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Viewpoints

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

Vol. XXVIII No. 4

December 2020

LES Value: Careers In Transition And Clause Bank Offered Gillian Fenton gave the following acceptance speech at the Virtual Annual Meeting on October 19, 2020 By Gillian Fenton, President & Chair of the Board, LES (U.S.A. and Canada)

Friends and Colleagues, I am deeply honored and excited to be elected as your LES President and Chair for the upcoming year, commencing in October 2020. I would like to offer a special note of thanks to my husband Matthew who has supported me and provided invaluable advice and counsel throughout my professional career including my 28 years of LES membership. When I joined the LES Board in 2017, Matthew generously shared his experience and perspectives as a Past-President of the International Cytokine Society and of the Society for Leukocyte Biology, providing great insight into the workings of not for profit professional education societies. I would also like to thank my colleagues at GSK especially Catherine Ghislain and the leadership of GSK Vaccines Legal Operations for their support of my LES Board service. I am also grateful for the generosity of my many LES mentors, starting with Dave Brook and Dick Wise who initially encouraged me to join LES as a young associate at Hamilton, Brook, Smith, and Reynolds. Their advice has served me well, leading me to meet many longtime friends and kindred spirits within LES, including Paul Stewart, Brian O’Shaughnessy, Louise Levien, Pam Demain, Tanya Moore, John Paul, Marc Schwartz, Bob Held, Scott Williams, Rachel Kreppel, and of course Gary Federochko who has just completed his term as President and Chair. My sincere thanks to them and to my fellow Board members who have been a source of inspiration, constant learning and

encouragement in my service to LES. Finally I would like to recognize two ‘heroes of intellectual property’ who have inspired me with their passion for IP and its benefits to our Society and to society in general: Joe Allen, the architect of the Bayh-Dole Act, and Judge Paul Michel, retired Chief Judge of the Court of Appeals for the Federal Circuit. Thank you all.

My LES journey Back when I was a young associate at Hamilton Brook, just starting to explore directions for developing my legal career, it was critical to find and attend local educational and networking events such as those hosted by the LES Boston Chapter. Not only do local society chapters offer a chance to meet and

I PRIZED THE DIVERSITY OF OUR COMMUNITY BRINGING TOGETHER NOT JUST PATENT AND TRANSACTIONAL LAWYERS, BUT ALSO BUSINESS DEVELOPMENT, FINANCE, AND ALLIANCE MANAGEMENT PROFESSIONALS. interact with local leaders and colleagues, broadening our experience beyond our immediate workplace, they are critical to our development of ever-expanding professional networks. From the beginning of my LES journey, I prized the diversity of our community bringing together not just patent and transactional lawyers, but also business development, finance, and alliance management professionals. I personally share the LES core value of cross disciplinary communication and collegiality. Additionally, LES has always stood out from the ecosystem of professional societies in its international character, reflect-

ing and promoting the advancement of innovation and IP driven business around the globe. We are all enriched by the tapestry of diverse experiences, perspectives, and business cultures of our members. While from the beginning I enjoyed the local chapter events and considered it a special treat to attend the national society’s Annual and Spring Meetings, it wasn’t until much later in my career that I learned the true value of LES. I was asked in 2014 to join the Editorial Board of Insights, providing peer review of member-submitted articles on timely topics and best practices. The Editorial Board introduced me to fellow LES volunteers from the other industry sectors. In that same year, I was asked to lead a half-day workshop on best practices in IP due diligence, which I thoroughly enjoyed. I later became the chair of the Editorial Board, and upon joining the LES Board in 2017, I had an opportunity to learn more about all of LES’ publication channels and platforms, including contributions to the new LES website which just debuted in July. As an in-house counsel and leader of the IP function for Emergent BioSolutions in 2018, I was invited to the LES IP100 where I experienced for the first time the roundtable, expertly facilitated discussions of topics of key relevance to the business of IP which are a distinguishing hallmark of the LES experience. Each of these experiences highlighted the value of our extremely generous, knowledgeable, and collegial community of LES members. LES provides each of us with a learning laboratory—there are many educational and volunteer opportunities for those with the curiosity and commitment to engage actively with the Society.

See Gillian Fenton on Page 2

LES VIEWPOINTS HIGHLIGHTS

Who’s Your Leader? Officers & Directors Announced. Page 3

2020 Virtual Annual Meeting What did you miss? Pages 4-7

LES Standards Explained Panel answers questions. Page 6

Deals Of Distinction Powerhouse deals recognized. Page 7

Viewpoints BOARD OF DIRECTORS President & Chair Gillian Fenton Past-President & Past-Chair Gary Fedorochko President-Elect & Chair-Elect Scott Williams Secretary Kevin Spivak Treasurer Michele Riley

DIRECTORS Julie Barnes-Weise Vincent Bergeron Mihaela Bojin Ann Cannoni Evelyn Chen Ian DiBernardo Lalit Gaur Louise Levien Michael Perham Karthika Perumal Karen Temple Eric Victory Counsel: Rachel Kreppel 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.

Gillian Fenton, continued from Page 1 LES Value But enough about my LES story—I encourage each of you to explore and engage with what LES has to offer. In the past year, we have refreshed and updated our core mission, strategy, and offerings to better align with what brings value to our members. Those professionals who make up the deal teams who create IP-driven business transactions, execute those transactions to drive forward businesses leading the innovation economy, and implement visionary IP strategies to capture and enhance the value of knowledge-driven industries globally. LES is a community founded upon expertise, peer-topeer learning, and collegial networking. LES serves an essential purpose for professionals whose daily activities otherwise may offer only competitive if not adversarial opportunities for interacting with our peers. More than this, LES offers unique development resources to support advancement of our members’ careers. Our new website features enhanced resource libraries ranging from our publications databases and eLibrary to LES’ royalty rate and deal terms surveys. More resources are being developed: I am particularly excited about our new Clause Bank, a comprehensive collection of commonly used agreement definitions and deal terms, developed exclusively by and for LES members, led by Ann Cannoni, to improve professionalism and drafting quality of the agreements we negotiate every day. I am also excited about our growing content archive of recorded online events, featuring presentations and webinars on cutting edge topics ranging from data licensing to startup valuations to the role and value of standards in Intellectual Property. And I would be remiss if I did not also acknowledge the tremendous adverse impact of the pandemic we are experiencing, of COVID-19, on our businesses, our livelihoods, and our lives. We have seen an unprecedented reversal of fortunes as our world and our governments struggle to contain and control the most massive public health challenge of our time, and the ensuing economic hardships arising from necessary measures to shut down workplaces, travel, and in-person gatherings. Fortunately, the pandemic has also created an unprecedented opportunity for collaborations in the race to develop countermeasures including diagnostics, vaccines, and therapies, and I celebrate all of the LES members and their organizations who have risen to this challenge. We all wish them speedy success in overcoming this disease. But for the many LES members who have been personally affected by the loss of jobs and job opportunities, I am proud to have developed our program of “LES Careers in Transition” events, centered

on webinars with leading professional recruiters, and peer-to-peer roundtable networking facilitated by experienced LES members and mentors. We will continue this program into the coming year.

LES Strategy & Initiatives Indeed, the pandemic and associated inability to produce our key events, such as this Annual Meeting, in person has caused LES to profoundly reconsider and redevelop our strategy and programming. Our central consideration for the coming year and beyond is: how do we deliver value for LES members? To do this, we are re-imagining LES as follows: 1. First, we are aligning our leadership around three core activities:

a. Content development, which unites event programming, education, webinars, our highly anticipated royalty rate and deal terms surveys, and more. We will develop a new ecosystem based on ‘content themes’ to provide you with flexibility to learn the essentials, such as through a short article or blog post, or instead to learn in-depth through webinars and educational programs. b. Member engagement, including exploration of new membership paradigms such as group or corporate level membership, and also —critically—customer service and engaging with LES members to learn your feedback about what is valuable to you, and translate that into new LES resources and programs. And, c. Communications, including continuous improvement of LES’ publications such as Insights and Viewpoints and an enhanced use of digital and social media. The pandemic has opened up new paths of online engagement, and we hope to develop a new online community for networking and sharing our expertise with each other.

2. Next, we will explore mutually engaging partnerships and joint programming with allied professional development organizations and societies who share LES’ core values. 3. Finally, we will embed a culture of fiscal prudence throughout LES: every program and event we take on will have passed our criteria for providing ROI—value to every LES member.

Closing

The year ahead contains many challenges but also many opportunities. I hope that you will join me, and the LES leadership, on our journey of resilience and reinvention in 2021! Thank you!

Who’s Your Leader?

Officers And Directors For 2020-2021 Gary Fedorochko

Table of

CONTENTS

Past-President and Past-Chair, LES USA & Canada

“W

elcome to the new LES Board of Directors, a talented and diverse group of high character and motivated indi-

President’s Message.....................1

viduals with strong leadership skills and a vast array of experience

Who’s Your Leader?.....................3

men will further allow LES to strategically move forward in delivering value to our membership,

Virtual Annual Meeting Recap..........4

the brand of LES,” said Gary Fedorochko, LES Past-President and Past-Chair.

Annual Meeting Networking........5

LES’ president-elect, moves into the role of president and chair of LES. Director Scott Williams

LES Standards Panel.........................6

the board.

Deals of Distinction Awards..........7

value to our members. I am committed to leading strategic and cultural changes to advance the LES

LES Award Winners.......................9

in advancing the business of intellectual property. Their proven acu-

pursuing our key initiatives, and otherwise improving our membership experience and enhancing

As part of the Executive Committee’s seamless leadership transition, Gillian Fenton, previously

has been named president- and chair-elect, and Rachel Kreppel is continuing her role as counsel to

“I’m grateful for this opportunity to serve LES as this year’s Board Chair, and to enhance LES’

vision and mission and lead the Society through the pandemic and associated economic sea change

throughout the coming year,” said Fenton. “On behalf of the Board, I would like to thank Gary Fedorochko for his dedicated service to LES during his term as President and Chair. Gary’s commitment and agile leadership has inspired me to envision a bright future for LES.”

2020-2021 Officers & Board of Directors

Gillian Fenton — President and Chair of the Board Scott Williams — President-Elect and Chair-Elect of the Board Gary Fedorochko — Immediate Past-President and Past-Chair

Five Steps to CLP..........................9 LES Education Update..................9 LES New Members......................16 Members On The Move................16

Kevin Spivak — Secretary

Sponsor Ads:

Michele Riley — Treasurer Rachel Kreppel — Counsel

New 2020-2021 Directors Julie Barnes-Weise

LES Standards, Join Now

Womble Bond Dickinson.....8 & 12 ARE Law......................................10

Vincent Bergeron Mihaela Bojin

Finnegan.............................11 & 15

Michael Perham

Greenblum & Bernstein................13

Continuing Directors: Ann Cannoni

Ericsson........................................13

Evelyn Chen Lalit Gaur

Stout.............................................14

Ian DiBernardo Louise Levien Karen Temple Eric Victory

See Page 6 for more information and visit: www.lesusacanada.org/LESStandards

Robins Kaplan LLP........................14 3 | December 2020

Karthika Perumal

2020 LES Virtual Annual Meeting Recap

October 13-20, 2020 • Live Zoom Meetings and Virtual Session Recordings

ore than 600 attendees gained insight and knowledge at the 2020 LES virtual annual meeting around the theme of “Protect-

Meeting Content Available On-Demand 24/7

ing & Commercializing Future Technologies.” Investing in 5G Inno-

vation was the featured plenary with Fabian Gonell, SVP, Licensing Strategy & Legal Counsel, Qualcomm Inc. He shared an insider’s view of 5G development and gave advice about when to buy that new phone.

Meeting attendees can access his slides on the meeting website at https://yourconference.live/LES/.

This virtual meeting was held on seven days (October 13-20) with

sessions scheduled from 12:00–4:00 p.m. Many of these were pre-

recorded with the featured speakers joining at the end for Q & A. Evening networking sessions were live via Zoom, where attendees were invited into members’ homes to meet beloved pets and babies.

Promoting Innovation Where Market Incentives Don’t Work was

Meeting Portal to the LES Virtual Annual Meeting 2020.

f you weren’t able to join us live in October—not to worry. We have 40+ content sessions now available on-demand for your viewing.

a powerhouse pharma industry panel with Gillian Fenton moderating.

You can purchase the full event, LES members pay $495 (or $99 per Session. Visit: https://tinyurl.com/yylnnscc.

area of emerging infectious diseases,

Registered meeting attendees can use their password to access recordings at this link: https://yourconference.live/LES/home.

Attendees learned about addressing the challenges of licensing in the neglected tropical diseases and antibiotic resistance. It’s the End of the

World as We Know It: Convergence:

Opportunities and Challenges in

Licensing was a fascinating panel

moderated by Matteo Sabattini. They focused on automotive industry issues surrounding machine learning and cars becoming mobile offices as an example of new “people-centric smart spaces.”

I WAS IMPRESSED WITH THE QUALITY OF THE SPEAKERS, AS USUAL FOR LES EVENTS, WHICH IS WHY I CHOSE TO ATTEND THIS CONFERENCE. I LEARNED QUITE A BIT DURING THE CONFERENCE, WHICH WAS MY GOAL SO THE CONFERENCE WAS A SUCCESS FOR ME!

Go to Sessions, then Resource Library to download slides. Important Things to Note: Group Deal Purchase as low as $1,500: This offer is available if a group of three or more would like to purchase the full meeting. CLE Credits Available: More than 15+ CLE credits are SELF REPORT only. You will have access to slides and speaker bios with the purchase of the full meeting recordings. You can also contact mkeagle@les.org to request a Certificate of Attendance or for further information. Content Availability: All content will be accessible until 12/31/20.

-PAUL SMITH

Forty sessions targeted to different tracks took a deep dive into vari-

ous business trends. Russell Levine’s Top 10 Court Decisions of 2019

Affecting Licensing had its usual well attended session. Attendees learned how these cases impact the way we draft and negotiate patent and

technology license agreements. University Spinout License Packages: Favorable Deal Terms and Business Development Support provided

a look from both sides of the negotiating table. The panel was very generous in outlining their deal terms with experts from Yale, Cornell, Washington University and University of Kentucky.

TAKING THE ANNUAL MEETING ONLINE IN 2020 PRESENTED CHALLENGES, FOR SURE, BUT THEY WERE OUTWEIGHED BY THE OPPORTUNITIES. WE WERE HAPPY TO BE ABLE TO CAPITALIZE ON THE LATTER TO PUT ON A PROGRAM THAT PLACED MORE PANELS IN FRONT OF A LARGER AUDIENCE TO DISCUSS A WIDER RANGE OF TOPICS THAN MIGHT HAVE BEEN POSSIBLE IN PERSON. NOT ONLY DID THIS BENEFIT THOSE WHO WERE ABLE TO ENJOY THE ANNUAL MEETING IN “REAL TIME,” BUT WE BELIEVE IT WILL ALSO BE A BOON TO THE MANY THAT WE HOPE WILL HAVE A CHANCE TO WATCH THE RECORDED SESSIONS IN THE MONTHS TO COME. ENJOY! -DAVID POWSNER, LES 2020 Annual Meeting Co-Chair

The Deals of Distinction Awards highlighted four teams that worked

together to make our world a better place. Read more about these fas-

cinating deals on Page 7. Educational add-on courses also offered CLE credit to many attendees.

To close the event Keynote Speaker, Dr. Daria Mochly-Rosen of Stan-

ford University described the SPARK Tech Transfer Program. It’s a 4 | LES Viewpoints

type of incubator that meets out of the office with students, educators and

venture capitalists to commercialize their inventions. She said, “We tell

them to start with the end, the product or the patient in mind. It’s simple to set up a program like this and has been duplicated worldwide.” For more information visit: https://sparkmed.stanford.edu.

Meeting Chairs welcoming attendees: Karthika Perumal (top left), Arpi Siyahaian (top right) and David Powsner.

Engaging Virtual NetworkingDOE Events Lab Technologies Are Available For Licensing

irtual Networking events were something new for an LES meeting, these Zoom sessions were lively and conversational. An added advantage was that folks were able to tune in from anywhere in the world. A few are described below.

Women In Licensing held a well attended session a few days before the official meeting started. It was a lively exchange via Zoom about coping with careers, motherhood and working from home during the pandemic. The Welcome Reception changed things up quickly and split the hour into short breakout room sessions. Attendees were reorganized into new groups of nine in order to meet the maximum number of people at the event.

Shelby Perkins (spouse of LES member Peter Harter) hosted the Wine Tasting event via Zoom. She is a winegrower and owner of Perkins Harter Wines and Bracken Vineyard. She described her journey into wine growing in Oregon, while viewers sipped on their favorite beverage and asked questions via the chat room. Fireside Chat: Employment and Innovation: Looking back and (mostly) looking forward. Attendees were treated to a casual discussion moderated by Ben DuPont. He was talking to Amy Banse of Comcast Corp. and Sam Liggero, formerly of Polaroid. They had many insights and great stories to share, worth tuning into the rerun!

Dana Matzen and Kamil Ali-Jackson (inset) WIL session.

Shelby Perkins and Peter Harter hosted wine tasting.

Welcome Reception featured break-out rooms.

Fireside Chat: Amy Banse (top), Ben DuPont and Sam Liggero.

Thanks To The LES Annual Meeting 2020 Committee Members Co-Chairs:

Karthika Perumal David Powsner

Program Chair: Arpi Siyahian

Keynote Chairs:

Kate Berezutskaya

Sponsorship Chair: Round Table Chairs: Merri Moken Michele Gunness

Kannan Krishnaswami Christopher M. Turoski Sanjay Prasad Seema Basu Merri Moken Micheal Perham Todd Sigler Alex Markov

Social/Networking Chairs: RenĂŠ Meadors Benning Wang Michele Gunness

LESI Liaison: John Paul

HTS Sector: Dave Powsner

IUGI Sector:

Michele Gunness

LSS Sector: Dana Matzen Mike Perham

CEEM Sector: Ben Armitage Robert Jung

Standards Committee: Mihaela Bojin

Young Members Committee: RenĂŠ Meadors

Women in Licensing Committee: Dana Matzen Karen Rufus

5 | December 2020

Ian DiBernardo

Session Chairs:

LES Standards Initiative, Join Now

he LES Standards Development Organization (SDO) is soliciting volunteers to join the Standards setting Committees as well as the Consensus Body Partnership (CSP). These efforts were shared during Standards: Everything You Always Wanted To Know, But Were Afraid To Ask!, an Annual Meeting session that further explained the Standards initiative at LES. Mihaela Bojin, University of Iowa Research Foundation, moderated the panel. Participants included Aaric Eisenstein, PMC (Personalized Media Communications); Jeffrey Bartholomew, Robinson Waters & O’Dorisio, P.C.; Ron Laurie, Chairman and CIPO, InventionShare; and Michael Pellegrino, Pellegrino & Associates, LLC. All are chairs of LES Standards committees. Michaela explained that Past-President Bill Elkington started the Standards Initiative seven years ago to create management frameworks to have better business practices and to be more efficient in IP transaction and management. Members should consider joining, she said, “to ensure that your enterprise has a voice in the development process.” The committees are well represented in high-tech, but they need help in finance, pharma, and education. “We want something that will engender trust in the public and create consistent results,” Mike Pellegrino explained. “The consensus process that we use does that because I believe in what we’ve done and I think the product we have produced is the best in class.”

6 | LES Viewpoints

Interested parties are invited to join SDO or the CSP by applying for a LES Standards Enterprise membership or CSP membership. The cost for joining the SDO is $500 and the CSP is $250. An Enterprise membership includes a CSP membership. Visit the Standards Development web page to learn more about the committees and join: https://www.lesusacanada.org/ licensing-standards-initiative/. Be a part of creating a first American National Standard Institute Standard on IP! Contact Terracia King at standards@les. org, or Alex Rehmeier at 949-636-9442 or Alexandra.l.rehmeier@boeing.com with any questions. Join today!

Mihaela Bojin (top) moderated the panel, below her are participants Michael Pellegrino, Jeffrey Bartholomew, Ron Laurie and Aaric Eisenstein.

Be PART of the PROCESS

of CREATING these CRITICAL STANDARDS The Purpose of LES Standards Initiative • Make IP management and IP transaction practice more understandable and accessible to the enterprise • Improve the practice of IP management and, by doing so, enhance shareholder value, establish safe-harbors and mitigate litigation risks  • Reduce the cost and time required to do IP-oriented transactions and IP management  • Protect and preserve the value of IP for innovative individuals and enterprises  • Encourage investment in innovation and enhance the economic well-being of society

Areas of Standards Development Eight committees have been established to draft standards in the following areas:

ISO/TC 279 Innovation Management  Advancing best practices in innovation management and ensuring coherence and alignment with existing management process standards

IP Protection in the Supply Chain  Providing a management system approach

and controls for organizations to augment the typical legal means used today for protecting IP between organizations

FRAND Licensing  Creating an industry-wide, business process standard for businesses and professionals engaged in licensing standard essential patents on fair, reasonable and non-discriminatory (FRAND) terms, thereby reducing transaction costs and management expenses

IP Licensing eveloping a standard for parties’ interD actions in licensing intellectual property, thereby enhancing efficiency and trust and reducing the need for additional litigation, legislation, and regulation in this field

IP Management for Startups  Developing a standard that is intended to enhance the value of early stage enterprises (at funding and at exit), reduce IP risk, and reduce costs for entities that adopt and practice the standard in connection with securing and protecting their intellectual assets

Intangible Assets in the Boardroom  Creating a standard for boards of directors to enhance value and mitigate risk associated with intangible assets

IP Valuation  Providing a multi-tiered, scenario-based standard for selecting and applying IP valuation approaches for a wide variety of situations

IP Brokerage C reating transaction-centered business

process requirements for agents, buyers, and sellers of IP assets

More information can be found at: www.lesusacanada.org/LESStandards

LES Honors 16th Annual Deals of Distinction™ Award Winners Business deals in genome sequencing, seismic technology, software technology and global collaboration for gene regulation therapies recognized at virtual meeting By Carla J. Blackman

ES Past-President and Past-Chair Gary Fedorochko recognized the 2020 LES Deals of Distinction™ Awards recipients at the Virtual Annual Meeting on October 16. The 2020 recipients were four collaborations that orchestrated the year’s most outstanding licensing and business deals in CEEM, IUGI, Life Sciences and High-Tech Sectors. IUGI Sector Industry-University-Government Interface Sector (IUGI) awarded the distinction to Oregon Health & Science University (OHSU) and Illumina for Single-Cell Genome Sequencing Processes and Tools License. Adrian Cyhan, Co-chair of the IUGI Sector, presented the award to Anne Carlson of OHSU.

In this deal, Illumina and OHSU co-developed three important technologies that led to the filing of 10 new patent applications.

Adrian Cyhan

“The collaboration was immediately productive and the effort to license OHSU’s rights in the joint collaboration was ultimately driven in the effort to recognized the work of Dr. Andreas Addy made to these technologies,” Anne Carlson said.

High-Tech Sector

Accepting the award was Lester Teichner. He shares the award with Benjamin Vear and Dr. Henry Hoffmann all of Configuration Dynamics, LLC. In this technology, systems are self-aware and can selfSanjay Prasad tune to change their data for more efficient use and control of the most modern software. Teichner gave an example of a future mobile phone that’s optimized for battery life and can allocate resources to the actual apps being run on it. Life Sciences Sector

Lalit Gaur, LES Board Member and former Life Sciences Sector (LSS) Chair, introduced the LSS Deal Winners, Sangamo Therapeutics and Biogen. They developed a broad global R&D collaboration for gene regulation therapies to treat neurological diseases.

She also thanked her Illumina licensing colleague, Paul Gerel; and Travis Cook, her licensing counterpart at OHSU. CEEM Sector Robert Jung, Co-chair of Chemicals, Energy, Environment & Materials (CEEM) Sector, introduced the award, which was given to ExxonMobil Upstream Research Company and The University of Houston for Low-Frequency Seismic Technology License and Consortium Foundational Agreement. Tim Kinn of ExxonMobil Upstream Research Company and Mark Meier, Professor of Physics at University of Houston, accepted the award. Robert Jung This deal leveraged the expertise of Exxon Mobile and the University of Houston to establish an industry wide consortium that should help producers and suppliers develop seismic data. The judges chose this deal because of its complexity. It’s a good example of industry and academic collaboration. The team created four families of patents, 14 U.S. and foreign patents. “This deal licenses technology developed by Exxon Mobile to the University of Houston,” Mark Meier, said. “It provides a way to measure and utilize the lowest seismic activity; this can add valuable data for drilling and reservoir success.”

Sanjay Prasad, Chair-elect of the High-Tech Sector (HTS), announced this award. It was given to the University of Chicago, Configuration Dynamics and Underwriter Laboratories for its Software Technology Commercialization arrangement.

Lalit Gaur

Emma McBurney, Biogen, Executive Director, Business Development, and Melita Sun Jung, Sangamo’s Senior Vice President, Head of Business Development, accepted the award.

Melita thanked Biogen, emphasizing that the collaborators had fun and invigorating discussions and commented that this deal has the potential to have a transformational impact on the lives of patients with neurological conditions. Emma said she knew Biogen needed external innovators that had technology expertise and the firm found that with Sangamo. Each party complemented the other. For Sangamo, it strategically partners its Alzheimer’s and Parkinson’s programs with Biogen’s world-class neuroscience expertise. For Biogen access to Sangamo’s gene regulation therapies complements its expanding efforts in gene therapy across diverse neurological diseases “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,” said Fedorochko. “The 2020 award winners through creative licensing deals allow the potential of exciting and powerful innovations to be commercially realized, and we are pleased to recognize their success. Our thanks go to the Awards Committee for highlighting the continued achievements of LES members.”

Award Winners

Tim Kinn

Mark Meier

Lester Teichner

Emma McBurney

Melita Sun Jung

7 | December 2020

Anne Carlson

Full-service Intellectual Property Practice to help you protect, manage and monetize your most important IP assets Named to Law360’s Legal Lions Weekly Verdict for decisive win for Ferring Pharmaceuticals in a Zoom patent trial

125+

Intellectual Property Attorneys & Agents

Key IP Contacts

Jeffrey Whittle

Partner, IP Transactions & Licensing Past LES President & Chair, USA and Canada

8 | LES Viewpoints

womblebonddickinson.com

Karthika Perumal, Ph.D. Partner, IP Transactions & Licensing LES Board of Directors

Joshua Davis

Partner, IP Litigation LES 2020 Conference Speaker

Mark Shelley II, Ph.D.

Of Counsel, IP Transactions & Licensing LES SVP of Education

“Womble Bond Dickinson,” the “law firm” or the “firm” refers to the network of member firms of Womble Bond Dickinson (International) Limited, consisting of Womble Bond Dickinson (UK) LLP and Womble Bond Dickinson (US) LLP. Each of Womble Bond Dickinson (UK) LLP and Womble Bond Dickinson (US) LLP is a separate legal entity operating as an independent law firm. Womble Bond Dickinson (International) Limited does not practice law. Please see www.womblebonddickinson.com/us/legal-notices for further details. 811 Main Street, Suite 3130, Houston, TX 77002

Steven M. Ferguson

Named 2020 LES Frank Barnes Mentor Award Recipient For His Outstanding Work as Mentor in the Field of Licensing, Ferguson Was Honored During Society’s Virtual Annual Meeting, October 16, 2020

ES selected Steven M. Ferguson, CLP, Special Advisor at NIH’s Office of Technology Transfer, as the recipient of the 2020. Ferguson has devoted his career to inspiring and encouraging further innovation in the licensing sector and is a mentor for the broader technology transfer community.

Steve Ferguson

“This year by wide acclaim, the award selection committee is pleased to present Steven with the 2020 LES Frank Barnes Mentor Award. Steven is a natural mentor and has devoted his entire career to inspiring and encouraging further innovation in the licensing sector,” said Don Drinkwater, Chair of the Frank Barnes Award Committee, former LES Board of Directors member and past-president of the LES Foundation.

“Steve’s service to LES has been truly admirable. He is an expert, a socially-aware leader, and an educator. In his nearly 30-year career in technology transfer, he has trained and mentored dozens Don Drinkwaand dozens of licensing professionals,” said Feter, Chair of the Award Commit- dorochko. “He continues to be a leading light to all tee presented technology transfer professionals, always gracious Steven Ferguson and generous in sharing his knowledge and enthuwith the 2020 siasm about the field. Congratulations to Steve from Frank Barnes Mentor Award. the entire LES community.”

Bill Elkington Honored With 2020 LES Presidential Award

or his driving energy around Intellectual Capital Management (ICM) and his championing of the LES Standards Initiative since its inception, Bill Elkington, Mind IC managing member, LES past president, and past LES Standards chair, was presented with the LES Presidential Award. As the highest honor that LES can give to a community member, the award recognizes Elkington for his outstanding contribution to the Society’s health, vibrancy, and well-being.

Five Steps To CLP Certification

he Certified Licensing Professional (CLP) credential distinguishes you in a diverse field. It demonstrates your knowledge, provides access to a network of certified professionals, and shows ongoing commitment to the field. Testing for the CLP exam is available in 2021 during the months of April and October.

Step 1: Complete Online Application • The online application is available at www.licensingcertification.org. • Pay the $995 application fee which includes two testing opportunities within a 13-month window.

Step 2: Schedule Test Appointment • Apply at least seven days before the testing date. • The testing windows for 2021 are April and October. Choose a day and time during the month-long windows to take the exam.

Step 3: Prepare • Start by reviewing the detailed exam blueprint on the CLP website. It outlines the specific information covered on the exam and can be used to formulate a study plan. • Develop and implement the study plan.

Step 4: Take the Exam • The exam is offered at more than 400 testing centers around the world or via online testing from your home or office. • Be sure to review the technical requirements for online testing prior to testing.

Step 5: After Earning the CLP, Prepare to Recertify • Recertification is required every three years by earning 40 professional development credits.

9 | December 2020

“Bill’s passion and warm personality, in addition to his sharp intellect, make him an immutable force when it comes to ICM and standards of excellence,” said Drinkwater. “His launch of the LES Standards program has transformed the organization, resulting in an ANSI-accredited program with eight active standards committees. Bill has a deep understanding of the business of licensing and ICM, through which he has served our profession faithfully for decades by his leadership and strength of character. We, as a profession, are better because of Bill.”

By Cynthia Allen

2020 LES Education End Of Year Wrap Up By Mark Keagle, LES Director of Education, mkeagle@les.org Dear LES Family and Friends, With Thanksgiving over, and the end of the year not far behind, we begin in IP Valuation course into an amazing online course but they develthe usual process of looking back at the year that is ending. As you are read- oped an entirely new course: IP Valuation in Early Stage Technology. Carolyn led the Valuation Team in making five new Valuation courses ing this you have my sincerest wishes for the happiest of holiday seasons, a during 2020. safe and happy new year, and continued health to you and your family. Joe Miotke, Jonathon Hance, Louise Levien, Karthika Perumal, 2020 has certainly been a year that will long be remembered. Despite Kevin Montague, Karen Temple, D.C. Toedt, along with Matthew all the negativity, all the turmoil, the chaos, and the illness; I have been McNeill and Michele Riley once again, helped to transform the IP witness to some of the best in humanity! The volunteers that are part of the LES Education Committee have gone above and beyond what anyone Licensing Basics into an extremely interactive and engaging online could have ever asked or hoped for. Beginning in early March our course course. The IP Basics Team took a very interactive “in person” course, chairs and instructors put in countless hours to transform our “in person” spent hours revamping and overhauling the curriculum, and created what is sure to be the perfect course to introduce someone to the IP classes to meet the demands of online courses. Not only have they professional world. pushed themselves to update and revise the curriculum, but they also And no LES Education calendar year would be complete without spent hours familiarizing themselves with our online platform. Without their dedication and sacrifice 2020 would not have been as successful for a Negotiations course. Well, this year we had two. Thanks to Chuck LES Education as it was, nor would LES be looking at a full and exciting Neuenschwander, Jennifer Gottwald, Mark Shelley, and Paul Stewart, LES was able to develop a one-day IP Negotiation Basics course. It 2021 education calendar. pairs nicely with our other introductory courses to provide those new to There are several volunteers that deserve special thanks and acknowlthe IP Profession with a strong foundation. Next the team turned their edgement. Paul Stewart, Krista Holt, and Matthew McNeill were the attention to overhauling our 2-day Negotiation Skills course into a 3-day first to jump into the fire. On Friday, March 6th, LES was told that our online course complete with the signature case study. CLP Exam Review course that was to be offered in conjunction with These are just a handful of the dedicated volunteers who helped ensure a the AUTM Annual Meeting in San Diego was cancelled. Rather than successful 2020 for LES. While nothing can replace the personal touch of allowing the course to be cancelled Paul set things up using his personal an in-person course, our instructors have given their all to make our online ZOOM account, and then Paul, Krista, and Matthew spent a good portion learning as interactive and engaging as possible. Lessons learned in 2020 of their weekend transitioning the course into an online offering. Afterwards the entire CLP team, led by course chair Paul Stewart, continued to helped developed a robust 2021 calendar (to be released in early December.) Thank you all once again for your continued support. From all of update and improve the course for each of the next three offerings. us involved with LES Education let me wish you Happy Holidays and Carolyn Tomberlin, Michele Riley, Sean Sheridan, and Krista Holt a wonderful New Year!! did double duty. Not only did they update and transform the Foundations

2020 Education Calendar

Up-to-date information can be found on the LES website: https://lesus.wpengine.com/professional-development/#courses

Develop. Protect. Monetize. Founded in 1953 in NYC, ARE Law focuses on all aspects of intellectual property law, including patent, trademark, copyright, trade secret and related areas.

10 | LES Viewpoints

Our lawyers have specific experience in working with individuals, for-profit and nonprofit institutions to develop, protect and monetize their innovations. We also have experience with computerimplemented innovations, including software and data that can help your organization protect and monetize its IP assets. Charley Macedo cmacedo@arelaw.com www.arelaw.com

Finneganâ€™s Incontestable Blog provides news and information about notable decisions and evolving trends in the fields of trademark, advertising, and copyright law.

Federal Circuit IP Blog is a resource of Finnegan, providing news and information about essential decisions, key developments, evolving trends in Federal Circuit IP appeals, and more.

European IP Blog is a resource of Finnegan, providing news and information about patents, trade marks, designs and other intellectual property practice in Europe.

IP FDA Blog is a resource of Finnegan, providing information about notable IP developments for FDA-regulated products and related FDA developments.

Finneganâ€™s AIA Blog provides news and information about patent practice under the America Invents Act (AIA). Blog posts cover topics relating to post-grant proceedings, PTAB statistics, and decisions from the PTAB and the Federal Circuit.

Prosecution First Blog is a resource of Finnegan, providing news and information about patent prosecution practice before the U.S. Patent and Trademark Office.

One firm. Ten offices around the world. You can find us in North America in Atlanta, Boston, Palo Alto, Reston, and Washington; our European office is in London; and our Asian offices are in Seoul, Shanghai, Taipei, and Tokyo. We also have a presence in Australia and Israel.

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP

Check out our LES Insights articles: WWW.FINNEGAN.COM

11 | December 2020

Please visit www.finnegan.com for more information.

Providing mission-critical IP services to companies who are leading the way in innovation

Offices in Key US Innovation Hubs Houston, Silicon Valley, Atlanta, Boston, Northern Virginia, and Raleigh-Durham plus key IP hubs, like Delaware and Texas, to serve the nation’s busiest patent litigation venues.

Key Contacts

Jeffrey Whittle

Karthika Perumal, Ph.D.

Mark Shelley II, Ph.D.

Joshua Davis

jeffrey.whittle@wbd-us.com

karthika.perumal@wbd-us.com

mark.shelley@wbd-us.com

joshua.p.davis@wbd-us.com

IP Transactions & Licensing

12 | LES Viewpoints

womblebonddickinson.com

IP Transactions & Licensing

IP Litigation

5G: made for innovation From smartphones to remote-controlled robots on factory ďŹ‚oors, 5G transforms it all. Ericssonâ€™s 5G technology delivers unprecedented speed and ďŹ‚exibility, carrying more data than ever before. Our 5G is made for innovation.

ericsson.com

13 | December 2020

Ericsson. The 5G switch made easy.

ROBINS KAPLAN LLP AUDITING, MANAGING, AND ENFORCING LICENSE COMPLIANCE FOR OUR CLIENTS.

We leverage our in-depth experience and knowledge of the ever-changing intellectual property and technology landscape to help clients manage licenses and improve their own agreements. Our deep litigation and trial experience provides the lens through which we create and maximize commercial advantage for our clients. This vision extends beyond the courtroom. We also help clients map out asset protection strategies and develop a superior bargaining position in negotiations over technology by analyzing existing license agreements to inform strategic business decisions.

STOUT INTELLECTUAL PROPERTY Stout has the only fully integrated team of valuation professionals, damages experts, compliance professionals, investment bankers, and technical experts with the ability to execute a full spectrum of IP services. Expert Testimony & Consulting – Intellectual Property Disputes Valuation – Intellectual Property / Intangible Asset Valuation Transactions – Intellectual Property Advisory & Transactions

14 | LES Viewpoints

Compliance – Royalty Audit Services

Visit stout.com to learn how we can relentlessly deliver for you.

Advocates at the table and in the courtroom

Finnegan proudly supports the Licensing Executives Society

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP

WWW.FINNEGAN.COM

15 | December 2020

Finnegan practices all aspects of patent, trademark, and copyright law, including counseling, prosecution, licensing, and litigation. Finnegan was one of the first firms to develop a full-service practice for managing and monetizing IP portfolios, helping clients with due diligence investigations, structuring and negotiating complex transactions, and standard essential patent licensing and enforcement programs.

LES New Members Nico Forte

Fouad Badaoui

Sr. Director, Business Operations and Development MindMed

Student

James Baglini Jr.

Principal Engineer Northrop Grumman Corporation

Matthew Golden

Assistant General Counsel–IP Mars, Incorporated

Donald Baker

Owner/Engineer android originals LC

Robert Gore CEO 4Ry, Inc.

Jaron Ballentine

Managing Partner Ballentine LifeScience Partners

Martin Graham

Joseph Baroldi

Jake Greenberg

CEO Empire Discovery Institute

COO Avidity

Associate Manager Carnegie Mellon University, CTTEC

Braden Bills

Licensing Associate Sanford Health

Rich Hake

Owner Rich Hake Consulting

Richard Brauckman

Director of Technology Acquisition Theragenics Corporation

Johanna Hendriksen

Zunxuan Chen

Vice President, IP Counsel IP Value

Student

Aoife Cullen

Director, Tech Transfer Henry M. Jackson Foundation Global Head of Business Development Oncolytics Biotech Inc.

Matthieu Dumont

Brian Hubbard

Partner Condo Roccia Koptiw LLP

Lauren Ingram Student

Andrea Deguttadauro

Senior Technology Manager TechLink

Director, Business Development Japan Tobaco Inc.

Stephen Kampmeier

Senior Attorney (RIHC) Intel Corporation Senior Director Kolon TissueGene

Student

Dennis Parad

Principal Attorney Parad Law LLC

Pallav Patel

Matthew Patterson President Optimal IP Strategies

Ann Kishore

Senior Director Oracle America, Inc.

Anoop Sankar

Student

Senior Account Director Evalueserve Inc

William lambert

Mohammad Sarai

Nicholas Kumburis

Principal Module 3 Pharmaceutical Consulting

Kenneth LaMontagne

Lead S&E Cell Therapy, BD BMS President Smart Planet Technologies

Retired

Gaurav Shah

Associate Director, Business Development Bristol Myers Squibb

Alec Sorensen CEO Tradespace

Sushupta Sudarshan

President Lundstrom USA

Assistant General Counsel, Intellectual Property Northrop Grumman Corporation

Michael Mand

Blaine Templeman

Luis Medina-Sanchez

David Wang

Rob Lundstrom

University of Illinois at Chicago

Akiv Jhirad Student

Tech Transfer Professional National Institute of Allergies and Infectious Diseases/NIH

Robert Johnson

Kaustubh Nagarkar

CBO Affinia Therapeutics

Kelly O’Keefe

Partner IP Simplified LLP

Matt Kiser

William Lorenzi

Matthew Hodulik

Partner, founder The Law Office of Z Chen

Teruki Kadobayashi

Therapeutica Bio

Sr. Acceleration Manger Cincinnati Children’s Hospital

Kiana Williams

Intellectual Property Portfolio Manager National Security Agency

VP Licensing GE Licensing

16 | LES Viewpoints

LES Members on the Move Scott Ferguson has taken a role with Natural Resources Canada (NRCan) in the Business Office at CanmetENERGY in Ottawa, ON (May 2020). Looking forward to networking more with folks in the Energy sector going forward and learning more about the needs and challenges we can address together.

Uche Nwokocha is a Partner with Aluko & Oyebode law firm located in Lagos, Nigeria. She is on the Board of Directors of International Trademarks Association (INTA); a member of the Finance Committee of International Trademarks Association; on the Board of Global Anti-counterfeiting Group (GACG). She was also named IP Star 2020 and Top 250 Women in IP 2020 by the Managing Intellectual Property (MIP).