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

Vol. XXVII No. 4

December 2019

Drive Your Professional Development By Engaging In LES Gary Fedorochko gave the following acceptance speech at the Annual Meeting in Phoenix on October 21, 2019 By Gary Fedorochko, President & Chair of the Board, LES (U.S.A. and Canada)


am honored and look for wa rd to lead i ng LES in the coming year. I would like to offer a special note of thanks to my family including my wife Mary and our three teenage children, all of whom were unable to atGary Fedorochko tend this year’s meeting due to other commitments. I would also like to thank my colleagues at Banner Witcoff. Both my family and Banner Witcoff have supported me throughout my LES journey. I also want to acknowledge several folks who have offered me strong support and mentorship over the years. Firstly, I would like to thank my colleague Joe Potenza from Banner Witcoff who I am pleased has joined us today. Among his many accomplishments, Joe is a past chair of the ABA-IP section and member of the ABA House of Delegates. Joe through his own professional journey and words of wisdom has provided strong encouragement and support of my involvement with LES. Within LES, I have received strong support, opportunities and encouragement over the years from many people, most notably, Lou Berneman, Mark Peterson, François Painchaud, Tom Filarski, Brian O’Shaughnessy and others with whom I have served with on committees and on the Board. Thank you all.

LES thrives when experienced members mentor young members. Early on in my LES career, I wanted to develop my network and expand my engagement beyond merely attending meetings. Breaking into LES was more difficult at that time, there was no Young Members Congress. However, through the mentorship and encouragement of Lou Berneman, who I had befriended at my very first LES meeting, I joined the LES 2004 Boston Annual Meeting Committee. I really enjoyed that experience and was able to meet and work with

them and others, including François Painchaud. In the next few years, I worked on other meeting committees and served as a roundtable moderator during some workshop sessions. When François became LES President, due to my friendship with him and my beneficial experience working on past meeting committees, I decided to serve on the 2009 San Francisco Annual Meeting Committee as Co-Arrangements Chair. I worked closely with and befriended Meeting Chair Tom Filarski. In 2012, Tom became LES President and asked me to serve as a Co-Chair for the 2012 Toronto Annual Meeting, which I graciously accepted. Later that year, I was invited to join the Board of Directors by the Nominating Committee, of which Tom was a member. While on the Board, I have had the honor of serving alongside a truly outstanding group of hardworking, dedicated volunteers committed to the betterment of LES, many of whom have become my friends. Because of my dedication and service to LES, I was offered the opportunity to become Presidentelect and Chair-elect. Reflecting on my LES journey, I can honestly say I have learned a great deal about the business of licensing and developed a strong professional network, all while enjoying the ride and making lifelong friends. From my perspective, that’s what a first-class professional organization is about.

In sum, the most value out of LES comes from engaging in LES activities and building a network. There are many opportunities for engagement. I encourage you take control of your LES experience and drive your professional development by engaging in the LES community and shaping the future of LES and the business of IP. If there is anything the Board can do to enhance your experience or assist you in getting involved, please let us know. We strive to make LES better for all of us. I am keenly aware that most of you are eager to hear about this year’s Deals of Distinction win-

ners and have heard enough from me. To avoid the specter of receiving the dreaded cut off sign, I will keep my further remarks brief. During our Board of Directors strategy meeting in July, which I led in my role as Presidentelect and Chair-elect, the Board refreshed the LES strategic plan and developed short-term goals and a 2019-2020 operational plan. I would like to share the four tenets of the current core LES vision that the Board has defined: 1) Foster a collegial professional network across a variety of roles, industries and transactional perspectives; 2) Provide a wide array of professionals with opportunities to grow their skill sets related to IP-driven transactions; 3) Be the premier thought leaders for advancing the IP and licensing community and; 4) Educate members to serve enterprises by better protecting and generating value from intellectual assets. Organizationally, LES needs to continue to provide our members with value by continuing to assess and enhance our value proposition. Under the leadership of Bob Held, LES focused on building out the value proposition. During the coming year, we will continue to execute on this goal via the strategic plan refresh and implementation of the operational plan. Thank you!

Incoming President Gary Fedorochko accepts gavel from Past-President Bob Held.


2019 LES Annual Meeting What did you miss in Phoenix? Pages 2-6

Deals Of Distinction Powerhouse deals recognized. Pages 5

Eleven Local Chapters Featured Chapter leaders connect members. Pages 14-19

LES Meeting Photos Evenings under the stars. Page 12-13

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

DIRECTORS Jim Bratton Ann Cannoni Evelyn Chen Ian DiBernardo Lalit Gaur Louise Levien Annemarie Meike Leslie Millar-Nicholson Karthika Perumal Karen Temple Eric Victory Scott Williams Counsel: Rachel Kreppel Membership inquiries and contact changes should be sent to:


2019 Phoenix Meeting Recap

nowledge and community collided to inspire more than 500 attendees at the 2019 LES Annual Meeting in Phoenix. The Times They Are a’Changin’: The Nine No-No’s in 2019 was the opening plenary featuring Makan Delrahim, Assistant Attorney General, U.S. Antitrust Division. More on Page 4. Work-Life Balance; Misconception or Revolution? was brought to us by the Women In Licensing Committee. Attendees learned what work-life balance means for women leaders in different sectors along with tips on overcoming challenges. The PTAB Fireside Chat with Chief Judge Michel and Chief APJ Scott R. Boalick was moderated by Robert Greene Sterne. They discussed The Patent Trial Appeal Board (PTAB) and its fundamental impact on U.S. patents. More on Page 6. New this year were Roundtable Sessions, dedicated networking time with a variety of structured and informal options. More than 20 roundtable topics were discussed, ranging from 5G to CRISPR to Hemp. They sparked engaged and lively debate. Photos on Pages 12-13. Spotlight plenaries targeted to different tracks took a deep dive into various business trends. Anatomy of Failure–Lessons Learned in Licensing Startups observed that “failure” has a negative connotation, but it is typically a necessary stepping stone to success. Thomas Edison is said to have remarked, “I have not failed. I’ve just found 10,000 ways that won’t work.” Russell Levine’s Top 10 Court Decisions of 2019 Affecting Licensing had its usual standing-room-only crowd. Attendees learned how these cases impact the way we draft and negotiate patent and technology license agreements. The Deals of Distinction Awards highlighted four teams that worked together to make our world a better place. Read more about these fascinating deals on Page 5. Educational add-on courses also offered CLE credit to many attendees. Nineteen workshops led by dozens of experts provided learning in a small-group format. Western-themed networking events kicked off with the Welcome Reception held under the stars on the lawn where old friends reconnected and welcomed new attendees. Monday evening took us to the LES Desert Delights Reception featuring a flamenco dancer and acoustic guitar. Tuesday evening brought us outdoors to the Sector Beach Party and Margarita Competition. LES is famous for these fun and lively events that allow attendees to grow their network through shared experiences.

2019 Annual Meeting

Check out meeting photos on the LES website:

Editorial inquiries and contributions should be addressed to: Editor Carla J. Blackman 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 Views expressed in articles are solely those of the respective authors.

Thanks To The 2019 Annual Meeting Team!


Ian DiBernardo, Chair, David Powsner, Arpi Siyahian, Dana Matzen, Efrat Kasznik, Adrian Cyhan, Michele Gunness, Anne Cannoni, Michael Perham, Sanjay Prasad, Justin Muehlmeyer Alex Markov, Stephen Kabakoff, Merri Moken and many more, including Eleanor Nelson and the LES staff.

Copyright ©2019 Licensing Executives Society (U.S.A. and Canada), Inc.

Licensing Executives Society Announces Distinguished Board of Directors for 2019-2020 Term LES Board 2019— Front row left: Bob Held, Gary Fedorochko, Gillian Fenton, Kevin Spivak; Middle row left: Rachel Kreppel, Karen Temple, Evelyn Chen, Ann Cannoni; Back row left: Eric Victory, Karthika Perumal, Ian DiBernardo, Lalit Gaur, and Scott Williams. Not pictured: Jim Bratton, Louise Levien, Annemarie Meike and Lesley Millar-Nicholson.


Table of


President’s Message.....................1 LES Annual Meeting Recap..........2 LES Board of Directors ................3 Jeff Whittle Mentoring Award......3 The Nine No-No’s Plenary.............4 Deals of Distinction ......................5 Fireside Chat with PTAB .............6 Leading Edge Series......................7 LES Education Wrap-Up ..............8

LES Names Jeffrey S. Whittle Recipient Of 2019 Frank Barnes Mentor Award For His Outstanding Work as Mentor in the Field of Licensing, Whittle Was Honored During Society’s Annual Meeting Award Ceremony, October 22, in Phoenix


ES selected IP attorney Jeffrey S. Whittle, LES Past-President and a former member of the LES Board of Directors, as the recipient of the 2019 LES Frank Barnes Mentor Award. Whittle is the managing partner of Womble Bond Dickinson’s Houston office and a co-lead of the law firm’s Energy Sector team. His longtime mentorship activities in the field of licensing have qualified him for one of the highest honors that LES can give to a member of the licensing community. He joins a long and distinguished line of winners who, like Frank Barnes himself, advanced the LES mission by generously sharing their time and talents to support their colleagues.

LES Education Calendar 2020.....9 LES New Members.....................10 CLP Update + Questions............11 LES Annual Meeting Photos...12-13 LES Silicon Valley Chapter..........14 LES New Jersey Chapter............14 LES San Diego Chapter...............15 LES San Francisco Chapter........15

Don Drinkwater, LES Foundation President (right), presented Jeff Whittle with the 2019 Frank Barnes Mentor Award.

“This year by wide acclaim, the award selection committee is pleased to present Jeffrey with the 2019 LES Frank Barnes Mentor Award. Jeffrey is a natural mentor and has devoted his entire career to inspiring and encouraging further innovation in the licensing sector. Additionally, Jeffrey has always been a trusted advisor and mentor for our community,” said Don Drinkwater, Chair of the Frank Barnes Award Committee, former LES Board of Directors member and past-president of the LES Foundation. “In addition to embodying many of Frank Barnes’s estimable mentor qualities, his service to LES has been truly admirable. Congratulations to Jeffrey from the whole organization.”

LES Orange County Chapter......16 LES Iowa Chapter........................17 LES Montreal Chapter................18 LES Seattle Chapter...................19 LES Toronto Chapter..................19 LES Quebec City Chapter..........19

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Whittle is a Past-President and Chair of LES (2015-2016), and he served on the LES Board for over seven years. He is currently Co-Chair of the Americas Committee for LES International. He was named 2018 Global IP Attorney of the Year by Legal Era and received the 2015 Distinguished Service Award from the University of Houston Law Center. A Certified Licensing Professional, he is a frequent and highly sought-after speaker and author, nationally and internationally, on various intellectual property, licensing, and technology topics.

LES Washington D.C. Chapter....16

Evolution Of Innovation, IP Licensing, And Antitrust Law 2019 Annual Meeting


By Meredith Holmes One of the highlights of the 2019 LES Annual Meeting was the address by keynote speaker, Makan Delrahim, Assistant Attorney General at the U.S. Antitrust Division, Department of Justice. In his talk, “The Times They Are a’Changin’: the Nine No-No’s in 2019,” Delrahim discussed the latest developments in legal thinking about innovation and regulation.

he “Nine No-No’s” refers to a list of patent licensing clauses developed in the 1970s by Bruce Wilson, then-Deputy Attorney General at the Department of Justice. These practices were considered per se illegal, but as technological innovation burgeoned, regulation relaxed, and most of these practices are no longer automatically prohibited. Makan Delrahim discussed the shifting landscape of licensing and antitrust law. Charles Macedo, partner at Amster, Rothstein & Ebenstein, LLP, the New York intellectual property law firm that sponsored Delrahim’s speech, took the podium to outline the speaker’s career. Delrahim was confirmed on September 27, 2017. His antitrust experience is broad, covering a full range of industries, issues, and institutions. He served as Deputy Assistant to the President and Deputy White House counsel. He was a partner in the Los Angeles office of a national law firm, and served the antitrust division from 2003 to 2005 as a Deputy Assistant Attorney general. From 2004 to 2007, he was a Commissioner on the Antitrust Modernization Commission. Ron Laurie, with LES and InventionShare, introduced Delrahim, noting that he is the first patent attorney to head up the Antitrust Division, and that his attempts to “harmonize” the patent law/antitrust law interface are a “breath of fresh air.”

Delrahim began by quoting from Chief Justice Sandra Day O’Connor’s memoir about growing up on a cattle ranch. She remembered her parents clinching a sale with just a handshake, but years later, requiring a written contract and a down payment. This is a perfect example, Delrahim said, of how IP law and antitrust law have shifted in response to changes in technology, culture, and policy.

He focused on five licensing practices, saying, “These particular socalled No-No’s shed light not only on how antitrust thinking has evolved over the last two decades, but also reveal that more work can be done to secure healthy, dynamic competition.” He discussed: • A licensor’s restrictions on a licensee’s freedom to deal in products or services outside the scope of the patent; • Payment of royalties beyond the scope of the patent; • Resale price maintenance; • Tying;

4 | LES Viewpoints

• Mandatory package licensing.

The scope of the patent The justification for restricting the licensee’s ability to deal in products outside the scope of the patent, Delrahim said, is similar to the argument used when a standard-setting organization wants to use a patented technology to achieve interoperability. Some are concerned that this practice unduly increases the market power of the patent holder, but Delrahim asserted that these concerns are “overstated.” He is guided by his “New Madison” approach to antitrust law, which seeks to ensure patent holders have incentives to innovate, but refrains from intervening to limit the market power of any enterprise. Minimum and maximum; vertical and horizontal Tackling the No-No regarding resale price maintenance (RPM), Delrahim pointed out that in 1968, the U.S. Supreme Court ruled that maximum vertical price fixing was per se illegal. But 30 years later, the Court overturned that decision, saying that such arrangements should be evaluated under the rule of reason. Similarly, minimum RPM, which since 1911 had been considered per se illegal, was overturned in 2007. This decision is so recent, Delrahim said, that its effects on IP licensing are unknown. He concluded, “…the Division will apply a rule of reason analysis, weighing the competitive harms and benefits of each situation.” Tying still tied up Tying—requiring the purchase of unpatented materials as a condition of a patent license—was considered per se illegal, if the patent owner has some market power over the tying product. Simply owning a patent conferred market power. Although court decisions on tying cases vary, there is some movement toward considering the competitive benefits of the practice. In 2006, the U.S. Supreme Court ruled that in all cases involving tying, “the plaintiff must prove that the defendant has market power in the tying product.” Delrahim discussed the 2001 case involving the tie between the Microsoft Operating System and Microsoft’s Internet Explorer, and how the Antitrust Division has dealt with tying in the rapidly changing movie industry.

Delrahim concluded, “Although many of us continue to hold strong views on precisely how the two regimes—IP and antitrust law—ought to complement each other, I am grateful the conversation is now at least more nuanced than the simple No-No the division gave decades ago.”

Makan Delrahim opens the meeting with his plenary talk, while LES leaders listen and discuss points with him afterwards.

LES Honors 15th Annual Deals of Distinction™ Award Winners Business deals in fusion power, patent pool transactions, pediatric disease and RNAi therapies recognized in Phoenix, Arizona


ES announced the recipients of its Deals of Distinction™ Awards in four industry sectors. The annual program, now in its fifteenth year, recognizes the LES member companies that orchestrate the year’s most outstanding licensing and business deals in each sector. The awards were presented during the LES Annual Meeting Award Luncheon, October 21, 2019, at the Phoenix JW Marriott Desert Ridge Resort & Spa. Several key dealmakers were on hand to provide insights on their winning deals.

“Through well-organized commercialization of intellectual property, we can drive growth across all business sectors in our global economy, from traditional business products to emerging product technologies. The 2019 award winners demonstrate exciting and impactful innovations within the licensing industry, and we are pleased to recognize their success,” said Bob Held, LES Past-President and Chair. “At our Annual Meeting in Phoenix, we celebrated these deals in a variety of ways, as well as hearing from our members and the dealmakers themselves, about the key aspects of those deals. Our thanks go to the Awards Committee for highlighting the continued achievements of LES members.” This year’s Deals of Distinction™ Award recipients included:

• Chemicals, Energy, Environment & Materials Sector (CEEM): Massachusetts Institute of Technology and Commonwealth Fusion Systems—MIT and Commonwealth Fusion Systems launched a novel approach to fusion power.

• High Technology Sector: Sisvel International S.A. and RPX Corporation—“Aggregator meets Aggregator:” Sisvel and RPX ink major Wi-Fi standard essential patent (SEP) licensing deal that streamlines the number of transactions in a Patent Pool. • Industry-University-Government Interface Sector (IUGI): Oregon Health & Science University and the University of Pittsburgh; Ultragenyx Pharmaceutical Inc.—highlighting the capabilities and talents of academia and industry in advancing a drug for a rare pediatric disease.

• Life Sciences Sector: Dicerna Pharmaceuticals and Eli Lilly and Company—Global licensing and research collaboration focused on the discovery, development and commercialization of RNAi therapies in cardio-metabolic disease, neurodegeneration and pain.

See photos from the event at Previous honorees and their award-winning deals are listed at

High Tech: From left: Mattia Fogliacco, Sisvel International SA; Ryan Elliott, RPX Corp.; Dan McCurdy, RPX Corp.; Michael Fluhler presented the award (not pictured).

CEEM: From left: Robert Jung, Sion Power Corp. and LES; Jim Freedman, MIT; Bob Mumgaard, Commonwealth Fusion Systems; and Tim Kinn, ExxonMobile and LES.

Life Sciences: From left: Lalit Gaur, Vetoquinol USA & LES; Gayatri Varma, AstraZeneca & LES; Yves McMullen, Eli Lilly; Travis Coy, Eli Lilly; Jim Weissman, Dicerna Pharmaceuticals; Karthika Perumal, Wobble Bond Dickinson & LES; and Dana Matzen, IntelGenx & LES.

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IUGI: From left: Adrian Cyhan, Dinsmore and LES; Michele Gunness, Oregon Health & Science Univ.; Univ. of Pittsburgh, and Ultragenyx Pharmaceuticals, Inc. (not pictured).

A Fireside Chat: 2019 Annual Meeting


Trials And Triumphs Of The Patent Trial Appeal Board (PTAB) By Renee McMullen

he LES Annual Meeting is known for bringing together leading experts in the realm of intellectual capital management. From engaging panel discussions, to informative workshops and legislative briefings, the 2019 Annual Meeting was no exception. The October 22 session brought together well-respected Chief Judges to discuss the Patent Trial Appeal Board (PTAB), its impact on the U.S. Patent system, as well as current developments and challenges Board members and those in the industry face in order to help the economy grow. Moderated by Robert Greene Sterne, Founding Director of Sterne, Kessler, Goldstein & Fox, PLLC, both Chief Judge Scott Boalick from the PTAB/U.S. Patent and Trademark Office and retired Chief Justice Paul Michel, formerly of the U.S. Court of Appeals for the Federal Circuit, offered their insight and opinions on several topics pertinent to both the PTAB specifically, as well as the U.S. patent system in general.

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The conversation began with Chief Judge Boalick providing updates on the significant developments that have occurred in the PTAB. He noted that there have been efforts to refine and make modifications to the proceedings of the PTAB ever since the America Invents Act (AIA) was passed. This effort included finding ways to improve the proceedings to make them as fair and equitable as possible. USPTO Director Andrei Iancu has been “very involved in the process to make sure they are predictable, reliable and transparent.” The Board has seen a 10 percent decrease in the volume of petitions filed in the last year. This decrease is being attributed to the changes that have been made in

the area of multiple petition filings. To address the overall process the PTAB uses in processing the high volume of petitions received each year (1500 in the last year alone), the Board drafted and approved two new standard operating procedure documents (SOPs) to govern their work. • The first outlines how the PTAB handles cases, including the factors that the Board clerk’s office considers when paneling judges to a case. Additionally, should the panel have to be changed, the information will now be disclosed publicly for all concerned parties to be informed. • The second SOP focuses on the Presidential Informative Decision process, and streamlining it to become less cumbersome. A two-track system has been implemented to determine where they become a presidential case. The first track includes active cases that involve issues that are of importance to the USPTO (for example, anything involving the interpretation of AIA or to resolve the split decision of the Board). The second track includes cases that have already been decided, and can be nominated by anyone. Director Iancu makes the final decision as to whether the case becomes designated as a Presidential Informative following a thorough vetting process. Judge Boalick noted that there have been 18 presidential opinion cases designated this year, which is more than the last nine years combined. Praising the fact that the PTAB has made great strides in improving the patent system process, especially as it relates to petition filings and their internal SOPs, retired Chief Judge Paul

Audience at PTAB Fireside Chat.

Michel also noted that PTAB has led the way to make AIA proceedings better, and that, “They should get great credit from the profession. We can all hope they continue to make these serial improvements on a regular basis.” As for the areas for improvement in other aspects of the patent system, there are quite a few challenges to overcome and Chief Judge Michel is of the opinion that the courts “have not been a positive force, have not led, nor had a realistic sense of what the impacts are.” There seem to be disparities between the courts (i.e. District Courts) and the PTAB, specifically how decisions are made and what goes into their considerations. Noting that the patent system has become highly politicized by people who are masters at propaganda, the chat turned to how LES and its members can play an integral role in making course corrections to help the economy grow as well as participate in the varying life-cycles of innovation. In short, the advice was for LES members and industry subject-matter experts to mobilize and to talk to members of Congress. It was asserted that politics doesn’t just take place in Washington, but on a local level, so if concerned leaders in business, universities and associations are willing to become involved, some of the heavy influence on those policy makers can be neutralized. In concluding the session, the Chief Judges asserted, “The problem is solvable because the facts are on the side of having a good patent system. The facts have to penetrate the fog of propaganda. We all have a role in that. A lot of it will have to happen at a local level and not in Washington.”

Judge Scott Boalick (left), Chief Justice Paul Michel and Robert Greene Sterne.


LEADING EDGE SERIES MEETING Licensing in the Age of AI and Data Science Innovations February 27, 2020 Atlanta, Georgia Connecting and Inspiring the Intellectual Capital Community

10/14/2019 2:13:38 PM

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LES Leading Edge_18x24.indd 1

LES Education—2019 Wrap Up And A 2020 Preview


By Mark Keagle, Director of Education, LES (U.S.A. and Canada) e-mail:,

019 was a very good year for LES Education. We had some very successful LES University offerings and developed relationships with several corporations as we work on presenting custom courses. We also worked with many Local Chapters to offer educational courses to various markets. In all, 2019 set LES up for a promising and exciting future moving forward. 1. One of the most promising opportunities is our relationship with the University of Michigan. In early Spring 2020, we will be in Ann Arbor presenting our IP Business Basics course. We’ll follow that up with a Negotiation Skills course in the Fall as the 2020 Fall Semester kicks off. 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. 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. Equally exciting is our partnership with the Georgia IP Alliance (GIPA). In February, we will be in Atlanta offering three courses: IP Ethics, IP Valuation, and the CLP Exam Review, as well as hosting our Leading Edge Series meeting. This new working partnership with GIPA is one that many of us are thrilled to cultivate and develop. 3. There are also several new Local Chapter Events we are finalizing. In the very near future we will be releasing course offerings in Houston, Silicon Valley, Salt Lake City, Wisconsin, Washington, D.C. and San Diego. Our goal is to engage and work with as many of the Local Chapters as are interested and willing. 4. Our 2020 Annual Meeting in Philadelphia, PA is already shaping up to be one of our best conferences yet. We are busy working with Local Chapter leaders to make this meeting one to remember. And as a proud resident of the great Commonwealth of Pennsylvania, I

LES Education Committee, back row, left: Jeff Whittle, Paul Stewart, Tanya Moore, Patrick Gattari. Front row, left, Mark Keagle, LES Director of Education; Carolyn Tomberlin, and Brian O’Shaughnessy.

am looking forward to welcoming everyone to my home—City of Brotherly Love and our great country’s first Capital City! 5. Our last big initiative for 2020 is to bring LES Education online, and the CLP Exam Review is going to be the first course we offer. Look for updates both on the Education web page, as well as our Insights emails. There are so many more things in the works, and we are excited to roll them all out. If anyone is interested in learning more about how they can get involved with LES Education, please reach out to us at any time. We welcome the input of all our members! And if there is a course you are interested in, but don’t see it listed, please 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 in 2020. See the 2020 LES Education Calendar on Page 9.

LES 2019 Annual Meeting

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Up-to-date information can be found on the Licensing Executives Society website:

LES 2019 Annual Report Take a look at the Annual Report available on-line at http://www.lesusacanada. org/?page=annualreports.

It features Director reports and bios. The Treasurer’s Report gives a financial snapshot of LES.

Mark Your Calendars

Tuesday, February 25, 2020

Wednesday, March 25, 2020

Legal Ethics in IP Licensing

CLP Exam Review

2/25/2020 - 3:00 pm - 6:00 pm Location: The Proscenium Atlanta, Georgia $295 Member/$350 Non Member

3/25/2020 Location: Toronto $1,095 Member and Non Member

Wednesday, February 26, 2020

Thursday, April 30, 2020

IP Valuation

Negotiation Skills Workshop

2/26/2020 - 8:00 am - 5:30 pm Location: The Proscenium Atlanta, Georgia $595 Member/$695 Non Member

4/30/2020-5/1/2020 - 2 day Course Location: Milwaukee, Wisconsin $650.00 Member/$795.00 Non Member

Thursday, February 27, 2020

Saturday, May 16, 2020

Leading Edge Series: Licensing in the Age of AI

LES International Conference 2020

2/27/2020 - 8:00 am - 6:00 pm Location: The Proscenium Atlanta, Georgia Early Bird: $500 Member/$650 Non Member Late/Onsite: $600 Member/$800 Non Member

5/16/2020-5/20/2020 Location: Berlin, Germany

CLP Exam Review

10/17/2020-10/18/2020 - 8:00 am - 5:30 pm Location: Philadelphia, Pennsylvania $1,095 Member/$1,395 Non Member

2/27/2020 Location: Atlanta, Georgia $1,095 Member and Non Member

Sunday, March 8, 2020 CLP Exam Review at AUTM

Saturday, October 17, 2020 Business Development in Life Sciences

Sunday, October 18, 2020 LES 2020 Annual Meeting

3/8/2020 Location: San Diego, California $1,095 Member and Non Member

10/18/2020-10/20/2020 Location: Philadelphia, Pennsylvania Early Bird $895 Member/$1,295 Non Member Accompanying Guest (more) $250

Friday, March 13, 2020

Tuesday, October 20, 2020

IP Business Basics

Legal Ethics in IP Licensing

3/13/2020 Location: Univ. of Michigan Ann Arbor, Michigan $295 Member/$350 Non Member

10/20/2020 - 2:00 pm - 5:00 pm Location: Philadelphia, Pennsylvania $295 Member/$350 Non Member

Thursday, March 19, 2020

Wednesday, October 21, 2020

Save the Date: LES Brazil & Americas CommitteeLicensing for Success in Changing Global Market

IP Valuation

CLE credits available, for more information e-mail:

Up-to-date information can be found on the LES website:

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3/19/2020-3/20/2020 Location: SĂŁo Paulo

10/21/2020 - 8:00 am - 5:30 pm Location: Philadelphia, Pennsylvania $595 Member/$695 Non Member

LES New Members Robert Alderson

International Business Development Berggren Oy

Shohrat Balgulyyev

Student University of Houston/C. T. Bauer College of Business

Ryan Beal

CEO Dyve Biosciences

Clayton Cafferata Director Moss Adams LLP

Joseph Centofanti General Counsel CAMX Power LLC

Kannappan Chettiar CEO / Founder Simultium Inc.

Raymond Chiasson DRI Capital Inc.

Chris Davis

Research Fellow Impossible Foods

Tony DeCastro

Strategic Planner Northrop Grumman Corporation

Carina DePellegrin

Counsel Borden Ladner Gervais LLP

Christopher Frerking

IP Attorney/Data Scientist NTK

David Frias

Student Temple Law School

Partner Stroock & Stroock & Lavan LLP

Lorie Goins

Business Development Executive IBM

Roozbeh Gorgin

Attorney Sterne Kessler Goldstein & Fox

Aditya Gottumukkala

Intellectual Asset Mananger PPG Industries Inc.

Richard Green

Senior Director, Legal Counsel QUALCOMM Incorporated

Sophie Guindon Legal Advisor Premier Tech

Elizabeth Haanes

Vice President, IP IGM Biosciences, Inc.

John Haran

Senior IP Counsel Entegris Inc

Ryan Howes

Adam Gill

Managing Director GLS Capital, LLC

Stefan Loren

Sr. Director, Corporate Development Emergent BioSolutions Inc.

Managing Director Oppenheimer

Charles Macedo

Attorney Amster, Rothstein & Ebenstein LLP

Mark Maloney

Associate Director, Technology Licensing Johns Hopkins Tech Ventures

Mariella Massaro

International Business Dev. Berggren Oy

Frederick Mau

Intellectual Property Counsel Toyota Motor North America, Inc.

Rene Meadors

Project Manager KWS-Digital Innovation Accelerator

Walter Mitchell

Managing Director Brittan Park Valuation

Lisa RIchardson

Jason Sandler

Vice President Marsh & McLennan Companies

Lindsay Sanford

Licensing Director University of Connecticut

Lakshmi Sastry-Dent

Sr. Technology Commercialization Manager, Indiana Univ. Innovation & Commercialization Office

Natalia Shalginskikh

Licensing Associate, Tech Transfer Fox Chase Cancer Center

Susan Slocum

Chief Investment Officer ChildrensMN

Jeffrey Smith

Project Coordinator Tech Transfer NASA

Christopher Smith Shareholder Brooks Kushman P.C.

Global Sales and Business Development Manager Cook MyoSite

Delton Vandever

Counsel Perkins Coie LLP

Gordon Ngan

Jeff Walker

Jordan Kratter

Jaci Overmann

Student Univ. of Toronto, Faculty of Law

Heather Karell

Amit Kumar

Director Tech Launch Arizona

Counsel Choate Hall & Stewart

Annika Reinemann

Meredith Mendola

General Manager Etheim Biotics, LLC

Brian Reese

Business Development Associate University of Chicago, Polsky Center for Entrepreneurship and Innovation

Tony Hill

Glenda Gertz

Rakhi Gibbons

Jacob Lissoos

Industry Outreach Program Manager Wright Brothers Institute

Sr. Transactions Officer USC Associate Seed IP Law Group

Indiana University Innovation & Commercialization Office

CBO CANbridge Pharmaceuticals

Glenn Hassan

Corporate Strategy & Business Development United Technologies Corporation

Judy Genovese

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Timothy Gilman

Director-Licensing & Business Development University of Connecticut

Chan Lau

Commercial Advisor Imperial Oil

Winston Lin

Chief Technology Licensing Counsel

DRI Capital Inc. Attorney Dinsmore & Shohl LLP

Chirag Patel

Shareholder Holzer Patel Drennan

Geoffrey Pinski

Director, Technology Transfer University of Cincinnati

Elliot Reed

Executive Director The REDIzone at Northeast Ohio Medical University

Partner Windels Marx Lane & Mittendorf, LLP Director, Corporate and Business Development SomaLogic

James Weissman

Chief Business Officer Dicerna Pharmaceuticals

James Wilson

Appointed VP Semi Segment Counsel Applied Materials Inc.

Monica Yun

Senior Consultant StoneTurn

Jordan Zwick

Senior Director, Head of Strategy Salix Pharmaceuticals, Inc.

New Online Testing Options For CLP Examination The addition of online testing gives CLP candidates the option to take the exam online or at a traditional test center. By Cynthia Allen


LP now offers live online-proctored (LOP) administrations to allow candidates the option of testing online or at a traditional test center.

“Live, online testing gives our candidates the convenience to take the exam in their home or office without traveling,” Tanya Moore, Chair of the CLP Board of Governors, said. “This is also an important development for international professionals who are looking for ways to demonstrate their knowledge and experience in the global market.” This new testing option launched with the October 2019 testing window. Testing sessions are available 24 hours a day, seven days a week, based on seating availability. No international testing fee is assessed for LOP administrations. Scantron, CLP’s testing partner, uses its proprietary software, Scantron PASS™, to deliver examinations to candidates. The candidate’s computer must meet specific technical requirements in order to host the exam. More information on hardware and software specifications is available on the CLP web site: exam-administration/.

Cynthia Allen greets guests and gives information about the CLP certification at the Tech Fair at the Annual Meeting in Phoenix.

Test your Knowledge With CLP Practice Test Items



Which statement regarding patent portfolio management is MOST true with regard to maximizing value for an organization? (Domain 1) A. Patent portfolio management is the responsibility of product management. B. Patent portfolio management maximizes profitability as the only goal. C. Patent portfolio management is separate from the overall strategy of the corporation. D. Patent portfolio management can involve both new product development and licensing. The correct answer is D. Rationale: The best approach to managing a patent portfolio is to have shared responsibilities and inputs from both the IP management and product management parts of the organization that fit the corporate strategy. Maximizing profits from licensing as the sole goal may not be the best strategy for the overall organization.



What does the term “field of use” define in a license agreement? (Domain 3) A. Geographical or territorial scope of the license B. Technology parameters included C. The scope of technology or product applications authorized by the licensor D. Specific physical location where the licensee's rights can be exercised The correct answer is C. Rationale: A field-of-use limitation is a provision in a license that defines the scope of what the licensor authorizes a licensee to do in relation to the intellectual property being licensed. In addition to affirmatively specifying the field of use, the license may negatively specify a field or fields, by specifying fields of use from which the licensee is excluded. Request the CLP practice test online at http://www.licensingcertification. org/for-candidates/practice-test/.


11 | December 2019

LP offers a practice test that includes 50 multiple choice questions that are representative of the content areas and question format of the CLP certification exam. The questions included in this practice test are not currently in use and will never appear on a scored (or active) version of the certification exam. The practice test is unproctored, and statistical analysis of item/exam performance is not completed. Performance on the practice exam is not necessarily indicative of performance on the actual CLP certification exam. The purpose of the practice test is to provide candidates with a tool to familiarize themselves with the types of questions they may encounter on the exam. Once you complete the practice exam, you may self-score the exam using the key provided. The answer key includes the content domain and task statement associated with each item for your reference. Test your knowledge with the following questions excerpted from the practice test. A rationale for the right answer from subject matter experts who developed the practice test is included.

2019 Annual Meeting

2019 LES Annual Meeting Photos—Phoenix

12 | LES Viewpoints

More at:

13 | December 2019

LES Silicon Valley Event: Protecting Your Secret Sauce! Your Secret Sauce! Techniques & Technologies for “Protecting Securing Your Systems, Data, & Intellectual Assets Against

Hacking, Theft, & Industrial Espionage” was the topic for LES Silicon Valley Chapter event. Sponsored by Rambus at their Sunnyvale, California offices on October 16, almost 60 attendees learned from an all-star panel that included a Special Agent from the FBI. The panel was moderated by Stefan Tamme, VP IP Strategy & Licensing, Rambus and included Adelaida Hernandez, Special Agent, FBI; Lee Gardner, IP Counsel, Google; Elizabeth McBride, Managing Director, Global Litigation, Investigations & IP, Applied Materials; and Neeraj Paliwal, VP Security Products, Rambus. These experts discussed knowledge and data as key assets in modern companies, and highlighted the fact that protection of our IT infrastructure and the information that resides on it is becoming ever more critical. They also presented ways to protect against

external attacks and inside jobs. Hernandez explained how the FBI can help when things go wrong.

Larry Udell, LES Silicon Valley Co-Chair was impressed with each presenter’s credentials and their ability to discuss how their company or organization/FBI confronts protecting their “Secret Sauce.” He said, “They turned a critical subject that affects millions into how to create the invisible wall(s) of protection. This is an important enough subject that every chapter should be presenting and how LES is involved world-wide.” Thanks to LES Chapter Leaders Co-Chair, Lawrence J. Udell CLP, Chapter Founder; Co-Chair, Ron Laurie, InventionShare; CoChair, Membership Chair-Michael N. Zachary, Bunsow De Mory LLP; Program Chair, Stefan Tamme, Rambus, Inc.; and Martha Casey for organizing this event.

LES New Jersey: Open Innovation: How Life Sciences And Tech Companies Can Work With New Jersey Universities Innovation: How Life Sciences and Tech Companies Panelists included: Vincent Smeraglia, Executive Director, Office “ pen can work with New Jersey Universities” was the topic at of Research Commercialization at Rutgers University; Sacha Patera,


the LES New Jersey Chapter event on September 11. It was a joint effort between LES and Bio New Jersey, with panelists representing Princeton, Rutgers and New Jersey Innovation Institute. The event was held at the Rutgers Club in Piscataway, New Jersey.

14 | LES Viewpoints

The audience of more than 50 attendees heard real case studies and best practices from members of corporate engagement departments of Princeton, NJIT and Rutgers, as well as healthcare investors and corporate development professionals active in technology and pharma.

Associate Vice President, Rutgers Corporate Engagement Center; Judith Sheft, Associate Vice President Strategic Relationships and External Affairs at New Jersey Institute of Technology; Spencer Reynolds, Senior Associate Director at Princeton University; Alan Naidoff, Founder and President of InnovationAdventure, L.L.C.; Akan Oton, Managing Director, Sector Head - Pharmaceuticals and Healthcare at Barings; and Arturo Pizzaro of Siemens. Much appreciation goes to LES Chapter Chair Lina Lahoz of Teva Pharmaceutical for organizing this event.

Panel from far left: Akan Oton, Sacha Patera, Spencer Reynolds, Judith More than 50 attendees heard real case studies and best Sheft, Arturo Pizzaro with Vincent Smeraglia moderating at the podium. practices from members of corporate engagement departments of Princeton NJIT, and Rutgers.

LES San Diego: Making The BIG Exit the BIG Exit: Maximize Return of Investments “Making Made in Your IP on Exit,” was the exciting topic dis-

cussed by a panel of experts in San Diego on September 12 in an evening presentation at the offices of Knobbe Martens. They explained, to an audience of 30 attendees, how to ensure that critical IP assets effectively increase the value of your business when making the big exit.

The presenters included Mark Abumeri, Partner, Knobbe Martens; Stephen Robertson, Founder & Director, Metis Partners; and Michael Rodman, CEPA, Exit Planning Institute.

Tom Cowan, Co-Chair LES San Diego said, “The event provided a wide-ranging survey of intellectual property, including legal aspects of intellectual property, how to identify and value a company’s intellectual property, and how to leverage intellectual property upon exit of the company. The three speakers provided valuable insights into each of their respective topics.”  

Thanks to Co-Chairs: Tom Cowan and Benjamin Anger of Knobbe, Martens, Olson & Bear, LLP; and Education Chair, Vasu K. Pestonjamasp for their LES efforts in San Diego. And a special thanks to Knobbe Martens, Intellectual Property Law Firm for sponsoring the event.

Mark Abumeri, presenting on the basics of intellectual property. Members enjoy a social gathering with speakers after the meeting.

LES San Francisco: What’s Happened in the Past Year? Licensing and Litigating SEPs, RAND and FTC v. Qualcomm Happened in the Past Year? Licensing and Litigating “What’s SEPs, RAND and FTC v. Qualcomm,” this question was answered in San Francisco on September 12 in a lunch networking event at the offices of Ocean Tomo.

The speakers were Joseph Yang, Tech & IP Transaction Attorney at PatentEsque Law Group LLP; Khue Hoang, Partner at Reichman Jorgensen LLP; Rick C. Chang, Partner at Morgan Franich Redkin Siamas & Kays LLP. The program consisted of licensing standards-essential patents as big business and that parties often cannot agree on a RAND royalty rate. Thus, many important cases concerning RAND are decided in the courts.

The expert panel summarized, compared and contrasted recent U.S., European and Asian RAND court decisions, including guidance for negotiation behavior, license structure, royalty rates, essentiality determinations, reasonableness, and (non-)discrimination. They concluded with a discussion of the recent, groundbreaking (and controversial) FTC v. Qualcomm case that has sent shockwaves through the industry. The event was sponsored by Ocean Tomo and organized by Justin Lewis, LES San Francisco Chapter Chair, with photos by Zach Malone, Director at Ocean Tomo.

15 | December 2019

Speakers from left: Rick C. Chang, Joseph Yang and Khue Hoang. Right photo, participants at the chapter event.

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


n October 2, 2019, the Greater Washington, D.C. Chapter had an event in Montgomery County, Maryland featuring Henry Wixon, Chief Counsel at NIST, the National Institute of Standards and Technology. Henry spoke at length about NIST’s objectives under the Stevenson-Wydler Technology Innovation Act of 1980 with respect to inventions made under cooperative research and development agreements. He discussed the Bayh-Dole Act of 1980 with respect to rights in inventions made with federal funding. He also spoke about NIST’s current goals, set forth in a green paper, regarding steps to modernize the U.S. system of technology transfer and innovation for the 21st century. The event was the first of this sort, and despite being early in morning—8 to 9 a.m.—was well attended. It was a combined effort of the LES Wash. D.C. Chapter, the Maryland State Bar Association IP Section, the Patent Lawyers Club of Washington, D.C., and

Left to right, Emily Billig, Chair of the MSBA IP Section; Michael Greenberg, former Chair of the BAMC IP Section; Henry Wixon, the speaker; Raymond Van Dyke, LES Washington D.C. Chapter Chair; and Thomas Wiesman, who serves on the Advisory Council for the LES DC Chapter.

the Bar Association of Montgomery County IP Section. The event was sponsored in part by Shulman Rogers and held at their offices.

Washington D.C. Event

On October 26, 2019, a delegation of Japanese judges from the Japan Patent Office (JPO) and senior officers of the Japanese Patent Attorneys Association (JPAA) met with LES leaders in Washington, D.C. The group included Bob Held, LES PastPresident; Gary Fedorochko, LES President; Gillian Fenton, LES President-Elect; John Paul, LESI President-Elect; Raymond Van Dyke, LES Washington, D.C. Chair; and Steve Holzen and Thomas Wiesman, who both serve on the Advisory Council for the LES D.C. Chapter. This event was the result of a request by the JPAA and JPO to meet with other groups in D.C. Raymond Van Dyke coordinated the event.

Henry Wixon spoke about NIST’s objectives under the Stevenson-Wydler Technology Innovation Act of 1980 at the chapter event.

LES Orange County: The Microsemi Story: Growth, Success, And Acquisition Insights From A $10 Billion Deal, One Of OC’s Largest Microsemi Story: Growth, Success, and Acquisition Inthe former CEO and GC of Microsemi, which was acquired last “ hesights From a $10 Billion Deal, One of OC’s Largest” was year for $10 billion. This team performed over 30 acquisitions and


16 | LES Viewpoints

the topic of the LES Orange County lunch on October 3, held at the Knobbe Martens offices in Irvine, California.

The speakers were James J. Peterson, former Chairman and CEO, Microsemi Corporation and David Goren, former General Counsel, Microsemi Corporation. Almost 50 attendees learned about the factors contributing to the success of a Southern California semiconductor giant. Paul Conover, LES Orange County Chapter Chair said, “It was great. We heard from

emphasized the importance of managing IP well and treating staff and employees with care, as the secrets of their success.” Sponsored by Knobbe Martens.

LES Iowa: Trademarks In Traditional Business and Evolving Social Media


ES Iowa hosted “Trademarks in Traditional Business and Evolving Social Media” on November 4 at the Iowa State University Research Foundation, Inc. in Ames, Iowa. More than 20 attendees heard from speakers Brandon Clark and Christine Lebron-Dykeman, both of McKee, Voorhees & Sease, PLC.

They presented an overview of practical approaches and strategies for navigating the use of social media with respect to trademarks. Examples and highlights of recent issues with social media influencers were given and how to protect yourself and your brand when dealing with social media. On the traditional business side, they covered drafting trade-

mark license agreements from both a licensor and licensee perspective. Consideration of key provisions, such as indemnification and insurance requirements, best practices and common pitfalls were also shown. “A lot of information was presented in the areas of trademarks in social media and also traditional business use; there were many questions answered and we were pleased to have access to so much expertise!” said Donna E. Johns, Education Chair, LES Iowa.

Donna was the main organizer, with support from LES Iowa President, Jill Link of McKee, Voorhees & Sease, PLC.

More than 20 attendees heard from speakers Brandon Clark and Christine Lebron-Dykeman, both of McKee, Voorhees & Sease, PLC.

17 | December 2019

LES Montreal Chapter Event


By Martin Couillard, LES Montreal Co-Chair and Advisor at the Research and Knowledge Transfer Office of HEC Montréal

or Fall 2019, the LES Montreal Chapter organized two events on licensing in the biotech sector.

Biotech Opportunities and Challenges in China

On September 18, the Montreal Chapter had the privilege of welcoming Alicia Hong, counsel at McDermott Will & Emery in Germany and expert on China-related corporate transactions in the life sciences industry. Her presentation started with an overview of Chinese market opportunities, where China has grown into the world’s secondlargest pharmaceutical industry. It is estimated that the healthcare spending in China will reach $1 trillion by 2020, and $2.3 trillion by 2030. Given the size of the overall market, it does make sense to consider the opportunities in China.

A series of facts was presented to explain why the healthcare market is growing so fast, including improved R&D capabilities and the regulatory environment, as well as a better protection of IP rights, both on a legislative and enforcement level. In conclusion, by using case studies, Alicia showed us that the Chinese market is substantial, provides great opportunities, but is also challenging.

Biotechnology and Pharma Companies: “The Biotech Toolbox”

On October 7, 2019, more than 130 people attended a half-day event organized in collaboration with Servier Canada, the Canadian Healthcare Licensing Association, and LES (U.S.A. and Canada), and the Faculté de Pharmacie de l’Université de Montréal. Also on hand were seasoned entrepreneurs, investors and leaders of the biopharmaceutical industry, including Clarissa Desjardins, CEO of Clementia Pharmaceuticals Inc.; Pascal Neuville, CEO of DOMAIN Therapeutics; Jan Schmidt-Brand, CEO and CFO, Heidelberg Pharma; Helen Torley, CEO of Halozyme Therapeutics, Inc.; and Christian Rohlff, CEO of Oxford BioTherapeutics.

This event, hosted by Servier Canada, was about biotech success stories and their interactions with pharma companies to accelerate the pace of innovation in life sciences. The sessions focused on the “toolbox” required to overcome key challenges that face most biotech entrepreneurs, especially during the startup phase. Introductions were given by Frederic Fasano, President Servier Canada; Manon Decelles, President CHLA and Managing Director Pharmdside Strategic Business Advisors; and Annie Gauthier, Partner & Lawyer, BCF Business Law. Panels and/or presentations also included or were given by Alain Herrera, MD (ex-Sanofi Global Oncology Franchise Head, Alain Oncology Consulting); François Thomas, Capital Investor and Entrepreneur; Jean-Pierre Bizzari, MD (ex-SVP Oncology development, Celgene); Didier Landais, Global Head of Licensing, BD&L Servier; Scott Sandler, Vice President of Finance at Oxford BioTherapeutics; and Brian P. O’Shaughnessy, Past-President LES (U.S.A. and Canada), Partner Dinsmore & Shohl LLP.

Alicia Hong speaks about opportunities and challenges of the Chinese market.

After her presentation, Alicia Hong was joined on stage by a panel of experts, including Emma Saffman, senior patent agent at BCF; Richard Epstein, partner, lawyer at BCF; and Annie Gauthier, partner and lawyer at BCF, as moderator, to discuss the Canadian perspective of doing business in China.

Full house at Servier Canada for a half day event on “the Biotech toolbox.”

The panel (L-R): Annie Gauthier, Alicia Hong, Richard Epstein, and Emma Saffman.

Panel discussion (L-R): Youssef L. Bennani, Clarissa Desjardins, Helen Torley, Jan Schmidt-Brand, Scott Sandler and François Thomas.

18 | LES Viewpoints

This special event was generously sponsored by BCF and held in its downtown Montreal office.

Local LES Chapter Events LES Seattle

LES Quebec City Deep Dive Into IP In The Context Of Data-Driven Technologies

LES Seattle Co-Chairs: Tatiana (Tanya) Moore and Tandi Collisson

Alexa, are you following me?


n the heels of a unique and informative presentation on Amazon Alexa partnership enablement by the head of Amazon’s AVS (Alexa Voice Service) business development team, Garrett Glanz, the LES Seattle Chapter is planning more exciting events. If you are in the Seattle area or happen to be passing through, consider stopping by: • December 10—B2B Music Licensing presentation focused on a music sync licensing marketplace launched by a local startup, SyncFloor. Cestjon McFarland is a cofounder and presenter. It is a perfect complement to our May event on the Music Industry, Digital streaming and IP, presented by David Kaefer, Spotify’s VP of Publishing and Licensing.


n November 20, 2019, the Quebec City Chapter organized a two-hour legal and technical presentation on all aspects of IP in the context of data-driven technologies, from open source licenses on software and development of AI models, to data licensing in many different contexts. More than 40 people attended the event at Le Camp, one of Quebec City’s busiest technology incubators. The event was sponsored by ROBIC and broadcast through many technology and IP associations’ networks. Speakers at the event: Vincent Bergeron (at podium), Vincent Caron and Jean-François Normand, all lawyers at ROBIC LLP. Missing from the photo is JeanFrançois Journaul.

LES Toronto

• January 28—Cannabis Licensing deals in a new multi-billion-dollar business. Our presenters and hosts at Lane Powell will also make their Portland office available, together with conferencing facilities for local participation. • Stay tuned for IP considerations in Cloud services deals, presented by Microsoft.

Seattle is a well-known tech and biotech hub. It is now also becoming the Cloud, AI and burgeoning startup center. There is no shortage of content in this IP-rich environment, providing much fodder for our Seattle Chapter.

The Art of Effective IP Portfolio Management The LES Toronto Chapter organized a dynamic and informative panel session on managing your valuable patent and other IP rights, with a focus on startup and SME innovative technology companies. Held on November 5 at TorysLLP, the speakers included Thanh Vuong, Ainslie Little and Edward Fan. Thanks to Chapter leaders: Karen Temple, Ekaterina Logunov and Phil Goldbach for organizing the event.

LES Members on the Move Pete Canalichio, President and Founder of BrandAlive, reports that his book, Expand, Grow, Thrive won the Book Excellence Award in the marketing category for the second straight year. He will be releasing the audio version of his book later this month. See the award here: pete-canalichio-success-story.

19 | December 2019

David J. Powsner is happy to announce that he has joined the law firm of Davis Malm as a shareholder. His practice will remain focused on advising high-tech companies on patent, copyright, trade secret, trademark, licensing and litigation matters. He will continue to be actively involved in the startup community, coaching new businesses and bringing together the angel investment and startup communities. 

LES Viewpoints December 2019 Edition  

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