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2015 Mid-Winter Institute Papers & Audio

The IP Marketplace

January 28th, 2015
2015 Mid-Winter Institute

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. Topics: (1) Licensing Markets from a University Perspective: Opportunities and Challenges; (2) Recent Trends in the Patent Monetization Marketplace; and (3) Licensing Markets: Gateway to Open Innovation.

Speakers:

Moderator — Stephen A. Holzen, Stout Risius Ross, Inc., Washington, DC
Licensing Markets from a University Perspective: Opportunities and Challenges — Kathryn A. Donohue, Director, Legal Affairs, Penn Center for Innovation, University of Pennsylvania, Philadelphia, PA
Recent Trends in the Patent Monetization Marketplace — Chad Hilyard, Rockstar Consortium, Plano, TX
Licensing Markets: Gateway to Open Innovation — Matt Anderson, Associate General Counsel, Intellectual Property Covidien, Boulder, CO

Licensing Refresher

January 28th, 2015
2015 Mid-Winter Institute

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.

Speakers:

Moderator — Raj S. Davé, Partner, Pillsbury Winthrop Shaw Pittman, LLP, McLean, VA
Panel — Michele Herman, Intellectual Ventures, Bellevue, WA, Daniel Gaudet, Senior Director, Philips Intellectual Property & Standards, Burlington, MA

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

January 28th, 2015
2015 Mid-Winter Institute

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 and 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 rold that governments can play in promoting international R&D. Topics: (1) Successfully Developing and Monetizing an IP Portfolio in Challenging Times; (2) The "In Crowd": In-Licensing Through Crowdsourcing [Crowdsourcing—seeking solutions from a group or crowd of knowledgeable problem solvers—is a 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.]; (3) 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, and adding or holding back certain IP assets and rights thereto.]; and (4) 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 governments and private sector innovation. The Israel experience will be used as a specific example of government–encouraged R&D.].

Speakers:

Moderator — Chris Lewis, Shareholder Ratner Prestia, Berwyn, PA
Successfully Developing and Monetizing an IP Portfolio in Challenging Times — John C. Paul, Finnegan Henderson Farabow Garrett & Dunner, LLP, Washington, DC
The "In Crowd": In-Licensing Through Crowdsourcing [Crowdsourcing—seeking solutions from a group or crowd of knowledgeable problem solvers—is a 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, Caterpillar Inc., Peoria, IL
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, and adding or holding back certain IP assets and rights thereto.] — Bernie Plantz, Chief IP Counsel, Johnson & Johnson, New Brunswick, NJ
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 governments 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

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

January 29th, 2015
2015 Mid-Winter Institute

(1) 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.]; (2) 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 client’s IP, to a third party? How safe are your client’s patent licenses and patents after the Qimonda case?]; (3) 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?]?; (4) 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.]; and (5) 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.].

Speakers:

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
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 client’s 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
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
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, Norman, OK
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

Licensing in an Uncertain World: Dealing with the Ever‐Changing Landscape of Subject‐Matter Eligibility and Trade Secrets in Licensing

January 29th, 2015
2015 Mid-Winter Institute

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. Topics: (1) Mayo, meet Alice: Abstract Idea or Inventive Concept; (2) Biotech Licensing with a Section 101 Contingency Plan; and (3) Licensing Psuedo‐Proprietary Source Code as a Trade Secret.

Speakers:

Moderator — Dan Brownstone, Fenwich & West, LLP, San Francisco, CA
Mayo, meet Alice: Abstract Idea or Inventive Concept — Warren Woessner, Schwegman, Lundberg & Woessner, PA, Minneapolis, MN
Biotech Licensing with a Section 101 Contingency Plan — Robert S. MacWright, Director, Commercial Ventures & Intellectual Property, University of Massachusetts, Amherst, MA
Licensing Psuedo‐Proprietary Source Code as a Trade Secret — Steward Mesher, Conley Rose, PC, Austin, TX

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

January 29th, 2015
2015 Mid-Winter Institute

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. Topics: (1) The Effects of the Licensing of Open Source Components in Proprietary Products; (2) The Latest Thinking on FRAND Licensing Assessments and Models; and (3) The Intersection—and Some Would Say the Head‐on Collision—Between 3D Printing and Intellectual Property.

Speakers:

Moderator — Monica Barone, Qualcomm, Inc., San Diego, CA
The Effects of the Licensing of Open Source Components in Proprietary Products — Cliff Allen, Senior Attorney, Microsoft Corporation, Redmond, WA
The Latest Thinking on FRAND Licensing Assessments and Models — Anne Layne‐Farrar, Vice‐President, Charles River Associates, Chicago, IL
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

The New Life in Licensing Biotechnology Innovation

January 29th, 2015
2015 Mid-Winter Institute

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. Topics: (1) Technology Transfer Perspectives on Partnering and Licensing, From Ebola Vaccines to the Next Big Thing; (2) Licensing in the New 101 World: The Impact of Myriad and Prometheus on Small to Mid‐Size Biotech from an In‐House Perspective; and (3) Advising Clients: Valuation Post‐Myriad.

Speakers:

Moderator — Ed R. Ergenzinger, Life Sciences Patent Attorney, Raleigh, NC
Technology Transfer Perspectives on Partnering and Licensing, From Ebola Vaccines to te Next Big Thing — Darren Fast, Ph.D., Director of Technology Transfer, University of Manitoba, Winnipeg, Canada
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
Advising Clients: Valuation Post‐Myriad — Judy Roesler, Senior Intellectual Property Counsel, POET, Sioux Falls, SD

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

January 29th, 2015
2015 Mid-Winter Institute

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.

Speakers:

Moderator — Ada Nielsen, Chief Executive Officer Foodexus, LLC, River Hills, WI
Panel — Pamela L. Cox, Partner, Chair IP Transactions, Marshall Gerstein & Borun, LLP, Chicago, IL, Matthew C. McNeill, Chief Innovation Officer, Rite‐Hite Holding Corporation, Milwaukee, WI, Joseph T. Miotke, DeWitt Ross & Stevens SC, Brookfield, WI