LES Viewpoints September 2019 Edition

Viewpoints

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

Vol. XXVII No. 3

September 2019

Annual Meeting Brings Together World-Renowned Speakers And Cutting-Edge Programming October 20-23, 2019 • Phoenix, Arizona

J

Multi-Track Program Will Offer Attendees Industry-Wide and Sector-Specific Content Delivered by a World-Class Lineup of Speakers.

oin us in “Connecting and Inspiring the Intellectual Property & Licensing Community” at the LES 2019 Annual Meeting, October 20-23, 2019. The venue is the spectacular JW Marriott Phoenix Desert Ridge Resort & Spa. This highly anticipated three-day event is expected to convene more than 600 professionals and will feature a speaker roster of notable business leaders and members of the licensing and intellectual capital management communities. Registration and conference information are available at https://lesmeetings.org/ This year’s meeting features nearly 70 sessions with more than 100 expert speakers, including keynote speakers Assistant Attorney General of the Antitrust Division of the U.S. Department of Justice Makan Delrahim, Google Vice President and Chief Internet Evangelist Vinton Cerf, Microsoft Managing Director for Startups Shaloo Garg, and many more.

“The impressive 2019 Annual Meeting program showcases the role of LES at the forefront of the evolving innovation economy,” said LES President and Chairman Bob Held. “Delivering on our mission to educate our members and position them for success, this year’s array of world-class speakers will offer ground-breaking perspectives and authoritative insights into the topics most important to today’s industry professionals. It’s the one event this year that anyone involved in IP and licensing can’t afford to miss.”

So Why Should You Come to Phoenix in October for the LES Annual Conference?

Attending the LES Annual Meeting is a sound investment for your company and your career.

This is the premier event for the intellectual capital community. The LES Annual Meeting attracts a diverse group of decision makers and

thought leaders in the IP space for conversations about innovation, the evolving licensing field and the future of Intellectual Capital Management. We also need your expertise and unique perspectives that you bring to the group.

Practical Education. The world of licensing is constantly evolving, so it is critical to stay ahead of the curve. Whether you’re just starting out in the field or have 30 years of experience, there’s always more to know to be competitive. The LES 2019 Annual Meeting has 31—count ’em 31—content-rich sessions with 100 speakers—designed to provide you with strategies and tactics you can use right away. You’ll leave Phoenix inspired to take on the latest innovation challenges.

Check Out Our 2019 Program to Get an Overview of the Wide Diversity of Tracks Available.

Boundless Networking. At #LESAM2019, our community of innovators, attorneys, intellectual capital management professionals, and generally overall great people will connect in Phoenix. Attendees have plenty of time to network during activities, meetings, and between sessions. We make it easy and fun to connect with colleagues and meet new friends, mentors, and potential clients.

In addition to the keynote speakers, LES sector experts have designed customized tracks with educational sessions, interactive workshops and networking opportunities to enhance engagement and to maximize the meeting’s value for attendees in every sector.

(See Page 6 for more.)

LES would like to give special thanks to its 2019 Annual Meeting sponsors and media partners. For more information about the conference, sponsorships or registration, visit https://lesmeetings.org/.

JW Marriott Phoenix Desert Ridge Resort & Spa

DID YOU KNOW YOU CAN GET 11+ CLE CREDITS AT THE ANNUAL MEETING? Take advantage of the legal learning opportunities with courses on negotiation, business development IP basics and IP valuation.

Visit https://lesmeetings.org/registration/ and scroll to bottom of the page.

LES VIEWPOINTS HIGHLIGHTS

LES President’s Message Hear Innovative Leaders.

Pages 2

LES Sector Highlights Find a track for you.

Page 6

Check-out Local Chapters Philly, D.C., Wisconsin & San Diego.

Pages 12-13

CLP News Revised Exam Information.

Pages 8-9

Viewpoints

Get Inspired By The World’s Brightest, Most Innovative Leaders At The LES Annual Meeting

BOARD OF DIRECTORS President & Chair Robert F. Held Past-President & Past-Chair Bill Elkington President-Elect & Chair-Elect Gary Fedorochko Secretary Kevin Spivak Treasurer Mike Pellegrino

DIRECTORS Eric Victory Leslie Millar-Nicholson Rachel Kreppel Jim Bratton Annie Gauthier Louise Levien Annemarie Meike Gillian Fenton Matthew McNeill Scott Williams Counsel: Paul A. Roberts Membership inquiries and contact changes should be sent to: membership@les.org

Editorial inquiries and contributions should be addressed to: Editor Carla J. Blackman carla@designinterface.com or Editorial Director Gillian Fenton The quarterly newsletter is published by Licensing Executives Society (U.S.A. and Canada), Inc. 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 8, 2019 Copyright ©2019 Licensing Executives Society (U.S.A. and Canada), Inc.

L

Bob Held

President & Chair of the Board, LES (U.S.A. and Canada)

ES members play an essential role in our innovation ecosystem. Every day we are in the trenches, driving all sorts of intellectual property and licensing matters critical to driving the global economy. Whether it be managing the next deal or working on an upcoming merger or patent infringement case, our work matters.

As President and Chairman of LES, I invite you to join me at the LES 2019 Annual Meeting where we can connect and learn from the best while enjoying sunny Phoenix and all that the JW Marriott Desert Ridge Resort & Spa has to offer. This year’s meeting will feature more than 70 sessions with more than 100 expert speakers.

We are honored to open the Annual Meeting on Monday, October 21st, with a plenary with Assistant Attorney General Makan Delrahim. As the former Deputy Assistant to the President and Deputy White House Counsel, as well as a member of the Attorney General’s task force on Intellectual Property, he’ll discuss how innovation, legislation, and competition play a role in business, foreign commerce and the current efforts of the Department of Justice Antitrust Division.

At the Tuesday luncheon on October 22nd, we’ll gain new insight on how startups, and those who support them, can leverage their intellectual assets to realize revenue opportunities from Shaloo Garg, managing director, Microsoft for Startups. A champion of innovation, her experience ranges from tech labs and Fortune 500 technology companies to the UN Women community working with startups that contribute to the overall evolution of technology across the world.

Be sure join us for the Patent Trial and Appeal Board Fireside Chat Tuesday afternoon with speakers Paul Michel, Chief Judge, United States Court of Appeals for the Federal Circuit, Retired; and Scott R. Boalick, Chief Judge for the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trade Office (USPTO). This unique panel will have a frank dialogue on what the PTAB is doing correctly, where it needs to improve, and possible solutions to systemic issues.

On Wednesday morning, Vice President and Chief Internet Evangelist for Google, Vinton Cerf­—known as the “Father of the Internet”—will discuss the importance of harnessing intellectual property to change the landscape of communications and information technology. His diverse expertise from his ground-breaking work to found and develop the Internet will provide a new level of appreciation for understanding our industry and how to grow professionally.

In addition to the keynote speakers, LES sector experts have designed customized tracks with educational sessions, interactive workshops, and networking opportunities to enhance engagement and to maximize the meeting’s value for attendees in every sector. Our sessions and educational panels will explore the development and protection of IP commerce, licensing, and current developments of our LES Standards Initiative.

You’ll have an opportunity to meet with sector leaders to discuss the results of LES High Tech Sector, and Life Sciences Sector Royalty Rates & Deal Terms Surveys - an analysis of exclusive findings and compelling trends gleaned from the investigation of thousands of licensing agreements.

Each year at the LES Annual meeting, LES presents the LES Deals of Distinction Award and the LES Frank Barnes Award. The LES Deals of Distinction Award is presented to companies that orchestrated the year’s most outstanding licensing and business deals in each sector. Several key dealmakers will be on hand to provide insights on their winning deals. The Frank Barnes Award is presented to a LES member who, like Mr. Barnes, has dedicated considerable time and energy to mentoring fellow licensing professionals.

Sponsored by the LES Foundation, the award honors Frank Barnes, Corporate Vice President for Abbott Laboratories, who passed away on June 2000 after a long fight with cancer. Frank’s contributions to Abbott through his in-licensing prowess are legendary, earning the company billions of dollars annually. An early supporter of LES, Frank mentored dozens of licensing executives who continue to make important contributions throughout the pharmaceutical industry.

What I always enjoy most about the conference is the opportunity to network and share knowledge with the best and the brightest from across the IP and licensing industry—from IP professionals and lawyers to entrepreneurs, academics and technology professionals. On behalf of all us at LES, I would like to give special thanks to our 2019 Annual Meeting sponsors, media partners and especially the hard work of the planning committee.

I look forward to making lasting, valuable connections with all of you!

And if you haven’t already, be sure to register for the conference at https://lesmeetings.org/.

Sincerely, Bob Held

The Patent Whisperers

Table of

L

By Raymond Van Dyke, LES Washington D.C. Chapter Chair, Van Dyke Law

iving in the Washington, D.C. area means that I can go to hearings and other proceedings concerning intellectual property, such as the Senate Hearings on patent eligibility. In a rare bipartisan effort to address serious concerns in patent law, Senators Tillis and Coons allocated three days of hearings in early June with a total of 45 witnesses testifying.

CONTENTS

Ray Van Dyke

The rather small Senate Judiciary room caused many, including me, to wait in line to get in. Over the three days of testimony, the views expressed on the issue of patent eligibility were diverse, with patent experts, scholars, industry people and organizations opining on this rather obscure issue of patent law thrust into national prominence.

Patent eligibility is directed to a threshold question on whether or not a particular invention, as set forth in a patent application, can enter the patent system. Patent eligibility is a very different requirement than the more conventional main hurdles of novelty or newness, and non-obviousness, both of which are separate and stringent barriers facing all innovations in the patent gauntlet.

There are various other requirements as well before a patent can grant.

Until roughly 10 years ago, the patent eligibility threshold was a non-issue, and the governing statute, 35 U.S.C. Section 101, was considered a “coarse filter,” i.e., most innovations passed through and proceeded on to the far more rigorous patent tests, such as novelty. However, for various reasons Section 101 of late has been used as a cudgel to deny patentability to an increasing swath of innovation, with the U.S. Supreme Court complicit in this effort.

The incredible progress of innovation in the life sciences and software industries in the last few decades have transformed society, and created mega tech corporations such as Microsoft, Google, Amazon and others. The technologies of today are increasingly intangible, i.e., modern companies’ valuations are now primarily based on their intellectual property, which includes patents and brands, and less on equipment and other tangible assets. The biggest companies now are almost entirely based on intangibles, with Apple having crossed one trillion in valuation based primarily on their IP, i.e., patents, branding, etc.

This technological growth has not gone unnoticed by countless inventive minds in this nation and around the world. With the enormous rise in valuation, there was (and is) a huge interest of people and small companies with their own big ideas to partake in the patent process. So, they filed and obtained countless patents in these new areas. Since our Founders, in essence, democratized the patent system, anyone with a new idea can get a patent in this country even if they are not themselves manufacturers or have connections in the industry. The large companies, particularly the tech companies, continue to release products and services, including patent protected innovations of others embedded therein, and were thus sued for patent infringement by these patentees. Although some of these suits were frivolous, many big companies wanted a fix to allow them to operate without threat of litigation, i.e., stop these inventors from enforcing their patents and allow big tech to do what it wanted, as it wanted.

Considerable lobbying and patent reform, which resulted in the 2011 America Invents Act, dominated the scene, creating new ways to administratively invalidate patents, i.e., take the litigation out of the courts. Along with this new legislation, the issue of patent eligibility became muddied, particularly by the Supreme Court, creating confusion and unpredictability. The lower courts, desirous of easy ways to dispose of these complicated patent cases, eagerly employed these new tools of dismissals for failure of an invention to meet the now shifting patent eligibility standard, which primarily resulted from the Supreme Court’s Alice decision.

Senate Judiciary Room

Patent Whisperers, continued on Page 4

President’s Message ..................2 The Patent Whisperers ...........3-4 Sector Highlights .........................6 High Tech Sector Webinar.............7 CLP 2019 Exam ..........................8 5 Questions With A CLP ............9 LES Member Spotlight ...............10 Patent Act Of 2019 ..................11 Who’s Your Leader? .....................11 LES Chapter Events ..............12-13 YMC Meeting..............................15 Annual Meeting Schedule.....16-17 LES New Members ....................18

Register Now

LES 2019 ANNUAL MEETING 3 | September 2019

Sadly, the USPTO went along with this ride and denied hundreds of thousands

LES Annual Meeting Phoenix.......1

Patent Whisperers, continued from Page 3 of inventions under Section 101 in patent prosecution and in the new administrative trials under the AIA. The coarse filter became a sieve, with numerous babies being thrown out with the bathwater, i.e., many valuable innovations were deemed no different than trivial inventions.

More confusion and uncertainty developed. Along with the patent troll movement created by some tech companies to denigrate anyone suing them, this admixture created a toxic brew against inventorship itself, i.e., all inventors are but trolls that need to be stopped.

David Jones of the High Tech Inventors Alliance thought that the current framework was good, and surprisingly stated that their research showed that high tech innovations in AI were not affected by Section 101 issues. Professor Joshua Sarnoff of DePaul University spoke at length about the unconstitutionality of modifying Section 101 in the manner proposed, and if Section 101 were so modified, this would cause other uncertainty, be violative of human rights, and be immoral.

Even the ACLU got into the patent eligibility action, arguing that gene patents would be the bane of everyone. Others Strangely, the patent eligibility issue, although primarily and initially a software issue, soon …it is the job of the Patent echoed this refrain. Senator Tillis eventually had to cry foul on this “false narrative” and emphatically metathesized into biopharma and many other Office to “weed out” bad patstated that the proposed legislation would not create technologies. This resulted in large numbers of a gene or DNA patenting scenario. patents across the diverse technological spectra ents, not the district courts. to be attacked and deemed invalid for failure to The hearings ended with people such as Robert meet Section 101 alone, e.g., medical therapeutics. A problem in these Deberadine, Chief IP counsel at Johnson & Johnson; Manny Schecter, eligibility invalidations is that other separate sections of the Patent Chief Patent Counsel at IBM; Laurie Self for Qualcomm, and others Act are conflated into the Section 101 consideration, e.g., even the describing the havoc created by the market uncertainty and unpredictU.S. Supreme Court improperly injected notions of novelty and invenability caused by the wayward interpretation of Section 101 today, tive step into the heretofore coarse filter, i.e., the Court improperly and the dire impediments to core research. As Mr. Deberadine said injected a “worthiness” consideration. At the recent hearings, all of the in his testimony, it is the job of the Patent Office to “weed out” bad witnesses agreed that the current state of Section 101 was confused. patents, not the district courts.

The 45 hearing witnesses each spoke on these and related patent issues, particularly with regard to Senators Tillis’ and Coon’s legislative proposal for modifications to Section 101, clarifying the language to avoid the conflation problem and address other issues.

In general, there are two camps of thought. The first is that there has been an unfair carnage of modern innovations, whether software, biotech or other technologies, under Section 101, creating unpredictability in the patent system. This resulted in many companies being unable to stop infringement or obtain funding, with a broader loss of leadership by the U.S. in many technological areas. The second camp’s view is that the current milieu of Section 101 is fine, particularly since it keeps patent trolls at bay.

4 | LES Viewpoints

The first speaker, former Chief Judge Paul Michel of the Federal Circuit, noted the “unending chaos” caused by the Supreme Court and the America Invents Act of 2011 have produced “uncertainty, unpredictability,” and inconsistency in patent law, with “undue and harmful exclusions of new technologies.” Similar views were expressed by former USPTO Directors Dickinson and Kappos, and also by strategic patent advisors, Robert Armitage and Phil Johnson.

The AIPLA, ABA IP Section and IPO added to this theme, and law school educators, Adam Mossoff of George Mason and David Taylor of SMU expressed like concerns. Representing inventors as a whole, Paul Morrinville was quite angry at the state of patent law for the small inventor community. Phil Johnson stressed that the current uncertainty, particularly in the life sciences and therapeutics research, would result in life and death issues because basic research, without the incentives to invest, is now compromised due to the inability to protect or obtain inventions using patents.

On the other side of the issue, i.e., the preservation of the Alice Section 101 status quo, were speakers such as Charles Duan of the R Street Initiative, who led off saying that the patent system has gone too far and, in effect, somehow caused the death of a 10 year-old girl.

Both Tillis and Coons were concerned about the threats to competition to American industries caused by the Section 101 problem, especially with the current worries about international players such as China. Senator Coons expressed his worries about Section 101 thwarting future technologies, many of which are at the cusp of innovation now. Citing the Cleveland Institute’s decision to not patent some innovations since they could not enforce them in this climate, Senator Coons said the law should not interfere in these matters.

The majority of the patent experts favored Section 101 reform, and most of the rest said the current interpretation was inadequate, i.e., almost all of the whisperers indicated a problem. Senator Tillis said that “further refinements” to the proposed legislation would be coming.

Looking at the above situation, I am reminded of the Seventies, the birth of the software industry, and the Supreme Court’s inability to then grasp that movement. Had a cogent software patenting paradigm been developed in the Seventies, handling abstraction, we would not be in this mess now. Instead, despite the decades of increasingly abstract innovations coming down the pipeline, we still fail to acknowledge the enormous benefit of many of these technologies, and the need for a stable platform for their marketing, licensing and selling.

Our Founders gave all Americans, not just corporate Americans, the right to partake in the patent system. They created our patent system not only to incentivize creators, but also benefit all Americans by encouraging innovation and ultimate entry of the advances into the public sphere. Any Section 101 fine-tuning should be with the eye to protect both innovation and innovators in this brave new world of quantum computing, nanotechnology and personalized medicine.

Just as in the Seventies, the Supreme Court is unable to help, and it is up to Congress to fix the Section 101 problem, restoring Section 101 as a coarse filter, not maintaining it as an innovation killer.

Topics about valuation for corporate transactions, IP licensing and sale transactions, and litigation.

200

5 | September 2019

before Sept 15

Sector Highlights at the 2019 Annual Meeting

T

6 | LES Viewpoints

he LES Life Sciences Sector sessions during the 2019 LES Annual Meeting cover the latest trends in areas such as pharmaceutical, biotech, biomedical devices and diagnostics & genomics.

Check Out These Life Sciences Sessions: Licensing in Life Sciences and Information and Communication Technology: More Commonalities Than You Ever Expected This panel will use CRISPR technology as an example of how the both science and technology industries can learn from one another, comparing licensing strategies and practices, and identifying areas of potential cross-pollination.

PD1-PDL1 Immune Checkpoint Inhibitors, from Academic Discovery to Dominant Clinical Target Strategic issues in patenting and licensing basic discoveries will be explored using the clinical development of PD-1 as a specific case study and discussion point.

Challenges with Repurposed Drugs This session will address the challenges that are faced by TTOs and companies when dealing with repurposed drugs and how these can be overcome.

Modern Medicine—Is There Anything Left to Patent?

The panel will review the evolution and current state of the law and suggest strategies to obtain meaningful patent protection for inventions in these rapidly evolving areas of medical technology in the U.S. and abroad.

Take a look at the Life Sciences schedule visit https://lesmeetings.org/agenda/ and Select Life Sciences Sector.

T

he LES High-Tech Sector sessions during the 2019 LES Annual Meeting cover the latest technological trends in many areas from semiconductors, software and automotive to emerging applications in AI and IoT. Check Out These High-Tech Sessions: The Judicious Gumshoe: Performing Due Diligence From the varied perspectives of large pharma in-licensing, small biotech outlicensing, and transactions in high tech, this practical session will reveal experiences and lessons learned on due diligence in IP transactions.

Qualcomm Battles: SEP/FRAND Litigation Landscape The panel will discuss recent developments in the SEP/FRAND arena with a focus on the Qualcomm rulings.

Will Federal Definitions of Emerging Technology Stall Your Next International Licensing Opportunity? How Changing U.S. Export Control Laws May Impact International Licensing The panel of corporate licensing professionals, senior legal counsel for foreign trade matters, and regulators will discuss the laws, recent changes and the likely impact on product sales, tech transfer and licensing.

State of the Sectors: Hot Trends in Technology and IP across Industry Sectors In this session the audience will be invited to actively participate in the creation of a “State of the Sectors Report” that will later be shared with the larger LES and LESI membership.

Take a look at the High-Tech schedule visit https://lesmeetings.org/agenda/ and Select High-Tech Sector.

IUGI—Industry-University-Government Interface: he LES IUGI Sector sessions during the 2019 Annual Meeting discuss the interaction, collaboration, and best-practice sharing between licensing and technology transfer professionals and the greater financial community.

T

Check Out These IUGI Sessions: Rebalancing the IP Economy: Developments in Bulk Patent Cross-Licensing and Markets The panel will explore previously tried bulk licensing models and pros and cons of current and new licensing models.

Exit Strategies: Valuation and Taxation Considerations in M&A Deals This cross-sector panel of corporate buyers, taxation and valuation experts, will explore issues related to taxation and valuation and how they impact the structure, pricing and reporting of M&A deals.

Top 10 Court Decisions of 2019 Affecting Licensing This workshop will identify and discuss the Top 10 court decisions affecting licensing over the past year. Learn how these cases impact the way we draft, and negotiate patent and technology license agreements.

The Not So (Trade) Secret Issues Faced

by Huawei, Quicken, and Uber This panel will address recent trade secret cases, and significant issues and accusations of fraud, along with the U.S. government’s current stance on trade secrets.

Take a look at the IUGI schedule visit https://lesmeetings.org/agenda/ and Select IUGI Sector.

LES High Tech Sector Webinar

By Renee McMullen

IP In IPO: Lessons Learned From Recent Unicorn Public Exits

T

he High Tech Sector recently presented an interesting and informative webinar on Intellectual Property (IP) and its presence, or lack thereof, in the Initial Public Offerings (IPOs) of high-valuation companies known as Unicorns (startup with valuations over $1 billion). Stanford University Lecturer and LES High Tech Sector Chair, Efrat Kasznik, shared data and insights from a study of several Unicorns prior to and following their IPO. There are some lessons and trends that can be drawn from the study and how these Unicorns develop and protect their IP (including their intangible assets and the legal rights protecting them).

The Unicorns studied in 2015 shared a few characteristics. Many of them, 75% of all the studied companies, were from software-related companies. Most of these companies (over 60%) held fewer than 10 assets (i.e. patents or patent applications).

7 | September 2019

One of the aspects of the study Kasznik noted was the difficulty involved with finding the appropriate data to determine the value and assets (intangible or otherwise) of the Unicorns prior to their IPO. As privately-owned companies, little information has to be disclosed about their sources of revenue, assets, or operations. Two types of information help to answer the question of the role IP plays in the valuation of start-ups: financial statements and proxy information. The issue with financial statements is that IP assets generated within the organization are not reported on the financial statements of any company (private or public), only those which are the result of a merger and acquisition (M&A) transaction. This creates an IP financial reporting “gap” according to Kasznik, thereby making it challenging, dare we say nearly impossible, to effectively assess the intangible assets of a Unicorn pre-IPO. Additionally, proxy information also has its barriers to information because the associated metrics may not reveal the entire picture, even with the data available in the public domain. These include legal metrics, or IP rights to the company’s intangible assets, most notably patents and trademarks.

A mapping of three main intangible assets (data, technology, and brand) to the various types of IP rights (patents, trade secrets, copyrights, and trademarks) reveals that the various types of IP require one or more different types of legal protection. It is therefore imperative for anyone doing valuation of a pre-IPO company to review multiple sources to more accurately determine the value of the intangible assets. For example: technology intangibles can be protected by patents, trade secrets or even Copyrights (in the case of software)

Kasznik and her firm, Foresight Valuation Group, studied the low patent counts and developed three potential explanations for the trend. First, it could be that technology is not the main intangible asset and therefore the companies have protection for their data or brand assets. It is also possible that patent protection is not the preferred mode of protection for the companies’ technology assets. Perhaps these companies have opted to leverage trade secrets or copyrights instead of patents due to ease of implementation and/or cost. A final possibility is the age of the companies in question. They are relatively young organizations and therefore the focus has been on acquiring customers and users versus a concentration on patent protection (typical for software companies in the early years).

However, Kasznik noted that the importance of patent protection tends to grow over time. Further study of the same class of Unicorns from 2015 noted that, of the 12 Unicorns who have since gone public, most increased the number of patents owned in the 4 years since the original study, either through organic means (organically filed assets) or through acquisition (inorganic assets).

The data further highlighted that several of the software-company Unicorns who went public since 2015 have purchased patents in the four years since the original study so that their patent portfolio has grown proportionally to the increase in valuation. This group includes companies like Uber, Snap, DropBox and Lyft. This indicates that as companies mature, the importance of patent protection and acquisition grows in importance and priority. However, it was concluded that there seems to be no direct correlation between Unicorn valuations and patent counts. It could be the number of customers, users, and overall following (mostly attributed to the operating metrics of the organization) that most determines the pre-IPO value of a private company, especially one that is software-based.

As more Unicorns continue to make their exits, either through merger & acquisition or IPO, additional data will be available to examine the theories behind low patent counts among start-up software companies (and other industry types), thereby increasing the understanding of valuation for privately-owned firms. What remains to be seen is the true impact of intellectual property on the post-IPO bottom line, and as companies are shoring up their IP portfolios as they approach an IPO event, there’s no question that a stronger IP position is anticipated to have a positive impact on performance and valuation. For a list of recent webinar recordings visit: www.lesusacanada.org/page/WebinarRecordings.

CLP Exam Revised For October 2019 Testing Window

By Cynthia Allen

A

professional certification exam, like the CLP, evolves over time as the profession does. It is considered best practice for professional certification programs, like the CLP, to conduct periodic job analysis studies to ensure the exam content is relevant to the current professional practice.

The job analysis completed in 2018 showed the need to adjust the exam outline to reduce redundancy, better reflect current practice, and improve the overall organization of the content.

The CLP Board carefully reviewed the results of the analysis not only to update the exam content, but to support strategic decisions regarding the current and future needs of professionals working in the areas of licensing, technology transfer, and commercialization.

The revised exam contains five domains, or categories, versus eight domains on the original exam. The changes focus on re-organizing the existing content and weighting of subject importance rather than adding new content.

A new exam form reflecting the changes will launch for the October 2019 window. The bank of questions that make up the exam has been updated and expanded to conform to the revised content outline.

Keep in mind these tips when planning for the CLP exam.

the month on a day and time that works best for them.

• CLP partners with Scantron to offer the exam around the world.

Most major cities have multiple sites to take the exam.

• Candidates have access to a 50-question practice test which is available by request from the CLP website.

For more information on the CLP, visit www.licensingcertification.org.

2019 CLP Exam Content Outline Domain

• The CLP exam is offered during two, month-long windows in April and October. Candidates can take the exam throughout

% on Exam

# of Questions

Domain #1: Opportunity Assessment, Development, and Valuation

24%

36

Domain #2: Intellectual Property Protection

22%

33

Domain #3: Agreement Development and Drafting

23%

35

Domain #4: Negotiation

21%

31

Domain #5: Agreement Management

10%

15

8 | LES Viewpoints

Finnegan proudly supports the 2019 LES Annual Meeting Finnegan advises and assists companies ranging from innovative start-ups to Fortune 500 corporations in procuring, licensing, 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

Certified Licensing Professionals LES: What is your title and role at LES? Eleanor: As the Meetings Director, I work with the volunteer leadership and committees to plan, org

9 | September 2019

LES Member Spotlight

Ian DiBernardo: 25+ Years With LES Ian DiBernardo is Co-Practice Group Leader of Stroock’s Intellectual Property and Technology Department and Co-Head of Stroock’s FinTech practice. He has been named an IP Star by Managing Intellectual Property Magazine, he’s ranked in Chambers USA for Intellectual Property/Patents, and he’s listed in Super Lawyers in each of the specialties of Intellectual Property, Intellectual Property Litigation and Intellectual Property/Outsourcing. Ian is serving as the Chair of the 2019 LES (U.S.A. and Canada) Annual Meeting in Phoenix.

By Linda Corcoran

Q: A:

How were you first introduced to LES?

Ian: I was introduced to LES as a student at Syracuse University College of Law more than 25 years ago.

With the plan of practicing in intellectual property, I was a member of the Law, Technology and Management Program.

Bob Goldscheider, a longtime LES member and licensing pioneer, was an adjunct professor and introduced me to LES. Some of us at Syracuse became student members, and I’ve been a member of LES almost continuously since that time.

Q: A:

Over those 25+ years with LE S, have you had any mentors?

Ian: I’ve been fortunate to have established relationships with peers at LES—many going back more than 15 years. Those LES connections extend beyond my LES committee work and attending LES meetings; they are professional resources and friends.

In a sense, those connections provide mentorship-type benefits in developing my practice and in making my LES membership rewarding.

Q: A:

10 | LES Viewpoints

Has your career always focused on IP?

Ian: Absolutely. I started out at an IP boutique law firm as a patent prosecutor and litigator. Early on, I decided to expand my practice into licensing and transactional matters. At that point, I came to Stroock and began to get much more active in

LES and the business of monetizing IP.

Q: A:

What have you found to be the most rewarding aspect of your career?

Ian: Being asked to chair the 2019 Annual Meeting and to join the LES Board of Directors in October of 2019 is certainly at the top! Of course, there have also been some particularly rewarding work matters over the last 25 years. Those include delivering the closing argument in a top-ten largest IP verdict one year and working with a client to form his company with a $20,000 loan through the sale for tens of millions of dollars—and everything in between.

Q: A:

What additional value has LES added to your career?

Ian: LES has provided me the opportunity to connect with thought leaders in all facets of the intellectual capital economy. It is an invaluable forum to share current thinking on hot topics with my peers. Also, the formal programming is typically excellent, whether taking a deep dive into specific areas of your practice or looking to expand your knowledge outside your area of expertise.

Of course, this year’s Annual Meeting will be no exception! We have a stellar roster of topics and speakers.

Q: A:

Speaking of the 2019 Annual Meeting: what new features can attendees expect?

Ian: The most notable aspect of chairing the 2019 Annual Meeting has been all of the great ideas we’ve

received from the Annual Meeting Committee, as well as the LES membership at large. Based on their input, we are implementing some new features that will provide a forum for attendees to more easily identify their peers and share ideas. For example, we’re introducing a dedicated networking session with topical, guided roundtable discussions.

Q:

In addition to recommending LES, what advice would you give professionals just beginning a career in licensing?

Ian: I was taught that at any point in my career, I should strive to become a business partner to my clients.

That advice has served me well. For professionals just beginning a career in licensing, to become a trusted partner to clients, you need a strong legal and business foundation. With that strong foundation, continuously ask “why” and “how”: Why is the deal structured a certain way?

How will a particular contract provision affect the parties’ relationship?

A:

Q: A:

Can you tell us about your life outside of licensing deals?

Ian: My wife, Amy, and I both grew up in the country—I’m from the Catskills, and she’s from the Berkshires. Although we’ve lived in New York City for decades now, we still take every chance we can to enjoy the outdoors with our 7-year-old son, Jack.

We do a lot of hiking and skiing; and, I enjoy woodworking, which to me is a perfect mix of engineering, creativity and power tools!

Licensing Executives Society Applauds Introduction Of The

STRONGER Patents Act of 2019

T

he Licensing Executives Society (U.S.A. and Canada), Inc. (LES) commends Senator Coons, Representative Stivers and other co-sponsors for reintroducing the bipartisan STRONGER Patents Act of 2019 in the Senate and the House of Representatives. We commend these members of Congress for their leadership, and for their collaborative spirit in securing co-sponsors from both sides of the aisle in both houses of Congress.

If enacted, this legislation will strengthen the U.S. patent system, reduce abuse, and ameliorate many of the unintended consequences that have crept into the U.S. patent system since the passage of the American Invents Act (AIA), and as a result of a series of unfortunate court decisions. With the STRONGER Patents Act of 2019, Congress will re-affirm innovation and intellectual property rights as pillars of the American economy, and will regain its proper role in setting prudent IP policy.

Slate Of Officers And Directors For 2019-2020

A

s Chair of the Nominating Committee, I would like to extend my gratitude to the other participants of the Committee, Bob Held, Gary Fedorochko, Tanya Moore and Michele Gunness 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 Gillian Fenton, who was an advisor to the committee.

After careful deliberations, the Nominating Committee proposes the following slate of candidates for election to the 2019-20 term: President and Chair President-Elect and Chair-Elect Past-President and Past-Chair

Gary Fedorochko Gillian Fenton

Bob Held

The following are new nominations for election to the Board: Ann Cannoni

Lalit Gaur

Evelyn Chen

Karthika Perumal

Ian DiBernardo

Karen Temple

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

Current & Standing Leadership of LES (U.S.A. and Canada) Board of Directors Secretary, Kevin Spivak

Treasurer, Mike Pellegrino

Louise Levien

Eric Victory

Scott Williams Jim Bratton

Annemarie Meike

Lesley Millar-Nicholson

Legal Counsel, Rachel Kreppel 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. Retiring from the Board this year are Annie Gauthier, Matthew McNeill, Paul Roberts and myself.

We gratefully acknowledge their many years of service on the Board, and their invaluable contributions to the Society’s membership engagement, communications and technology. My Board service terminates by operation of the Bylaws with the conclusion of my term as Immediate Past President.

Respectfully submitted, Bill Elkington, Chair, Nominating Committee

11 | September 2019

The American inventor is the embodiment of the pioneering spirit that made the U.S. economy the envy of the world. Our innovative spirit has been fueled by a patent system conferring a valuable property right on inventors - the right to exclude others from exploiting the inventor’s creation. Without that property right, innovation withers, investment declines, and economic activity is diminished.

By increasing the strength and durability of U.S. patents, inventors more actively create, the public enjoys these creations, and new industries flourish. LES is committed to working with Congress and the executive branch on initiatives to further improve the U.S. patent system, including industry self-regulation to build consensus and to promote prudent IP practices (LES Standards Initiative, https://www.lesusacanada.org/page/lesstandards). Over the past several years, the U.S. patent system has lost its place as the perennial world leader in value, reliability, and durability. (https://www.theglobalipcenter.com/u-schamber-releases-2019-international-ip-index/). We need to reserve that trend. The STRONGER Patents Act of 2019 is an important step in that direction.

Who Are Your Leaders?

LES San Diego Event: Cannabis—The Legal Landscape

C

annabis—The Legal Landscape was the title of LES San Diego’s June 4 event held at Knobbe Martens offices. The expert panel discussion touched on Meeting Co-Chairs Tom Cowan, left, and a variety of legal is- Benjamin Anger, right. sues related to state legalization of cannabis, including intellectual property (patents and trademarks), licensing, regulations, criminal laws, and federal/state law conflicts.

With the growth of statewide legalization of marijuana and other cannabis based products around the country, patrons, producers, innovators, and executives alike in cannabis related fields are unsure of the risks and the returns of investments in the cannabis industry.

Chapter Co-Chair Tom Cowan observed, “An interesting aspect is that the U.S. Patent and Trademark Office is generally amenable to patents on cannabis and so-called ‘plant-touching’ inventions, but it remains somewhat unamenable to many plant-touching trademark applications. However, there is still recourse to protect a cannabis business’s intellectual property assets. Specialists in intellectual

property law can help guide clients looking to protect their brand and innovations in this area.”

The panel consisted of Dr. Dale Hunt, Plant Scientist and Patent Attorney, Plant & Planet Law Firm; Jessica McElfresh, Attorney, McElfresh Law, Inc.; and David Branfman, Attorney, Branfman Law Group, P.C.

Co-Chairs Tom Cowan and Benjamin Anger both with Knobbe, Martens, Olson & Bear, LLP organized the event.

Tom Cowan moderates the panel. From left, Jessica McElfresh, David Branfman and Dr. Dale Hunt at the San Diego Chapter event.

LES Philly: Understanding and Negotiating Equity Agreements in Tech Deals—What Do You Need To Know?

W

hat does a founder, executive, or investor need to know about equity related agreements in tech? That was the question answered at the LES Philly Chapter Event on July 23 at Wodify Technologies.

Harry Vartanian, Chapter Chair

12 | LES Viewpoints

Michael Poisel

Marc Singer

Michael Poisel, Director of the Penn Center of Innovation (PCI) Ventures and Marc Singer, Managing Partner of Osage University Partners (OUP), reviewed the terms of stock purchase agreements, investor rights agreements and other common equity agreements in tech deals. Topics also included participating preferred equity, dividends, tag along and drag along rights, etc.

Michael Poisel from PCI addresses the group.

Chapter Chair Harry Vartanian organized the event and said, “Mike and Marc’s presentation was interesting, functioning as a minicourse on equity agreements delivered in just 40 minutes.” The event attracted 25 attendees and was held at the Wodify event space in the heart of new Market East in Philly.

LES Philly leaders from left: Griffin Strader, Robert Leonard, Harry Vartanian, and Herbert Hoffman.

LES Washington D.C. Chapter Event

O

By Raymond Van Dyke, LES Washington D.C. Chapter Chair

n August 6, the Greater Washington, D.C. Chapter of the LES hosted Christina Daves an expert on public relations (PR) and media exposure. Her talk was titled, “How to Get PR Famous in Your Industry.” She spoke on ways to take advantage of publicity and social media opportunities. For anyone interested in better visibility in the marketplace, Christina had ideas that can transform existing ways of doing things. She spoke about numerous case histories showcasing people marketing themselves and their products in the new media. She also gave steps to accomplish this. For example, Christina had an idea to accessorize medical boots, such as the strap-on kind for foot injuries. Through her efforts, Diana Ross used her invention, and through this, she appears on television regularly. Sidley Austin hosted the evening meeting.

Tom Weisman (left), Advisory Counsel to Chapter; Ray Van Dyke, Chapter Chair; Christina Daves, speaker and Steve Holzen.

Christina Daves, an expert on public relations and media exposure speaks at the LES Washington D.C. event.

LES Wisconsin Holds Dual Presentations By Russell Levine

L

Russell Levine with co-chairs, Kevin P. Boggs and Jennifer Souter.

Audience at LES Wisconsin event listens to Russell Levine’s presentation on patent license agreements.

13 | September 2019

ES Wisconsin Chapter welcomed Russell Levine, IP expert and LES Past-President, for an up-to-date presentation and discussion of the top 10 mistakes commonly made in drafting and negotiating patent license agreements. It was held June 20 at the Edgewater Hotel in Madison, Wisconsin over lunch, then again in the evening at the University Club in Milwaukee.

Russell analyzed court decisions, as these reported decisions from actual court cases expose mistakes commonly made when drafting and negotiating patent license agreements. These common mistakes include: using ambiguous language to define key terms, failing to ensure consistency between clauses, and thinking that “boilerplate” provisions have little, if any, substantive consequences. Court decisions also reveal a failure to recognize that different terms have different legal meaning, e.g. assignment vs. change of control, and to understand the different legal implications of mechanisms to alter an existing agreement, e.g. terminating it and entering into a new agreement vs. amending the existing agreement.

LES Education—2019 & 2020 Course Offerings For CLE Credit

A

By Mark Keagle, Director of Education, LES (U.S.A. and Canada) e-mail: mkeagle@les.org, education@les.org s summer is winding down LES is ramping up into high gear. We have many exciting classes being offered this fall, many for CLE credit:

1. If you are new to the world of Intellectual Property and Intellectual Capital Management the LES IP Business & Licensing Basics Course is the perfect place to start. This One-Day course is designed to give attendees the practical knowledge and experience needed through interactive exercises and a case study culminating in a mock negotiation. This course is being offered in both Des Moines and Houston in September, and in Phoenix in October.

For those who have been in the field for some time but are looking to hone their skills, LES is offering several courses to meet your needs.

2. In October, LES is offering our two-day Negotiation Skills Course.

This course is geared for anyone who is involved in the negotiation process, and not just attorneys drafting contracts. You will go in-depth into the strategies and philosophies behind successful negotiations that include a comprehensive six hour case study and mock negotiation.

3. For those whose primary focus is not negotiations of licenses, the LES two-day Business Development for Life Sciences Course is another great option. Learn from our subject matter experts as you engage in meaningful discussions on current legal issues, the relationship between universities and the business community, and well as the ethical standards and considerations involved.

4. Also in October is the LES one-day IP Valuation Course. Attendees will learn three primary IP valuation approaches, how and when

they may be applied to IP valuations in different contexts. Other skills include: how to identify key steps and considerations in implementing a cost, market and income approach valuation; know how to assess risk and incorporate risk adjustments into an IP valuation; using an IP valuation to develop negotiating strategies and deal terms; and how deal terms can be used to manage risk.

5. The CLP Exam Review is the right choice for anyone who is an experienced IP professional who is looking to demonstrate that knowledge and expertise by sitting for the CLP Exam. This intense one-day course covers the modules tested in the CLP Exam as well as addressing may of the major concerns and sticking points. With over 90% of course attendees passing the CLP Exam, this course is just what you need as you are preparing for the exam. We are offering this course in Washington, D.C. in September and Phoenix in October.

And 2020 will provide even more opportunities. LES will be in Atlanta, San Diego, Detroit, Milwaukee, and Philadelphia just to name a few. Go to the Education Calendar at https://www.lesusacanada.org/page/education.

In addition, LES offers on-site custom courses to specifically meet your business’ needs.

If you have any questions regarding Education, please contact me at any time. You can e-mail me or we can schedule a call to discuss your specific questions and concerns. If there is a course you are interested in, but don’t see it listed you can contact me as well. Whatever it may be I am always here to help, listen, and answer any questions.

We look forward to seeing you at a future LES Event.

Mark Your Calendars

September 12, 2019

October 19-20, 2019

Location: McKee Voorhees & Sease— Des Moines, Iowa

Location: Phoenix, AZ

September 13, 2019

Location: Phoenix, AZ

LES Iowa Chapter: IP Business Basics Course

IP & Licensing Basics: A One-day Review Location: University of Houston Law Center— Houston, Texas

September 18, 2019 14 | LES Viewpoints

CLP Exam Review Course Location: Dinsmore— Washington, D.C.

Pre & Post LES Annual Meeting in Phoenix, AZ: Negotiation Skills

IP Business Development for Life Sciences IP Business Basics 101 Location: Phoenix, AZ

IP Valuation

Location: Phoenix, AZ

October 24, 2019 CLP Exam Review Location: Phoenix, AZ

Up-to-date information can be found on the Licensing Executives Society website: www.lesusacanada.org/page/education.

LES Young Members Congress

The 5th Pan-American LES YMC Event

By Stacey Dunn

T

he 5th Pan-American LES YMC (Young Members Congress) Event, held in Montreal, Quebec on July 12, 2019, was a great success, displaying both strong content and networking opportunities. More than 100 licensing professionals from eight different countries attended, 33% of which were in-house counsel. The President of LES (U.S.A. and Canada), Bob Held, and the President of LES International, Fiona Nicolson, both attended the event, as well as several Board Members of LES (U.S.A. and Canada).

The event included panels on Data Licensing for AI and ML, Medtech Industry: Revolutionizing the Health Ecosystem—a Pan-American Perspective, and Licensing in the Entertainment Industry. The event’s content ended on a lighter note with a licensing workshop on cannabis related IP. Attendees also had several opportunities to network in more relaxed settings, including an informal get-together the night before the event, an in-house counsel breakfast (exclusive for in-house counsel), lunch on a rooftop terrace, dinner on an evening boat cruise, and a casual get-together in a trendy nightclub near the old port in Montreal.

Vincent Bergeron welcomes attendees to the 5th Pan-American LES YMC Event in Montreal.

LES YMC Event group photo in Montreal.

AI and ML Data Licensing Panel.

Acrobat entertainment on dinner cruise.

Annie Gauthier moderates panel.

Roundtable discussion.

Past LESI YMC Chairs.

Roundtable discussion.

15 | September 2019

Evening dinner cruise.

ANNUAL MEETING

Connecting and Inspiring the Intellectual Capital Community

The Premier IP & Licensing Event | OCT. 20–23 | Phoenix, AZ JW Marriott Phoenix Desert Ridge Resort & Spa | #LESAM2019 | lesmeetings.org/am19

SCHEDULE AT-A-GLANCE (Session times and locations subject to change)

MONDAY, OCTOBER 21 7:15am – 8:30am Women in Licensing Breakfast 8:45am – 10:00am Keynote Speaker: Asst. Attorney General Makan Delrahim Discussion of how innovation, legislation, and competition play a role in business, foreign commerce and the current efforts of the Department of Justice Antitrust Division.

10:30am – 11:45am—Spotlight Plenary Therapeutics Reimbursement– The Final Step Panelists: Elizabeth Halpern, Hogan Lovells Michael Perham, Director, Innovations and External Relations, HHMI/Janelia Research Campus

16 | LES Viewpoints

10:30am – 11:45am —Spotlight Plenary Exit Strategies: Valuation and Taxation Considerations in M&A Deals Moderator: Nick Baciu, Director, Ocean Tomo Panelists: Oren Ben Dor, Director, Global Tax Planning and M&A, Microsoft Efrat Kasznik, President, Foresight Valuation Group

10:30am – 11:45am —Spotlight Plenary Will Federal Definitions of Emerging Technology Stall Your Next International Licensing Opportunity?

How Changing U.S. Export Control Laws May Impact International Moderator: Amir Ghavi, Vice Chair, LES High Tech Sector, Autos and Aerospace Panelists: Ivan W. Bilaniuk, Partner, Dinsmore and Shohl, LLP John Carney, MBA, CLP, Managing Director, China IP Exchange, LLC Michael Gershberg, Partner, Fried, Frank, Harris, Shriver and Jacobson, LLP Theresa Olson, Assistant General Counsel, Infineon 2:00pm – 3:15pm—Workshop High Tech Sector Deals of Distinction Winner Panel

4:00pm – 5:15pm—Workshop Rebalancing the IP Economy: Developments in Bulk Patent Cross-Licensing and Markets 4:00pm – 5:15pm—Workshop IP Landscape and Licensing in China 4:00pm – 5:15pm—Workshop The Not So (Trade) Secret Issue Faced by Huaewi, Quicken, and Uber 4:00pm – 5:15pm—Workshop PD1-PDL1 Immune Checkpoint Inhibitors, from Academic Discovery to Dominant Clinical Target 4:00pm – 5:15pm—Workshop Qualcomm Battles: SEP/FRAND Litigation Landscape

2:00pm – 3:15pm—Workshop “Deal Breaker” Provisions: Navigating and Resolving the Most Critical Issues in a Negotiation 2:00pm – 3:15pm—Workshop Why LES Standards is the Most Important Thing Going on in IP –Part I

CONTINUED

➨

ANNUAL MEETING TUESDAY, OCTOBER 22 10:30am – 11:45am—Spotlight Plenary Anatomy of Failure - Lessons Learned from Licensing Startups Moderator: Gary Naumann, Hahnco Professor of Entrepreneurship, Arizona State University David Powsner Partner, Nutter, McClennen & Fish, LLP Panelists: James Goulka, Chairman and Managing Director, Wetzel’s Pretzels Steve Leibsohn, MBA, CLP, Managing Director, China IP Exchange, LLC Michael Gershberg, Managing Member, Wetzel’s Pretzel Craig Weiss, Co-Founder and CEO, Retainer Club 10:30am – 11:45am—Spotlight Plenary State of the Sectors: Hot Trends in Technology and IP Moderator: Michael Fluhler, Fishman Stewart PLLC Panelists: Lalit Gaur, Global Head, Business Development & Licensing, Vetoquinol USA Dana Matzen, Ph.D.,Vice President, Business and Corporate Development, IntelGenx Sanjay Prasad, Principal, Prasad IP, PC 10:30am – 11:45am —Spotlight Plenary

2:00pm – 3:15pm—Workshop Partnership Intermediary Agreements: What are They, and How Can They Help with Innovation and Tech Transfer 2:00pm – 3:15pm—Workshop Best Practices in IP Operations 4:00pm – 5:15pm—Workshop Challenges with Repurposed Drugs 4:00pm – 5:15pm—Workshop How to Resolve Licensing Disputes Efficiently and Economically: Drafting Effective ADR Clauses and Preparing for Mediation and Arbitration 4:00pm – 5:15pm—Workshop LES Standards: Why it is Important that you Get Involved 5:30pm – 6:45pm—Fireside Chat Plenary Patent Trial and Appeal Board This unique panel will have a frank dialogue on what the PTAB is doing correctly, where it needs to improve, and possible solutions to systemic issues.

Moderator: Rob Sterne, Founding Director, Sterne, Kessler, Goldstein & Fox, P.L.L.C. Speakers: Judge Paul Michel, Chief Judge (Retired) Chief APJ Scott R. Boalick, PTAB, US Patent and Trade Office

Top 10 Court Decisions of 2019 Affecting Licensing

WEDNESDAY, OCTOBER 23

Speaker: Russell Levine, P.C., Partner, Kirkland and Ellis LLP

9:00am – 10:00am Closing Keynote Speaker: Vinton Cerf on Patents, Open Source, Copyrights and Public Domain

12:00am – 1:45am Luncheon with Keynote Speaker Shaloo Garg, Managing Director, Microsoft for Startups 2:00pm – 3:15pm—Workshop How Recent Damages Decisions and Trends are Influencing Licensing Negotiations Best Practices When Licensing to Startups



REGISTER before September 15, 2019 and save $200 on your Annual Meeting registration ticket. lesmeetings.org/am19/registration

Licensing in Life Sciences and Information and Communication Technology: More Commonalities Than You Ever Expected Moderator: Matteo Sabattini, Director, IP Policy, Ericsson Panelists: Mihaela Bojin, Senior Licensing Associate, University of Iowa Research Foundation Eeva Hakoranta, Senior VP, Head of Intellectual Property, Nokia Nate Kurtis, Director, Strategic Transactions, Broad Institute Adam Mosoff, Professor of Law, George Mason University, Antonin Scalia Law School 10:30am – 11:45am—Spotlight Plenary The Judicious Gumshoe: Performing Due Diligence Moderator: Gwilym Attwell, Patent Attorney, Fish and Richardson Panelists: Satoshi Matsuo, General Manager, IP Business Platform Department, IP Division, Hitachi Barbara McClung, Chief Legal Counsel, Caribou Biosciences Inc. Amy E Wilson, PhD, JD, Sr. Corporate Attorney IP, Legal, Astellas US LLC 2:00pm – 3:15pm—Workshop Modern Medicine–Is There Anything Left to Patent?

2:00pm – 3:15pm—Workshop Experts’ Panel on Patent Licensing/ Monetization: 2019 Update on Cutting Edge Developments 4:00pm – 5:15pm—Workshop So I Just Warranted Validity?!

Mandatory Terms, Forbidden Terms and Other Interferences with Freedom of Contract in Rest of World Jurisdictions 4:00pm – 5:15pm—Workshop Navigating the Various Complexities of a Globally Connect World for Effective Deal Making 4:00pm – 5:15pm—Workshop Leveling the Playing Field in Your Favor: Using Patent Analysis in Licensing

LES | 11130 Sunrise Valley Drive, Suite 350 | Reston, VA 20191 | www.lesusacanada.org | +1 (781) 876-6261

17 | September 2019

2:00pm – 3:15pm_Workshop

Known as the “Father of the Internet,” he will discuss the importance of harnessing intellectual property to change the landscape of communications and information technology.

10:30am – 11:45am—Spotlight Plenary

LES New Members Carlos Baez-Pagan

Technology Manager Puerto Rico Science Technology and Research Trust

Amy Bonacquisti Principal Attorney BAE Systems

Gerald Caseley

Manager, Business and Legal Affairs Circle Cardiovascular Imaging

Frieda Chan

Technology Manager Fred Hutch

Eugene Cochran

Sr. Comm. Mgr. Oak Ridge National Laboratory

John Cravero

CTO EGLA CORP

Philip Hirsch

Managing Director Cervus Group & Fund

Edny Inui

Director of Business Development Caribou Biosciences

Rosalie Jette

Student University of Montreal

Clara JimenezAttorney

Finnegan Henderson Farabow Garrett & Dunner LLP

George Jonas

Managing Counsel BP America Inc.

Of Counsel Hahn Loeser & Parks LLP

Jeffrey Jones

Oren Dearson

Muhammad Khan

Partner Dearson, Levi & Pantz, PLLC

Michael Faltas

Princpal One Health Advisors Of Counsel United Trademark & Patent Services

Joohee Kim

Regional Director Techinsights

Associate Director of Licensing University of Michigan

Michael Floyd

Nam Kim

CEO BioAIM

Bill Foust

Chairman Score

Daniel Getty

Principal Getty Strategic Consulting LLC

Jean Gilbert

The University of Texas MD Anderson Cancer Center

Yuval Gilis

Sr. Dir, Business Development Ipsen

Tayla Giuffrida

Marketing Coordinator Virtual, Inc

Scott Haiges

CEO Digital Harmonic

Samantha Harding 18 | LES Viewpoints

Edwin Hernandez

IP Analyst City of Calgary

Jonathan Harris Partner Axinn, Veltrop & Harkrider LLP

CEO ACT inc.

Michelle Kim-Danely Consultant

Raja Krishnan

Commercialization Manager University of Kentucky

Susanna Kuuttila

Student University of New Mexico

Oliver Laing

Partner and IP Solicitor Potter Clarkson LLP

Gregory Lantier

Partner Wilmer Cutler Pickering Hale and Dorr LLP

Denise Leong

Student Boston University

Herbert Ley

Patent Agent ARUP Laboratories

Christopher Limbacher

Associate Attorney Womble Bond Dickinson (US) LLP

Eric Liu

Associate PharmaVentures

John Lynch

Sr. Analyst—Transfer Pricing Olympus Corporation of the Americas

Mark Selwyn

Partner WilmerHale LLP

Todd Sigler

Principal Green Hasson Janks

Amanda Major

Partner WilmerHale LLP

Buffy Stahl

Global Business Development Leader DuPont Nutrition and Biosciences

Mitsuaki Matsumura Head of IP Licensing for the Asia Pacific IBM Corporation

Timothy Syrett Partner WilmerHale

Jack McLaughlin

Student University of Ottawa

Emmanuelle Vallee

Laure Nucci

Sr. Director Alliance Management IPSEN

VP, Legal Affairs Xenon Pharmaceuticals Inc.

Ony Okoro Attorney Apex Legal

Intellectual Property Coordinator FPInnovations

Joseph Parish

Agent Sterne, Kessler, Goldstein & Fox P.L.L.C.

Ken Walz

Ankit Patel

Nicholas Webb

Megan Paterson

Shona Whyte

Sophie Voyer

Partner Popper and Company LLC Chief Innovation Officer Western Univ. of Health Sciences

Underwriting Counsel-IP Ambridge Partners LLC Associate Baker McKenzie LLP

Smruti Patil

Licensing Associate UWM Research Foundation

Matt Peters

Finance Mallinckrodt Pharmaceuticals

Ken Polasko

Executive VP Skysong Innovations

Mark Radha

Chief Brand Economist Strata Insights

Sam Renwick

Managing Principal RNA Advisors, LLC

Troy Rice

President Troy Rice Consulting Inc.

Technology & IP Analyst Centre for Drug Research and Development

Mandy Willis

Partner Fay Sharpe LLP

Zach Wiltshire COO Hyasynth Bio

John Zanghi

Partner Fay Sharpe LLP

Yi Zhang

Senior IP Associate Illinois Institute of Technology

Justin Zhou

Director-Licensing General Electric Company

LES Member on the Move Katharine Ku retired from Stanford University as Executive Director, Technology Licensing, and joined Wilson Sonsini Goodrich & Rosati as Chief Licensing Advisor.