trade Commission, and Customs: Customs Enforcement at the Border, ITC Exclusion Orders, and the Licensing Prong of Domestic Industry in ITC Investigations

Moderator: Jennifer Kovalcik, Stites and Harbison, PLLC, Nashville, TN  (Bio)

Licensing and Other Contractual Arrangements: A View from the Border

  • Dax Terrill, Attorney-Advisor Intellectual Property Rights Branch, Regulations and Rulings, Office of International Trade, US Customs and Border Protection, Washington, DC (Bio, Paper 1, Paper 2Paper 3)

Navigating Licensing-Based Domestic Industry Requirements under Section 337

  • Mark L. Whitaker, Partner, Baker Botts LLP, Washington, DC (Bio, Paper)

Section 337 Investigations of Trademark, Trade Dress, and Copyright Infringement

  • Stephanie L. Roberts, Partner, Steptoe & Johnson, LLP, Washington, DC (Bio, Paper, Slides)



SATURDAY, January 31, 2015

8:00 – 9:00 am President’s Forum—USPTO’s Revised §101 Guidelines

9:00 am – 12:00 pm Closing Plenary Session

Monetizing Your IP Portfolio and Resolving Disputes in Licensing

This program addresses techniques for evaluating and effectively monetizing an IP portfolio, and the role that disputes play in licensing. Learn how to value your intellectual property, the best strategies for dispute-free licensing, how to use post-grant proceedings in the US and Europe as a part of your licensing strategy and how licensing settlement agreements are viewed, competitively in the US and Europe. The program also addresses the effect of recent Supreme Court decisions in these areas and ethical considerations in licensing, including ethical concerns for non-practicing entities (NPEs).

Moderator: Sarah Knight, Talem IP Law, Gainesville, FL

Patent Valuation: From One to Thousands

This presentation addresses scaling valuation from review of single patents to review of entire portfolios; different approaches to patent valuation used in well-known cases, and the reasons for using one approach over others; considering the effect of recent changes in law (both AIA and SCOTUS) on patent valuation.

Maximizing Licensing Revenue: Carrot and/or Stick—Strategies for Maximizing Technology Investment Return Through Licensing Without Trial or Appeal

This presentation will address negotiating high stakes licenses short of litigation and explicate how to create leverage through credible damages “Quantification.”

  • William Manning, Robins Kaplan Miller & Ciresi, LLP, Minneapolis, MN  (Bio, Paper, Slides)

Treatment of Licenses in a Competition Analysis: A Comparison of US and European Competition Law

  • Philip C. Strassburger, VP, General Counsel, Purdue Pharma, LP, Stamford, CT (Bio, Paper)

Post-Grant Procedures in the US and Europe as a Settlement Tool and How Licensing/NPE Practice is Being Transformed

  • Philip Slingsby, Slingsby Partners, LLC, London, United Kingdom (Paper)

Recent Court Cases Affecting NPEs

  • Joseph Re, Knobbe Martens Olsen & Bear, LLP, Irvine, CA (Bio, Paper)

The Ethics of Trolling ETHICS CLE

Patent owners threaten and seek enforcement, and challengers threaten and seek invalidation. The ethics and sanctions rules still matter. Here’s how and why.

  • Lisa Dolak, Syracuse University College of Law, Syracuse, NY (Bio, Paper)

Ethics in Licensing and Negotiations ETHICS CLE

What needs to be disclosed to the other side, what to do when confidential information inadvertently sent by the other side is received, communication with person represented by counsel, multijurisdictional practice, dealing with client’s confidential information, and contingent/alternative fee arrangement.

  • Wenjie Li, Senior Attorney, CHQ IP Law, IBM Corporation, Armonk, NY (Bio, Paper, Slides)