September 2017 LES Viewpoints

Viewpoints

The Newsletter of the Licensing Executives Society (U.S.A. and Canada), Inc.

Vol. XXV No. 3

September 2017

Annual Meeting Committee 2017 Welcomes You

Sian Godwin Planning Committee Chair Spotlight Plenary Co-Chairs Michael Fluhler Veronique Bougie Workshop chairs

Dear Licensing Professionals, We are proud to invite you to attend the LES 2017 Annual Meeting in the Windy City of Chicago, Illinois. The meeting, themed “Harnessing the Winds of Change,” will be held at the Marriott Downtown Magnificent Mile from Sunday, October 22 to Wednesday, October 25, 2017.

As thought leaders of the Industry, we are asked to navigate through an ever-changing environment. The LES 2017 Annual Meeting supports your professional development and will feature thought-provoking panel discussions about IP Litigation and Trade Secrets, as well as future-focused presentations including Global Commercialization, and game-changing networking opportunities.

The programming will be attended by licensing professionals of all skill sets, exploring a wide range of current industry topics and related events including: • Strategic Alliances and Deal-changing collaborations • Strategic Portfolio Management • Diversity in Innovation • LES Standards Initiatives • Trademark and Brand Licensing • And much, much more!

We’re also excited to share the following LES 2017 Annual Meeting highlights with you: • Speed Mentoring and Sector Meet-ups • “LES Make a Deal” sector networking event (featuring costumes, gaming tables, and a prize-filled game show) • Deals of Distinction Awards • Exhibit Hall with One-on-One Networking • Frank Barnes Mentor Award • “Licensing in Blues Alley” Gala Dinner (1920s theme) • Professional Development opportunities* • “Take Me Out to the Ball Game” Opening Reception (favorite athletic apparel welcomed) *The LES 2017 Annual Meeting content will be CLEeligible, with attendees gaining up to 13.5 CLE credits, including ethics credits. This eligibility is dependent on the requirements of your State Bar Association. Learn more, book your hotel, exhibit, register or sponsor the LES 2017 Annual Meeting. Visit www.lesmeetings.org/am17.

On behalf of LES (USA & Canada), we look forward to welcoming you to Chicago!

Kimberly Chotkowski LES (USA & Canada) CEO

David Powsner Karthika Perumal Conor Flynn Paul Burns Vasiliki Anest Committee Members Brian O’Shaughnessy President and Chair Kim Chotkowski, CEO Scott Williams VP of Meetings Emma Bienias, Budget Kate Berezutskaya Keith Lerner Ian Dibernardo James McGee Elizabeth Gildea Bill Elkington Kevin Spivak Soody Tronson Bob Held Kristy Stathis David Powsner Mark Hankins Nicki Kennedy Jennifer Dyer Linda Hogan

LES VIEWPOINTS HIGHLIGHTS

LES—A Voice For IP Policy Brian O’Shaughnessy reports Page 2

Autonomous Vehicles How will they be regulated?

Pages 6 & 7

Young Members Congress Exciting event in LA Pages 8 & 9

LES Standards Dynamic Dialogue from Panel Pages 11

Viewpoints

LES—A Voice For IP Policy With Legislators

BOARD OF DIRECTORS

President & Chair: Brian P. O’Shaughnessy

Brian P. O’Shaughnessy

Chief Executive Officer: Kimberly Chotkowski Past President: Jeffrey S. Whittle, CLP President-Elect & Chair-Elect: William Elkington Counsel: Paul A. Roberts, CLP Secretary: Arthur S. Rose, CLP Treasurer: Gauri Prakash-Canjels Regional Vice President Canada and Local Chapters: Panagiota (Betty) Koutsogiannis Regional Vice President, USA, Policy, Standards, International & Strategic Planning: Robert F. Held, CLP Vice President, International: Ned E. Barlas, CLP Senior Vice President, Membership, Communications & Technology: Ida Shum Senior Vice President, Meetings, Education & Strategic Alliances: Gary Fedorochko Vice President, Public Policy & Standards: Rachel Kreppel Director, Local Chapters West: Louise Levien Director, Local Chapters East: Annie Gauthier Director, Membership & Member Engagement: Kevin Spivak Director, Communications & Publications: Gillian Fenton Director, Meetings: Scott Williams Director, Education: Matthew McNeill

Membership inquiries and contact changes should be sent to: membership@les.org

Editorial inquiries and contributions should be addressed to: Editoral Director: Gillian Fenton Editorial Manager: Abbie Elliott aelliott@les.org The quarterly newsletter is published by LES (USA & Canada) and is available online at www.lesusacanada.org.

Views expressed in articles are solely those of the respective authors.

ARTICLE DEADLINES FOR QUARTER 4 LES VIEWPOINTS: NOVEMBER 6, 2017 Copyright © 2017 Licensing Executives Society (U.S.A. and Canada), Inc.

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President & Chair of the Board, LES (USA & Canada)

ES (USA & Canada) continues to be a voice for strong, defensible, and alienable intellectual property rights. Over the past several months, LES leadership has participated in a number of meetings and forums in support of sound IP policy in the public interest.

In June, we met with staff for U.S. Senator Chris Coons on the eve of his introduction of the STRONGER Patents Act, a bipartisan bill co-sponsored with Sens. Cotton, Durbin, and Hirono. The Bill seeks to stimulate our nation’s economic growth and resilience by a return to IP laws and policies that made our patent system the envy of the world, which much of the world has emulated, but from which we have recently deviated.

Among other things, the Bill would require that claim interpretation in Inter Partes Reviews (IPR) and Post-Grant Reviews (PGR) be performed according to the Philips standard, rather than the current “broadest reasonable interpretation” (BRI).

Claim amendments in IPRs and PGRs would be more easily made, and federal court validity determinations would hold priority over PTAB determinations. The Bill would restore the exclusive nature of the patent property right by creating a presumption that ongoing infringement, if found, would cause irreparable injury, and that remedies at law would be inadequate to compensate for that injury. The Bill would also eliminate USPTO fee diversion.

We were joined in our meeting by Joe Allen, whom we can thank for shepherding the Bayh-Dole law through Congress, and who continues to be its most ardent supporter and our most informed guide for its proper implementation. Joe brought to the Senator’s attention the “integrity loophole” under current PTAB proceedings. The USPTO has no authority to award monetary damages or similar sanction against those acting in bad faith in bringing IPRs and PGRs. As such, the unfortunate victim of such a bad faith action has no recourse against the malefactor. We will continue to work with the sponsors of the STRONGER Patents Act, and other members of Congress, to address these deficiencies in our system, and to see that the interests of the IP management and licensing community are protected in this and other legislative initiatives.

LES (USA & Canada) leadership also joined an event sponsored by the Eagle Forum Education and Legal Defense Fund at the Capitol Hill Club on May 25, 2017. The event focused on the challenges facing patent owners in light of recent precedent and legislation. Many of the leading lights in the patent policy debate offered inspiring remarks extolling the importance of our patent system in fueling our nation’s economic ascendancy. We heard from Congressman Dana Rohrabacher, Congressman Thomas

Massie (himself a patentee and successful entrepreneur), Congressman David Bratt, Chief Judge Paul Michel (retired), Pat Choate, Peter Harter, Kevin Kearns, Ken Blackwell, and Laurie Self. Also in attendance was James Edwards, Co-Director, the Inventor’s Project, and Paul Morinville, founder, U.S. Inventor.

The event’s speakers acknowledged the importance of recognizing and affirming the patent right as a personal property right. We find support for this in the words of our Constitution, which grants to individual authors and inventors an exclusive right to their respective writings and discoveries.

We’ll soon learn whether the U.S. Supreme Court agrees with those views when it decides Oil States vs. Greene’s Energy Group et al. There the court will address whether an Article I tribunal (e.g., PTAB) is empowered to take the patent property right from a patent owner.

This is perhaps the most significant patent case the Supreme Court will decide in recent times. The very fate of the America Invents Act (AIA), and its core component of post-grant proceedings, hangs in the balance. If a patent is a private property right, then, at least one argument goes, the Patent Trial and Appeal Board, an Article I tribunal, does not have authority to take that right from the owner. Such would be a violation of the Fifth Amendment, the Takings Clause, which provides that private property shall not be taken for public use without just compensation. It has long been held that adjudication of claims under the Takings Clause is solely the province of an Article III court. As such, an Article I tribunal (PTAB) would lack that authority, and the whole scheme of the AIA and post-grant proceedings would collapse like the walls of Jericho.

If, however, the Court finds the patent right to be a public right, conferred by the good graces of our government, and thus subject to rescission, then an Article I tribunal would, arguably, have that authority; and the post-grant proceedings of the AIA might well survive.

Given recent Supreme Court precedent, we cannot be sanguine that the rights of patent holders will come out atop this debate, nor can we rest easy that vested interests seeking to further weaken our patent system will not contort the Court’s holding, regardless the outcome. The vitality of our intellectual property system, and ultimately the health of our economy, demands our support and attention. LES will continue to lend its voice to these debates, and to work collectively and cooperatively toward a U.S. IP regime that encourages innovation and serves the public interest. We thank you, our members, for your support and assistance in this worthy effort.

Very best regards, Brian

Get CLE Credits At LES Annual Meeting

Women In Licensing Invitation

In addition to our exciting LES 2017 Annual Meeting sessions, we will be offering more career-advancing educational opportunities (fees may apply). LES 2017 Annual Meeting attendees can earn CLE credit by attending the Spotlight Plenary Session, Ethics & IP free of charge. Annual Meeting registered attendees can also save on the registration for CLP Exam Review Course and IP Business Basics 101. Additional courses available for both meeting attendees and non-attendees include: Best Practices in IP Licensing, Advanced Negotiation Skills, IP Strategy and Living With the Deal. Please contact education@les.org for additional information and to learn more about how to register.

From the desk of Kim Chotkowski, CEO, LES (USA & Canada)

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ere at LES we are always looking for ways to increase the value proposition to our members.

Take a look at the line-up of exciting events we are working on for you: Annual Meeting 2017 in Chicago – October 22-26 We have a fantastic Annual Meeting planned and you won’t want to miss Kai Kight, the opening Keynote speaker. He’s an inventor, composer, speaker and violinist! Other things planned are Branding Panels—how to manage your Brands; we are also working with partnering software – enhancing the ability to have you partner and set up meetings with other attendees.

The LES WIL committee invites you to their annual breakfast during the LES 2017 Annual Meeting on Monday, October 23 from 7:45-8:45 am. (Location to be announced and posted.) Panelists and authors of “Breaking Through Bias: Communications Techniques for Women to Succeed at Work” Andie S. Kramer and Alton B. Harris will lead an informative discussion on typical gender biases that currently inhibit a woman’s career. Kramer and Harris will provide practical examples and techniques to help women be noticed as capable, competent professionals. Book your hotel, register for the LES 2017 Annual Meeting, and RSVP for the LES WIL Annual Breakfast.

LES University In Chicago

The meeting content will be CLE eligible with attendees gaining up to 13.5 CLE credits, including Ethics credits. And there’s “LES Make a Deal”—a great networking and fun-filled evening. The event will be set up to allow networking with attendees from your sector; you can also try your luck at our LES gaming tables. Of course, a big thank you to our Annual Meeting Chair—Sian Godwin.

IP100 Executive Forum Planning is underway for the annual 2018 IP100® Executive Forum.

The venue is the elegant Arizona Biltmore in Phoenix, Arizona to be held February 15-17, 2018. IP Competitiveness in a Global Market is the theme and it’s invitation only. Meeting Chairs are Marc Schwartz and Paul Stewart.

LESI Conference hosted by LES (USA & Canada) We are pleased to announce that LES (USA & Canada) has once again been selected to host LES societies from around the world at the LES International Annual Conference. It takes place in San Diego, California at the beautiful Manchester Grand Hyatt, right on the Bay. Save the dates for April 29, 2018 – May 2, 2018. Our chairs are Russell Levine and Claire Driscoll.

The High Tech Sector Royalty Rate Survey is open and we encourage you to participate. Data is key to making a valid survey, so we look forward to your deal information. See Page 12 for details.

Thanks and see you soon at one of our great events!

LES University was held July 17-21 in Chicago at the offices of Brinks Gilson & Lione. Matthew McNeill, LES Board Director of Education, presents an appreciation of sponsorship to Gus Siller, President-Elect of Brinks Gilson & Lione.

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High Tech Sector Royalty Rate Survey

In Memory: John D. Somich (1966-2017)

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ES was saddened by the sudden loss of John Somich in Katy, Texas on August 30. He was an excellent teacher in many LES courses and seminars including IP Strategy and IP Business Basics 101. Most recently John taught IP Strategy (PDS 252) at LES University in Chicago on July 18. He was also an active member of the LES Houston Chapter and participated in many LES meetings and events.

LES Past-President Ada Nielsen recalls, “John was an outstanding team member in BP’s Upstream Intellectual Asset and Strategy Team—and a wonderful co-teacher within BP as well as at many LES (USA & Canada) courses and seminars. He was so liked, loved, and appreciated by those of us who worked with him. We benefited from his many contributions to work and to his spirit of collaboration, friendship, and caring.”

John was a 1989 graduate of the University of Texas at Austin. He was a loving and devoted husband and father, who enjoyed traveling, golfing and cycling—having participated many times in the MS 150.

John has resided in Katy, Texas, for the past nine years. He worked at BP in Technology Commercialization Upstream Technology. He had been a part of Amoco/BP for 28 years. He started plants in China, Belgium, and the U.S. He also worked tirelessly and successfully on the Deepwater Horizon response.

He is survived by his wife of 25 years, Julia Somich; sons, Jack and Joel Somich; as well as other family members and friends. To leave a condolence message and for more information, go to: http:// www.schmidtfuneralhome.net/memsol.cgi?user_id=2003564.

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Table of

CONTENTS

LES Annual Meeting ........................1 Letter from the President & Chair ...........................2 Message from the CEO ...................3 Women in Licensing (WIL) Breakfast ...........................................3 Local Chapters-Silicon Valley...........5 Autonomous Vehicles Panel..........6, 7 Pan-American YMC Event.............8, 9 LES Member Spotlight....................10 LES Standards Panel........................11 High Tech Sector Royalty Rates Survey ...................12 LES Board Nominees.......................12 CLP New Registrants.......................13 LES New Members..........................14 LES Members on the Move ..........15

LES Advertising Index CPA Global www.cpaglobal.com ......................4 Questel questel.com...................................5

4 | LES Viewpoints

Finnegan www.finnegan.com .....................10 GE ge.com........................................16

Silicon Valley Chapter Meeting

By Lawrence J. Udell, SVC Chapter Chair

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ith Millions of Dollars at Stake — The Trial Lawyer’s Perspective on Litigating and Trying IP License Disputes” a topic that drew over 50 attendees to the Silicon Valley Chapter’s June 21st meeting. The panel included Christopher A. Seidl and Patrick M. Arenz attorneys from Robins Kaplan, who also sponsored the event.

Bonnie Goldsmith, CPA of LitiNomics, gave her perspective on the financial side of the subject. It was held at the Sheraton in Palo Alto, California.

This lively meeting with lots of audience participation debated the fact that trials over IP License disputes often turn into issues that may not have been the focal point of negotiation. For instance, parties naturally spend significant time negotiating royalty rates of any given deal.

But when there is a dispute and the parties head to trial with millions of dollars on the line, the verdict often hinges on some other term that the parties spent less time on before signing the agreement.

Panel members: Bonnie Goldsmith (left), Christopher A. Seidl and Patrick M. Arenz. Sponsored by Robins Kaplan, LLP.

In the presentation, the panelists walked through real-world examples of jury trials and arbitrations with seven, eight, and nine figures of damages at stake. Considerations and best practices were suggested for how licensing professionals can best protect their interests—as a licensee or a licensor—at a future trial while negotiating these provisions on the front end. At the end of the day, the strength and value of an IP license agreement lies not just with the most prominent terms, but with the confidence that a party’s interests in the agreement withstand the fire of trial when millions of dollars are at stake.

A key takeaway for Chapter Chair Larry Udell, “…knowledge about what is going on across America in IP license disputes and how juries perceive both sides.”

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5 | September 2017

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Panel discussion at the Silicon Valley Chapter meeting in June.

Autonomous Vehicles, IP, Regulations And Getting Safe Vehicles On The Road

By Carla Blackman & Linda Corcoran

Q & A from the Spring Meeting in Washington D.C.

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ho will be responsible for making autonomous vehicles a safe mode of transportation? That question, among others concerning this brave new world, was discussed at the LES Spring Meeting by a distinguished panel of industry experts: Chan D. Lieu, Counsel, Venable LLP, former Head of U.S. National Highway Transportation Safety Administration (NHTSA); Justin Pierce, Chair of Intellectual Property Division, Venable LLP; Frank MacKenzie, Senior Intellectual Property Counsel Mobility, Autonomous Vehicles, Safety, and Electronics at Ford Motor Company, Ford Motor Company; John Carney, Director of Commercialization & Licensing, Delphi Automotive Systems, LLC, and Richard Lloyd as moderator, North America Editor, Intellectual Asset Management (IAM).

In terms of current regulatory, Why is there a need for autonowhere do we stand and where mous vehicles? are we going?

John: The technology is there and it’s wait-

ing for the customers. An example is sensor and collision avoidance with sensors that create a 360 view around the vehicle. At CES we have demonstrated fully autonomous vehicle sensors.

Q:

Q:

Q:

40,000 with 94% of those crashes caused by human error. If we can take humans out of the equation, a lot of lives can be saved; and in addition, we can provide the elderly, blind and disabled with transportation.

We are already on our way to driving automation as seen in the chart below.

issued with expectations of the industry. It side. We need a document that defines what State outlines what States can do to usher in these laws. Its guidance, not regulation. and federal levels can do; but it should be an agency guide, not a regulation. An autonomous Justin: For the last 5-7 years, automakers vehicle can take 7-8 years to develop and needs have put a sustained investment in developing performance testing. proprietary IP for autonomous vehicles.

Chan: In 2016, U.S. automotive deaths rose to

Here is what those levels represent:

Justin: Look at IP filings. When you look at Levels 3-4 (see chart), there could be 25,000+ patents related to that area.

Level 1: Assisted - Cruise control, adaptive cruise

Frank: When Ford has its autonomous ve-

control.

Level 2: Partial Automation - Combines two dif-

ferent aspects, such as TESLA autopilot and adaptive cruise control.

Level 3: Conditional Automation - Driver is not expected to take control until the car encounters detours or road construction.

Is regulatory affecting life cycle in terms of the technology?

Chan: In 2013 a preliminary policy was

Chan: We are very early on the regulatory

Level 0: Driver only - No automation, driver

responsible.

Frank: There has to be building blocks for technology. On the platform side, there is acceleration and deceleration. The first building block was ABS, next was the throttle, and next was power steering pumps. We have to look at how these change the driver and experience.

hicles, we will be well ahead of the regulatory area. Level 3 is particularly perplexing because it anticipates that there is something that the ve- John: When are the laws and when are the hicle isn’t able to handle. It turns out that humans OEMs going to be ready? Technology is there, are less responsive than we thought. If there’s a it’s just waiting for the other elements to fall Continued on Page 7 ladder in the road, the human driver doesn’t have into place.

Level 4: High Automa-

tion - All aspects of driving behavior are completed by the vehicle. There may be limitations from OEM; these may be environmental, such as cameras can’t see lane markings.

6 | LES Viewpoints

enough information in order to take the vehicle over. Ford decided to skip right over Level 3 because we think it is too challenging. That’s why Ford has opted to come out in 2021 with a Level 4 vehicle.

Level 5: Full Automation – This is the Holy Grail, removing all obstacles and limitations. The vehicle can perform in any driving environment.

Chart By Mike Lemanski for ZF and TRW

Richard Lloyd, moderator

Chan Lieu, Counsel,Venable, Justin Pierce, Chair, IP Diviformer head NHTSA sion,Venable

Continued from Page 6

Q:

When will the public buy into autonomous vehicles? What are today’s challenges?

Chan: Consumer acceptance is going to be the biggest hurdle. OEMs will be sharing the data with NHTSA, so regulations can be developed.

Justin: Greatest challenge—are people going to play nice on the IP side? Are they going to get to the point where we have an ecosystem to improve? Much effort has been put into this area.

Frank: All the cards played are held close to the vest. If we are going to be successful, we need to create open standards. We all need to be playing together. No one knows what Apple is doing; no one wants to be seen as the old company from the past. Google and others have spurred us to move faster. Consumer acceptance is also a challenge. When I first got into an autonomous car I was terrified. People will get used to these new technologies. Level 2 (see chart) technologies will play a huge role in this level of acceptance.

John: Interoperability is going to be very important; the need is so strong.

Q:

Considering the interplay between federal and State regulations, how will the States and federal government decide?

Chan: It is important that the federal government maintains the leadership role. There have been over 50 different pieces of legislation at the State level. If we don’t have harmonization between the States, that could be disastrous for deployment of autonomous vehicles.

Frank: This is an interesting topic because States can define their own standards. For example, California has different laws than other States.

The federal government has a very important role in defining consistent standards.

John Carney, Dir. Commercialization & Licensing, Delphi

Looking at the IP side, what are the challenges that you see in the developing landscape?

Justin: You need to have interoperability; right now each company is coming up with its own IP. How do you come up with standards?

There is a lot of investment in millions of lines of code. Right now we are in the early stages, lots of it is proprietary. If consumers are offered different systems, they will choose the best one for them, similar to the cell phone industry. There may be a roll out of IP pools to more technologies. Participating in a pool will be an advantage.

Frank: The ideal would be an effective patent pool that we could

buy in to, so we don’t get into the cell phone wars. I think you will slowly see the desire to drive go away. There will be a future point in time when you won’t be able to get a driver’s license. Go back to the fact that there are 40,000 fatalities with 94% user error. I can see the federal government stepping in and saying that we need this technology now!

Q:

How might this licensing area change? To what extent are licensing agreements in place

now?

Justin: It’s early for the patent pool thing to work. If Google and Apple were to join a patent pool that would lower costs.

Frank: We’ve been very good and comfortable licensing on

reasonable terms. Now there are virtual suppliers to deal with. I am concerned that there will be a step change. All tech companies will not succeed in autonomous vehicles. I am concerned about how licensing and IP agreements will succeed.

Note: Comments were edited and abbreviated for this article.

Audience listens to panel discuss autonomous vehicles.

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Panel takes questions from the audience after the discussion.

Q:

Frank Mackenzie, Sr. IP Counsel, Ford Motor Co.

Pan-American LESI Young Members Congress

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Exciting YMC Event In Los Angeles At USC

By Shayne Phillips

n Friday, June 16th the Third Annual Pan-American LESI Young Members Congress was held in the Penthouse Suite of the University of Southern California’s USC City Center building. Hosted by the USC Stevens Center for Innovation, almost 70 attendees heard from experts from around the world regarding Big Data and Data Analytics.

Local events first kicked off Thursday with an all-day CLP Exam Review Course, held in the USC City Center building’s 23rd floor board room, followed that evening by a speakers’ and sponsors’ Thank You Dinner. Held on the outdoor patio of LA’s Border Grill, Thank You Dinner attendees were treated to handmade margaritas and modern Mexican cuisine.

The formal Friday Congress got underway with an informaShayne Phillips (Halliburton/Event Planning Co-Chair) welcomes attendees tive welcome speech from current LES (USA & Canada) Presito the Young Members Congress, held in the Penthouse Suite of USC City dent and Chair Brian O’Shaughnessy. He discussed many new Center building in Downtown Los Angeles. initiatives of the USA & Canada group, including its Licensing Standards push (and recent certification), and ongoing outreach to members of Congress and the USPTO on issues important to the licensing community. Next, four highly educational panels were held related to Big Data Analytics, Digital Healthcare, Standard Essential Patents and Cyber Security/Data Privacy. Panelists included IP professionals and industry experts from both North America and Europe from diverse industries such as financial services, healthcare and high-tech. The daytime session at USC City Center concluded with a Virtual Reality demonstration by Dr. Skip Rizzo, Director of Medical Virtual Reality at USC’s Institute for Creative Technologies. Dr. Rizzo’s work focuses on the use of VR technology to help with military and civilian-related Post-Traumatic Stress Disorder, as well as with other psychological disorders that may benefit from event exposure therapy.

Dr. Michelle Longmire (Medable) speaks during a panel discussion around Digital Healthcare. Also pictured (L to R) are Dr. Skip Rizzo (USC Institute for Creative Technologies), Jill Gordon (Nixon Peabody), David E. Goldman (Virtuosity) and Lawrence Lau (USC Stevens Center for Innovation).

A good time was had by all and the LESI young members group looks forward to the fourth annual Pan-American event, which will be held in Cancun, Mexico on September 21, 2018.

Championed by Hector Chagoya, President of LES Mexico, the event will be Chaired by Roxana Aispuro of Becerril, Coca & Becerril, and Cristian Dávila of GreenMomentum, Inc. The Young Members Congress, as always, is open to younger licensAttendees listen to a panel discussion on Standard Essential Patents/FRAND ing professionals, as well as to “the young at heart,” so mark Licensing.

More on Page 9 your calendars now for the fourth annual event in Mexico!

Photos: Peijean Tsai and Allard Chu

8 | LES Viewpoints

The Congress then moved a few blocks away to the newly opened Prank Bar, where attendees were treated to a delicious meal and to amazing cocktails expertly mixed by LA’s own, highly sought-after mixologist, Dave Whitton. The event has seen a very high level of activity and visibility on social media, with attendees and presenters alike being quite active on social media before, during and after the event, through YMC social media outlets such as the YMC Twitter account @YMC_LESI and through the use of the hashtag #YMCLosAngeles2017, as well as through the YMC’s LinkedIn Group “LESI YMC (Young Members Congress).”

Pan-American LESI Young Members Congress

Dr. Skip Rizzo, Director of Medical Virtual Reality at USC’s Institute for Creative Technologies, explains his research around the use of virtual reality for the treatment of PTSD, while an event attendee is assisted by two of Dr. Rizzo’s staff through a fully immersive virtual reality experience

Prof. Dr. Tilman Müller-Stoy (Bardehle Pagenberg) speaks during a panel discussion on Standard Essential Patents/FRAND Licensing. From left: Tom Gaunt (Ablett & Stebbing), Sherry Rollo (Hahn, Loeser & Parks), Sarah Guichard (GE Ventures), and Mike Pellegrino (Pellegrino & Associates).

Attendees of the LESI Young Members Congress Thursday speakers and sponsors thank you dinner enjoy Mexican cuisine on the outdoor patio of Border Grill in Downtown Los Angeles.

Thank You Dinner attendees: From bottom left: Vasiliki Anest (USC Stevens Center for Innovation), Seth Levy (Nixon Peabody LLP), Janiece Rizzo, Matthew McNeill (Rite-Hite Holding Corp.), Michele Riley (Stout, Risius & Ross), David E. Goldman (Virtuosity), Dr. Skip Rizzo (USC Institute for Creative Technologies), Jennifer Bailey (Erise IP), Brian O’Shaughnessy (Dinsmore & Shohl) and Bob Held (Held IP).

Enjoying the LA nightlife. Front center: Nick Baciu (Ocean Tomo); Row two: Tom Gaunt (Ablett & Stebbing), Allard Chu (Klein, O’Neill & Singh), Cristian Dávila (GreenMomentum), Shayne Phillips (Halliburton); Row three: Glyn Truscott (Elkington & Fife), Thomas Schachl (Wallinger, Ricker, Schlotter & Tostmann).

9 | September 2017

Patrick Maloney (USC Stevens Center for Innovation), Sherry Rollo (Hahn, Loeser & Parks), Natalie Raffoul (Clancy P.C + Brion Raffoul), Roxana Aispuro (Becerril, Coca & Becerril), and Hector Chagoya (Becerril, Coca & Becerril/LES Mexico President) enjoy drinks at the networking reception held at Prank Bar following the event.

Continued from Page 8

LES Member Spotlight Kelly Sexton On How To Nurture Start-ups LES Viewpoints spoke with Kelly Sexton of North Carolina(NC) State, who was recently appointed as Assistant Vice Chancellor for Technology Commercialization and New Ventures.

Her office is making headlines as it was recently placed among the top ten of all university technology transfer offices nationwide. Kelly shared her insights on the journey of startups at NC State.

By Liz Hersh

Q:

Tell us about some of the programs your office has developed.

A:

10 | LES Viewpoints

Kelly: We’re focusing on programs, resources and funding to support start-ups based on university research discoveries. Since many of these start-ups involve first-time entrepreneurs, they need a crash course in how to run a company. The hands-on programs are designed to sharpen skills like marketing, sales, accounting and human resources. We offer an intensive one-day workshop where they hear from an attorney and an accountant who cover basic concepts to get them going. We also give them a chance to start practicing their pitch because that’s very important.

We want to provide the support they need at each stage of the journey. Faculty who are ready to take their idea and turn it into a business can take a semester-long course in conjunction with the Poole College of Management. These investor-ready business courses cover the commercialization of a university technology.

The course guides them through the process of developing a business plan that will attract investors.

Q: A:

Does NC State help facilitate funding?

Kelly: As venture capital becomes more risk averse and moves downstream, we’re seeing more and more angel investors stepping in

to fill the void. We’ve built an accredited investor network comprised of NC State alumni that we call our Wolfpack Investor Network or WIN for short. Members are accredited investors as defined by the Securities and Exchange Commission and pay an annual fee to join.

We work to create a pipeline of opportunities available, but there are no minimum investing requirements.

Currently we’re working to close on our fourth investment since we launched in December 2016.

What do you think is missing from this process?

Kelly: Women are underdisclosing their ideas. I’d like to see more participation. Women are getting involved as investors, but I think there is more to be done.

Personally, I think the mechanics of angel investing are something we as a community need to teach, particularly to women.

Q: A:

Q: A:

What excites you about LES?

Kelly: I love being affiliated with an organization that’s advocating for stronger IP rights. The people I’ve met have expanded my network and we’ve truly been able to learn from one another.

Q: A:

Your favorite LES Annual Meeting?

Kelly: Vancouver! What a great place for a meeting.

“I love being affiliated with an organization that’s advocating for stronger IP rights.”

Quick-fire questions for Kelly Coffee or Tea: Coffee Books or e-Reader: Books Cats or dogs: Dogs Beer or wine: Beer Beach vacation or mountain vacation: Beach vacation Early bird or night owl: I have three children under the age of 10 so I’m always exhausted!

atlanta boston london palo alto reston seoul shanghai taipei tokyo washington, dc

advises and assists companies ranging from innovative start-ups to Fortune 500 corporations in procuring, transferring, and enforcing IP rights and has done so in virtually every type of IP-related transaction and legal proceeding.

finnegan, henderson, farabow, garrett & dunner, llp www.finnegan.com

LES Standards Initiative Gains Support Through Dynamic Dialogue Spring Meeting Panel Discussion Recap

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s LES (USA & Canada) President and Chair Brian O’Shaughnessy invited members to the Spring 2017 Conference: “that is why we come to this meeting, to do things collectively that we cannot do alone.” Thursday’s plenary session, “Standards as an Adjunct–or an Ron Laurie, moderator Alternative–to Legislation, Litigation and/or Regulation,” provided the dynamic dialogue that ended in just the kind of consensus building that O’Shaughnessy had envisioned.

By the end of the session, audience members gave collective support to an LES member-driven initiative to develop voluntary community-produced standards. As the esteemed Judge Paul R. Michel (retired), U.S. Court of Appeals for the Federal Circuit and participating plenary panel member, affirmed, “Who has the expertise and is in a better position to bring clarity to the complex, dynamic problems that optimize the benefits of intellectual property for our country?”

The panel discussion attracted a large audience from the High Tech, CEEM, IUG and Legal Sectors. Ron Laurie, Managing Director, Inflexion Point Strategy, acted as moderator. Joining Judge Michel on the panel were Bill Elkington, Sr. Director, Intellectual Property Management Corporate Development, Rockwell Collins; Suzanne Munck, Chief Counsel for Intellectual Property U.S. Trade Commission (FTC) and Deputy Director Office of Policy Planning; Paul Strassburger, General Counsel, Purdue Pharma; and Michael Thompson, Director Aerospace Product Group SAE International.

Reported by Gary Breit, written by Linda Corcoran

Michael Thompson spoke of the fine work of ANSI in constructing standards over the past 110 years with the development of 40,000 standards. The process and time in developing standards was discussed, noting that in the aerospace industry the process stretched over three years.

Suzanne Munck shared her experience with the Intellectual Property Trade Commission and their involvement with patent policy and enforcement actions. She confirmed the generally held notion that standardized approaches around Fair, Reasonable and Non-Discriminatory (FRAND) Licenses could facilitate the development of voluntary standard setting.

The audience related to an experience described by practitioner Paul Strassburger, who spoke of an important intellectual property case that took four years for the transaction to be completed. He stated that delays resulted from an ad hoc series of steps that comprised IP negotiations.

At that point Ron Laurie stated that a voluntary, generally accepted standard process “destroys the legitimacy of extreme positions. He then introduced the six-fold focus of the LES Standard Initiative to be patent licensing, IP brokerage, IP protection in supply chain, IP valuation, IP in the boardroom, and patent quality.

An astute audience member provided support to an LES memberled initiative toward community produced standards and reminded the audience, “You can’t steer a boat unless it’s moving.”

Interest In IP Standards On The Rise

Standards Panelists: Suzanne Munck (left), Phil Strassburger and Michael Thompson.

Standards Panelists: Bill Elkington (left) and Judge Paul R. Michel (retired).

Interested audience supports LES Standards.

Greg Waite (left) makes a point with Gary Breit.

11 | September 2017

Bill Elkington kicked off the discussion noting rising interest surrounding IP Standards over the past three years by innovators and enterprises. He reminded those in the room that LES (USA & Canada) has engaged in an active dialogue regarding the importance of standards of business conduct and the cost in IP-oriented transactions. Recently, members of LES have sought the assistance of the American National Standards Institute (ANSI) to assist in the process of standards development. According to Elkington, the LES standards focus is two-fold: business processes and management of behaviors.

Who’s Your Leader?

Slate Of Officers And Directors For 2017-2018

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s Chair of the Nominating Committee, I would like to extend my gratitude to the other participants of the Committee, Brian O’Shaughnessy, Bill Elkington, Soody Tronson and Mitch Charness for their thoughtful contributions, as well as all members of the Society and the Board of Directors who submitted recommendations for new Directors and Officers. Also thanks to Kim Chotkowski, an integral part of all discussions.

After careful deliberations, the Nominating Committee proposes the following slate for 2017-18: President and Chair

Bill Elkington

Past-President and Past-Chair

Brian O’Shaughnessy

President-Elect and Chair-Elect

Bob Held

Treasurer Mike Pellegrino Secretary Kevin Spivak SVP Membership, Communications and Technology Ida Shum SVP Meetings, Education & Strategic Alliances

Gary Fedorochko

VP Public Policy & Standards

Rachel Kreppel

Director International

Jim Bratton

Director, Local Chapters East

Annie Gauthier

Director, Local Chapters West

Louise Levien

Director, Membership & Member Engagement

Annemarie Meike

Director, Communications & Publications

Gillian Fenton

Director Education

Matthew McNeill

Director Meetings

Scott Williams

Counsel Paul Roberts Foundation President

Don Drinkwater

12 | LES Viewpoints

All of the above candidates have been advised of their nomination, and have agreed to serve their term, if elected.

Although you never leave the family, the most difficult part of the nominating process is the non-renewal of terms for Board members who have shown outstanding dedication and commitment to LES. However, bringing on new Directors is necessary to the progress of LES—it not only recognizes active contributors to the organization, but also ushers in fresh ideas for the management of our Society. The following Board members will be retiring from active board service at the end of their terms in October 2017: Jeff Whittle, Ned Barlas, Art Rose and Panagiota (Betty) Koutsogiannis.

Respectfully submitted,

Jeff Whittle, Chair - Nominating Committee

Thank you to the 2016-2017 LES Board of Directors for their service.

Row 1, left: Bill Elkington, Brian O’Shaughnessy, Jeff Whittle, Rachel Kreppel; Row 2: Panagiota (Betty) Koutsogiannis, Louise Levien, Paul Roberts, Ned Barlas, Kevin Spivak, Annie Gauthier, Ida Shum; Row 3: Gary Fedorochko, Bob Held, Art Rose and Scott Williams.

High Tech Sector Royalty Rate & Deal Terms Survey

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s a reminder, the Licensing Executives Society is updating its “High Tech Sector Royalty Rate & Deal Terms Survey” for deals entered into in 2014 through the current date. We need your participation to make the survey useful.

To complete this very important survey, please click on the following URL: http://secure.vaultconsulting.com/LESRRHT/2017/index.aspx?rsp=37:3RZ. The survey deadline is September 8, 2017.

Upon the completion of the survey process, LES will provide LES members with an aggregate report displaying key metrics resulting from this study.

LES members who participate in the survey will be eligible to win one of the following prizes: Apple HomePod (1 winner), GoPro Hero5 Session Camera (2 winners).

To ensure confidentiality, Vault Consulting will randomly select three survey participants and will send the prizes to the winner. Since this will be a random drawing, your chances of winning a one of the prizes will increase based upon the number of deals submitted, however, each survey participant can only win one prize.

The final report will be available to LES members at no cost and may be sold to non-members. LES membership dues are supporting 100% of the costs of this project.

If you have any questions about the survey, or the confidentiality of your information, feel free to e-mail Vault at support@vaultconsulting.com. You may also contact LES directly by email at membership@les.org.

Thank you in advance for your participation and support.

Lewis Stark, CPA, CFE Bob Held, CLP Partner Held Intellectual Property, LLC EisnerAmper LLP LES Board of Directors & LES Survey Committee Co-Chair Survey Committee Co-Chair

Professionals Earn CLP Credential In First 2017 Testing Window

By Cynthia Allen

C

ertified Licensing Professionals, Inc. (CLP) announced today that 28 professionals who work in licensing and technology transfer passed the CLP exam and earned the credential during the first testing window of 2017, which was held April 1 – May 15.

CLP exam. These newly-certified individuals work in a wide range of employment settings around the U.S. and across our globe, and they all have signified their experience, qualifications, and commitment to professional development with this milestone,” Millar-Nicholson said.

Individuals working in a diverse mix of employment settings— universities, corporations, private organizations and government entities—earned the credential during the April/May window. The newly-certified individuals working in the Americas and Asia join a CLP community composed of individuals working in more than 30 countries around the world and illustrate that interest in the CLP program outside of the United States continues to grow.

The names and employers of the newly certified will be published this summer in the next edition of CLP Connection, the CLP newsletter published twice annually.

The Certified Licensing Professional (CLP) program is a professional designation intended to distinguish those who have demonstrated experience, proficiency, knowledge and exposure to licensing and commercialization of intellectual property through involvement in patenting, marketing, valuation, IP law, negotiation, and intellectual asset management. The CLP program is designed to provide an inclusive environment for licensing professionals from varied backgrounds, thereby leveraging the multidisciplinary nature of the licensing field based on certain knowledge standards. The CLP exam is offered twice a year at over 400 locations worldwide. For more information, visit www.licensingcertification.org.

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“What an honor it is to recognize these individuals who have demonstrated their knowledge and experience in the licensing/ IP field and welcome them as Certified Licensing Professional credential holders,” said Lesley Millar-Nicholson, CLP President and Chair. “The scope of the CLP examination includes all aspects of licensing—strategy, intellectual property protection, opportunity Lesley Millar-Nicholson assessment, valuation, marketing, agreement development and drafting, negotiation, and agreement management—and is evidence of the wide knowledge base individuals must possess in order to pass the

Candidates have the opportunity to earn the CLP credential throughout the months of April and October each year. Registration for the October window is now open, and interested individuals should visit www.licensingcertification.org/for-candidates/application-and-fees/ to apply.

April 29 – May 2

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Strong IP Drives the Bottom Line

Manchester Grand Hyatt San Diego,California l

13 | September 2017

LESI 2018

ANNUAL CONFERENCE

LES New Members Maureen Gibbons Lisa Andaleon Director of Operations and Finance Senior Corporate Counsel University of Southern California, Bristol-Myers Squibb Company USC Stevens Center for Innovation Natalie Greco Fellow Michelle Anderson National Institute of Allergies & Intellectual Property Manager Infectious Diseases / NIH Zwipe America, Inc.

Jason Lilly VP - Corporate Development Neogen Corporation

Thomas Nee Principal Larchmont Ventures

Michael Lisi Partner Bridge Intellectual Property Services PLLC

Keith Noe Partner Lando & Anastasi, LLP

Carrie Hafeman Jennifer Boyle-Lynch Sr. Associate Director, Finance and Founder Carrie Hafeman Operations Northeastern University Julianne Hartzell Partner Kimberly Bryce Marshall, Gerstein & Borun LLP Senior Advisor Saskatchewan Research Council Dan Hassett Partner Justin Bunde Wiley Rein LLP Project Manager II Raven Industries Katie Hewitt Sr. Director, Corporate Business Tom Campbell Development Executive Director, Office of Eli Lilly and Company IP Management University of Houston Amanda Hollis Attorney Sophie Chapelle Kirkland & Ellis LLP Managing Director Strategic Partnering Consultancy Catherine Ivers Sr. Counsel IP Law Nicolas Charest GlobalFoundries Student-at-Law Fasken Martineau Dumoulin LLP Kenneth Karanja Licensing Associate Vita Conforti University of Iowa Research Director of Legal Affairs Foundation Impel NeuroPharma Inc.

Gary Lobel Chief Patent Counsel and Senior R&D Counsel Nestlʊ

Scott Cromar Patent Attorney Knobbe Martens Brian Dies Principal Hoffman Alvary & Company LLC Scott Elrod Associate Director Office of Technology Licensing, Stanford University

14 | LES Viewpoints

William Fabbri Sole Member Fabbri Law, LLC Victoria Friedman Managing Partner Dennemeyer & Associates, LLC Richard Gearhart Owner Gearhart Law

Ellen Kats Licensing Associate University of California San Francisco Dean Kavanaugh VP, Business Development 3M Drug Delivery Systems Div. Scott Klapman Technology Development Management Associate Illinois Institute of Technology Vincent La Terza Asst VP of New Ventures Georgia State University GSU Lina Lahoz Strategic Sourcing Manager Corepharma

Joe Luminiello CEO Third Coast Therapeutics Heidi Martinez Associate General IP Counsel Xerox Corporation Robert Masters Partner Fried, Frank, Harris, Shriver & Jacobson LLP Gerald McCluskey VP, Business Development and Alliance Management Horizon Pharma Julie (Jill) McWhirter Partner King & Spalding LLP Hina Mehta Associate Director George Mason University Faye Miller Product Director Licensing & Catalyst The Dow Chemical Company Chris Mills Partner Wiley Rein LLP Molly Minnear Principal KPMG LLP Michael Moore Director, Licensing & Life Sciences Northwestern University, Innovation & New Ventures Office Linda Morgenstern Vice President Beanstalk

Juhee Park Director Upstream Partners Shane (Xin) Peng Fellow National Institute of Allergies and Infectious Diseases / NIH Eddie Poh Patent Manager Intellect Patent & Innovation Charles Pruitt Agreement Administrator The Univ. of Southern California, USC Stevens Center for Innovation Teemu Puutio Student Fordham Law School Sangeetha Raghavan Licensing Associate University of Maryland, Office of Technology Commercialization Sharwatie Ramsaywack Commercialization Research Officer Brock University David Rickerby Managing Member Boston Technology Law, PLLC Karin Rivard Attorney Goulston & Storrs, P.C. Erick Robinson Director of Patent Litigation Beijing East IP Ltd. Suzanne Rogers Attorney Law Offices of Suzanne E. Rogers, PC Lisa Rythen Larsson Business Analyst PARC Jeremy Schofer Of Counsel Wiley Rein LLP

Karine Sellam Business Development Director Zoetis Inc. Parijat Sharma Principal ZS Associates Elizabeth Sietsema Attorney McCracken & Gillen LLC Timothy Spencer Technology Licensing Officer The University of Melbourne Carolyn Theodore Technology Licensing Officer Center for Technology Licensing at Cornell University

New name, new look, same premier expertise.

SRR is now STOUT.

Fraser Thompson Economist Keystone Strategy Erin Varnell Assistant Attorney Florida Polytechnic University Mary Lou Wakimura Principal Hamilton, Brook, Smith & Reynolds, P.C.

Intellectual property professionals trust Stout for our deep industry knowledge, patient guidance, and unparalleled service. Our expertise resides at the intersection of finance and IP.

With a large and experienced practice group focused excusively on IP, Stout regularly assists clients through every step of a valuation, dispute, or licensing matter.

Renee Wong Director Navigant Consulting Keith Wycoff VP of Research Planet Biotechnology Kyle Yarberry Attorney Brinks Gilson & Lione

formerly

Learn more at stoutadvisory.com

Investment Banking | Valuation Advisory | Dispute Consulting | Management Consulting

LES Members on the Move Conor Flynn: Formerly with Xerox, Conor is now with the SUNY Buffalo Clinical Research Office.

John A. Schultz: John is currently the Director, Office of Technology Transfer at Houston Methodist Hospital/Research Institute.

15 | September 2017

John A. Hudson: John is now Director– Tech+IP Advisory Group wth Houlihan Lokey, Inc., a global investment bank.

John was the past EVP and Chief IP Officer for a privately held technology company based in Raleigh, NC.

Ron Laurie: Effective July 1st, Ron is a member of the Advisory Board, Hoover Institution Working Group on Intellectual Property, Innovation Prosperity (IP2) at Stanford University.

Hoover IP² extends the intellectual debate on intellectual property rights and patents.

Innovation

Acquiring Licensing Collaborating

Partnering and investing in the best ideas to enable our customers to discover, diagnose and manufacture new medicines. gelifesciences.com/licensing LSLicensing@ge.com

gelifesciences.com/licensing

16 | LES Viewpoints

GE and the GE Monogram are trademarks of General Electric Company. Š 2017 General Electric Company.

GE Healthcare Bio-Sciences AB, BjĂśrkgatan 30, 751 843 Uppsala, Sweden XXXXXXXX AA 05/2017