Master Class 1
Preparing for and defending IP Diligence: Strategies to Maximize Value to Investors and for Exit.
The principal focus of buy-side or investor diligence is the delivery of a succinct summary and analysis of risks and expectations, always mindful to time constraints on a deal and the budget for diligence.
Substantive problems and delays (even when there are no substantive issues) can tank a deal. Thus effective preparation for sell-side diligence (or when soliciting investment) should focus both on:
A solid substantive foundation
Having the right IP assets, the right way and in the right order
so diligence can proceed efficiently and give a good view of a portfolio.
This is even more critical in regulated industries (i.e., biopharmaceuticals and medical devices), where IP and regulatory diligence often proceed in parallel.
This master class, taught by practitioners well versed in U.S. buy-side diligence, will focus on:
What is expected in terms of prior art searching, portfolio development and maintenance for patents;
How diligence is conducted on non-patent IP, including trade secrets, confidentiality agreements and employee know-how.
We will also discuss common shortcomings in portfolios and how (and when to address those issues in diligence.
Adam Samansky: Adam’s practice focuses on intellectual property litigation. He handles patent, trademark, and trade secret matters on behalf of innovators and investors in a range of industries. His core practice includes patent and trade secret litigation involving complex technologies in the pharmaceutical, medical, high-tech, and defense industries. Adam has tried cases before multiple US District Courts, briefed and argued cases before the US Court of Appeals for the Federal Circuit, and has briefed bet-the-company issues before the US Supreme Court.
Bill Kezer: Bill's practice focuses on patent prosecution, with a particular emphasis on pharmaceutical products and targets as well as other small molecules, including dyes, probes, and binding agents. He leverages experience in the corporate setting to provide clients with a business-based, product-driven approach to all of his IP legal services, including the strategic development of patent portfolios, due diligence reviews of targeted companies and technology, and comparative evaluations of competitive patented technologies. Bill also procures global patent protection for pharmaceutical inventions. His experience includes serving as in-house patent counselor for a life sciences company and working as a senior research scientist for two global chemical companies. Prior to pursing his law degree, Bill earned a PhD in organic chemistry from UC Berkeley.
Master Class 2:
More Than Technically Correct - A Workshop for Learning How to Gauge Whether A Patent Offers the Complete Package
There is an abundance of competent patent attorneys who are capable of drafting and prosecuting patents which meet the technical requirements of patent offices, around the world. However, in today's business environment in which patents are relied upon to protect a company's most valuable assets, more is needed than patents which are simply technically correct. Through the case study of several real world examples, this workshop will help develop skills enabling patent attorneys to better identify and claim valuable innovation, and enabling seasoned technology managers to better gauge whether their patents are maximizing value.
Michael Faibisch serves as a Sr. Intellectual Property Counsel at the Marvell Technology Group where he leads patent procurement efforts for its Wired Networking, Automotive and Wireless Connectivity Business Units. As a seasoned US patent attorney and Israeli advocate Mike has held in-house legal positions in Israel for over 25 years at large local and international high-tech companies where he has specialized in teaming with engineers to identify and protect innovation and in managing collaboration with outside patent counsel to create highly valued patent portfolios. Mike is a core member of Marvell's inhouse patent prosecution team which continues to build an extensive and highly valued patent portfolio, earning for its company prestigious recognition from Clarivate Analytics as a 7 time "Derwent Top 100 Global Innovator" (http://top100innovators.clarivate.com/content/marvell).
Master Class 3:
David versus Goliath. Can Your company Make Money from Patent Litigation?
You have heard the stories, read accounts in the news.. but how does it happen without costing the company a fortune in advance?
In this Master Class you will learn how a small company or inventor can sue multinational companies without massive fees up front in litigation on a contingency basis.
Learn the ABCs of contingency patent litigation.
Learn about litigation funding and if there are and what are the funding costs. Who has veto rights in respect to the settlements.
Learn which countries permit third party ligation funding.
Hear actual case studies and use this opportunity to learn from them and the experts.
Ronald Abramson is a litigator with many years of experience in the software, telecommunications and Internet industries. Mr. Abramson is recognized by Super Lawyers as a top-rated intellectual property litigation attorney in New York, and has been selected as a Fellow of the Litigation Counsel of America. Mr. Abramson has had considerable success in litigating patent infringement cases before the U.S. courts, as well as in securing numerous dismissals and preserving claims in the face of IPR petitions and trials before the United States Patent Trial and Appeal Board. He also is an experienced general commercial litigator, in technical as well as non-technical business matters.
David Liston legal career has spanned more than 20 years in the public and private sectors, including five years as an Assistant District Attorney under Robert M. Morgenthau in the Manhattan District Attorney's Office and more than 15 years in private practice. His practice includes complex civil litigation with a focus on fraud and Racketeer Influenced and Corrupt Organizations Act (RICO) claims, securities fraud, business and financial disputes, professional liability, intellectual property, litigation funding, and banking.
Naomi Assia is founder of one of the leading high tech and intellectual property firms in Israel. Naomi has earned an international reputation with multinational clients in traditional high-tech, biotech, start-up, and venture companies, handling a wide range of legal matters The Firm offers clients a comprehensive analysis of their problems and objectives, applying extensive knowledge and experience to find innovative and cost-effective solutions one of which is contingency litigation.
Master Class 4:
Valuable Patent Prosecution: Tips and Traps (*Plus – Win a GoPro!)
Patent applications are delicate. When skillfully prepared, they can yield immense value. But skillful prosecution requires avoiding numerous pitfalls that exist in patent law. Many of these traps are unique to prosecution, while some derive from litigation rulings.
During this master class, experienced attorneys who specialize in both litigation and prosecution will address topics including: the most recent guidance on patent-eligibility, definiteness, written description, functional claiming, and over-breadth. In an interactive session, two patent experts will explore what to do and, most importantly, what to avoid doing, during patent prosecution.
The presentation will use as a teaching example a GoPro, which will be given to a random participant at the end of the class!
Jeffrey A. Berkowitz, Partner at Finnegan, focuses on adversarial proceedings involving patents primarily involving the computer and telecommunication fields, as well as patent counseling and prosecution to assist clients in developing powerful patent portfolios designed to block competitors. He practices litigation, client counseling, and patent prosecution involving software and telecommunications-related inventions. He has broad experience in all aspects of patent litigation, including pre-filing investigations, discovery, preliminary injunctions, and drafting and arguing claim construction and summary judgment motions.
Jeff provides opinions on patentability, infringement, and validity of patents. He has drafted and overseen the drafting of thousands of patent applications for electrical, electronics, telecommunications, and software-based technologies. Patent portfolios he has managed protect a range of technologies, including adaptive distributed systems; code mobility; remote network resource leasing; network self-healing; runtime service discovery mechanisms; transaction management services; features of set-top boxes and modems; mobile devices, including many standards essential patents; and software applications, including ecommerce, FinTech, cybersecurity, search, and social networking.
Elliot C. Cook, Partner at Finnegan, maintains a diverse intellectual property practice, including patent litigation, post-grant patent challenges, patent prosecution, and patent monetization. Mr. Cook focuses on helping clients strategically develop patent portfolios that effectively block competitors and build corporate value. He works closely with clients to ensure that their patents align with and advance their business goals, thereby optimizing value and minimizing cost. Based on his involvement in more than 20 patent litigations, Mr. Cook has significant experience both defending against and asserting patent rights. His litigation experience ranges from early dispositive motions through trying a case before a jury, including both written and oral advocacy.
Mr. Cook's practice before the U.S. Patent and Trademark Office (USPTO) includes post-grant proceedings and patent prosecution. He has worked on more than 40 inter partes review (IPR) matters, representing both petitioners and patent owners, as well as several ex parte and inter partes reexamination matters. He maintains an active patent prosecution practice, securing patent rights for both startups and established market leaders. Mr. Cook has assisted clients with patent licensing, patent monetization strategy, and patent sales and purchases ranging in value from approximately $20 million to more than $1 billion.
Master Class 5:
The use of patent information in a high tech companies.
Actual Case Studies from International High Tech Companies.
Osram: Patent information for Acquisitions
Stratasys: Patent Information in the Daily Business
The acquisition of patent portfolios and companies are common practice today. Patents are today often an essential part of the company value. Their volume, coverage and much more quality are today more essential than ever when evaluating targets. Learn on a real case, how Osram is evaluating between two possible portfolios of the connected world based on patent information.
Patent information is the most exhaustive source for technical information today. On the other hand relevant information is hard to find due to the huge amount of information. Using the right techniques and tools you are able to extract the relevant information, trends and early indicators to make aware your organization of your ever faster changing environment. Follow competitors and technologies to stay ahead of your competition. See in a real case example how to extract and share this information in the most efficient way.
Daniel is a patent engineer having studied computer science and economics at the Technical University of Munich. Working at a patent attorney firm during his studies, he filed an EP patent on cloud computing for his startup in 2000, which was granted in 2003. In 2001 he was employed at the world biggest electricity company, EDF, and was in charge of the development of one of the first tablets and home automation services. Later he accompanied among other projects such as the cross-country cooperation of the first smart meter for private homes in Germany. Since 2014 he is working for Questel in charge of the automotive market in Europe and responsible for Turkey and Israel.
A licensed Patent Attorney holding a Ph.D. in Biotechnology Engineering, Sebastien was a Partner at The Luzzatto Group before joining Stratasys Ltd., one of the world’s leading companies in the field of Additive Manufacturing. As in-house Senior IP Counsel, Sebastien is responsible for harvesting, registering and enforcing intellectual assets of the company, particularly with regard to its proprietary PolyJetTM and LPMTM technologies. Sebastien is also involved in corporate IP strategy and other IP-related activities, including IP-related opinions and due diligence, competitive intelligence, IP-related agreements, IP coordination and policies, as well as training/education of R&D groups and vertical business units.