Technology Licensing Agreements

Tuesday, March 23, 2010

8:00 Registration Begins and Coffee

9:00 Co-Chairs’ Opening Remarks

H. Ward Classen
Deputy General Counsel
U.S. Commercial Businesses
Computer Sciences Corporation (Hanover, MD)

Pamela Deese
Partner
Arent Fox LLP (Washington, DC)

9:15 Integrating Business and Legal Objectives into an Effective Deal Team and License Agreement

Tom Rowland
Director of Business Affairs
Time Inc. – Licensing & Syndication (New York, NY)

Ameen Haddad
Managing Counsel
Oracle USA, Inc. (Burlington, MA)

A. Stephen Zavell
Senior Counsel, Law Department, Intellectual Property
Chevron Corporation (San Ramon, CA)

Marie Fogarty, Esq.;
Assistant General Counsel - Health Services Sector
Computer Sciences Corporation (Falls Church, VA)

• Fostering collaborative communication between your licensing professionals, business executives and attorneys during the deal
• Defining and communicating the importance of the deal individually vs.as a component of the company’s business objective
• Identifying what the deal makers on both sides are looking for
• Evaluating the “other” party’s deal team
  • setting expectations – communicating what you are buying as a customer and what you are selling as a vendor
  • how their strategy impacts your strategy
  • determining early on whether or not the “other” team has authority and clearance to seal the deal
  • best practices for scrutinizing the information the licensor presents
  • evaluating what the “other” party’s endgame is
• Understanding the role of quality assurance in negotiations

10:15 Morning Coffee Break

10:30 Apportioning Risk: Do’s and Dont’s when Drafting Warranties, Limitations of Liability and Indemnification

Mary M. Hamaker
Director and Senior Counsel, Office of the General Counsel
EMC Corporation (Hopkinton, MA)

Brian Crist
Assistant General Counsel
Citigroup Inc. (New York, NY)

Gregory Silberman
Partner
Kaye Scholer LLP (New York, NY)

• Eliminating ambiguity and allocating risk in key contract provisions
  • disclaimers, conditions, exclusions
  • warranties and limitations of liability caps
  • restrictions on damages
    • consequential, special and other indirect damages
    • dollar caps on direct damages
• What can trigger unlimited liability under the exceptions to indemnity obligations
• How to structure the agreement to minimize your company’s risk for
  • breach of IP
  • breach of confidentiality
  • breach of confidentiality vs. loss of data
  • gross negligence conduct

11:30 Controlling the Use and Manipulation of Open Source in Your Technology License Agreements

Karen F. Copenhaver
Partner
Choate Hall & Stewart LLP (Boston, MA)

David C. Metz
VP & General Counsel – Americas
Hitachi Data Systems (Damascus, MD)

• Identifying the presence of open source software
• Determining ownership of the technology when open source code is used
• Complying with requirements of open sources licenses
• Defining how the incorporation of open source code licenses can impact the licensee or downstream end user obligations
• Determining what rights are transferable/not transferable to the licensor and licensee under the open source license agreement
• Accounting for open source when structuring representations and warranties included in the license agreement
• Exploring the intersection of open source and M&A transactions
• Recent case decisions addressing the use of open source

12:15 Networking Luncheon for Attendees and Speakers

1:30 Defining the Scope of the License to Resolve Ownership Issues and Field of Use Limitations

James Markarian
Senior Counsel and Licensing , Manager for North America
Siemens Corporation (Iselin, NJ)

H. Ward Classen
Deputy General Counsel
U.S. Commercial Businesses
Computer Sciences Corporation (Hanover, MD)

• Determining what technology is being licensed and clearly identifying where and how it can be used by the license
  • assignability and the right to sub-license
  • exclusive vs. non-exclusive right
  • geographic and entity restrictions
  • term of license
• Freedom to operate – identifying whether or not pre-existing third party licenses that may act as an impediment to the present or future use of the technology
• Merging a licensed technology into an existing product – considering how the scope and fi eld of use of the “new” product will be affected?
  • derivative works
  • works made for hire
  • joint ownership issues
• Ensuring the scope and field of use provisions fully cover a licensee’s products
• Unique issues surrounding patent expiration and license terms – examining whether the license will expire simultaneously with the expiration of an underlying patent

2:15 Caselaw Update: How Latest Cases Address Patent Exhaustion, Declaratory Judgments and Standards and Impact Your Licensing Strategy

Barton E. Showalter
Firmwide Chair, Intellectual Property Department
Baker Botts L.L.P. (Dallas, TX)

• Patent exhaustion – understanding the implications of Quanta and its progeny on technology licensing agreements
• Declaratory judgments – meeting the imminent threat of suit standard post-Sandisk and MedImmune
• Standards – considering the impact of standards participation on licensing

3:00 Afternoon Refreshment Break

3:15 Preventing Security Breach and Ensuring the Protection of Data and Trade Secrets

J. (Jay) T. Westermeier
Of Counsel
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Reston, VA)

Chuck Cruit
Director – Intellectual Property Policy
The Boeing Company (West Chester, PA)

• Best practices for protecting your trade secrets in licensing agreements
  • reasons for entering into a license
  • types of trade secret licenses
  • fundamental trade secret licensing terms
• Determining what can and should be labeled as “confi dential” or “proprietary”
• Disclosure to employees, agents, consultants
• License terms to address prohibition on
  • reverse engineering, disassembly or analysis
  • sublicensing
  • disclosure
  • return or destruction of information
  • entitlement to injunctive and equitable relief
• Do’s and dont’s in the area of preventing security breaches
  • setting expectations and procedures
  • auditing procedures
  • physical and electronic controls
  • diligence and trust of license
  • export controls
  • rolling codes and expiring access
• Litigation strategies in the event of a breach
  • injunctive and inequitable relief
• Emerging case law and statutory developments addressing trade secrets in the context of licensing transactions

4:15 Overcoming Unique Challenges of International Technology Licensing

Darren A. Bowie
Legal Director, North America
Nokia Inc. (White Plains, NY)

Kim Chotkowski
Licensing Executive
André-Troner (Indialantic, FL)

Flip Petillion
Partner
Crowell & Moring LLP (Brussels, Belgium)

• Factors to consider when deciding which markets to enter/not enter
  • global IP protection and enforcement of technology rights
  • specific laws addressing the transfer of different types of technology for patent, trademark, copyright, software, trade secret and know how
• Evaluating the competitive climate to determine what the level of product saturation is in your market
• Best practices for screening your potential licensee
• Considering differences in negotiation styles and techniques when structuring licensing agreements in various countries

5:30 Conference Adjourns to Day Two

WEDNESDAY, MARCH 24, 2010

9:00 Co-Chairs’ Remarks

9:05 Ensuring License Transferability & IP Assimilation in M&A Transactions

Nader Mousavi
Head, Technology Transactions
& Licensing Practice Group, West Coast
Wilmer Cutler Pickering Hale and Dorr LLP (Palo Alto, CA)

• Conducting a comprehensive IP due diligence analysis in order to evaluate and resolve the target’s prior contractual and third party obligations
• Addressing ownership and inventorship
  • determining who owns what
  • determining whether or not grant-back licenses are a viable option, particularly when a sub-division or spin out of an organization is created as a result of the transaction
• Identifying what restrictions are tied to pre-existing license agreements
• Re-evaluating royalty payment agreements
• Understanding how current license agreements will be impacted by the proposed transaction – will all licenses be –
  • transferable post-M&A? if not, how much will a new license cost?
  • enforceable in foreign jurisdictions? if not, what options are available to ensure protection of the license agreement abroad?
• Clarifying how pre-existing license agreements will be managed post-M&A

9:45 Morning Coffee Break

10:00 Navigating the Intersection of Antitrust and IP Law: Current Issues Impacting on Licensing Transactions

George J. Romanik
Intellectual Property Counsel
Pratt & Whitney Legal Department (Hartford, CT)

Jason L. Peltz
Partner
Bartlit Beck Herman Palenchar & Scott LLP (Chicago, IL)

Roy Hoffinger
Vice President, Legal Counsel
Qualcomm, Inc. (San Diego, CA)

Never before has the interface between IP and antitrust laws been more pronounced. In direct response to recent spike in technology M&A activity, antitrust authorities, both in the U.S. and abroad, are once again turning their attention to the technology industry. The competition issues raised require detailed analysis of fast-moving areas of technology, such as the Internet, computer software, hardware, platform competition and technology standards.
During this session, learn how current antitrust trends within the technology industry will impact your future deal negotiations, as counsel experienced in addressing these issues share with you what types of behavior pose the most risk for your company, as well as what you can do when structuring license agreements to avoid getting caught in the regulatory crosshairs.Focus will be on considerations from an in-house counsel perspective on:

• Licensing to support aftermarket services
• Licensing current or potential competitors/customers
• International licenses that may trigger antitrust issues
• Impact of regulations that require disclosure of IP to ensure operational safety of products

11:00 Preserving Your Company’s Interests in Joint-Development and Collaborative Agreements

Robert N. Tullar
Senior Manager, Strategic Planning – Alliances
General Dynamics Armament and Technical Products, Inc. (Charlotte, NC)

Martin Gronberg
Technology Commercialization Manager
PARC - Palo Alto Resarch Center Inc. (Palo Alto, CA)

Claudia C. Stewart, Ph.D.
Vice President, Office of Technology Commercialization
Georgetown University (Washington, DC)

Joint Development & Collaboration Technology

• Structuring a “flexible” agreement that can be adjusted based on the evolving needs of the parties and the technology that is being developed
• Ensuring provisions are included to address ownership of the jointly-created technology
  • assignment vs. license
  • field of use limitations
  • exclusivity
  • grant-back rights
  • “background” IP rights
• Delegating responsibility for indemnification, representations and warranties among the parties

Licensing Partnerships with Universities

• Discussing what companies seek from universities
• Delineating what constitutes an alliance vs. a partnership when licensing technology with a university
• Understanding typical business models for establishing relationships with universities
• Negotiating key terms in the license agreement – retained rights, diligence, patent challenge language, sublicensing

12:15 Networking Luncheon for Attendees and Speakers

1:30 Structuring Unambiguous Terms to Address Modifications & Improved Technology

James S. Clessuras
Partner, Technology Transactions Group
Wilson Sonsini Goodrich & Rosati (Washington, DC)

• Managing functionality issues and cost overrun concerns that arise in the context of customized or modifi ed technology agreements
• Assessing the benefi ts and pitfalls of commingling third-party products with developed technology
• Establishing who has the right to make improvements on the technology- defi ning who owns the resulting product
• Deciding when and if a right of fi rst refusal will be given to either party based on the nature of the improvements made
• Discussing payment terms specific to later improvements and the downstream development of the technology post-agreement - licensor to licensee and licensee to licensor

2:15 Monitoring and Enforcing Compliance with the Terms of the License Agreement

Pamela Deese
Partner
Arent Fox LLP (Washington, DC)

• Integrating clear auditing terms into the license to maintain the relationship post-deal
• Core components of an effective auditing mechanism:
  • clarifying the rights of each party under the auditing provisions of the license – licensor vs. licensee responsibilities
  • agreeing to procedures and timelines for monitoring
  • tips for ensuring compliance with reporting requirements
• Enforcing warranty provisions to address support and maintenance, remedies, repair and replacement, as well as return and refund
• Specifically outlining what circumstances constitute a “violation” under the agreement
  • creative solutions for handling a “violation” with an eye towards preserving the relationship
  • warning signs – knowing when to walk away
  • creating an alternative plan of action in case the deal goes bad and litigation ensues

3:00 Afternoon Refreshment Break

3:15 When Good Relationships Go Bad: Protecting Your Licensing Rights During Bankruptcy, License Termination and Default

Marc Sandy Block
Staff Counsel, Intellectual Property and Standards
IBM Corporation (Armonk, NY)

Milo M. Vukelich
Senior Manager, Software and Intellectual Property
Rockwell Collins, Inc. (Cedar Rapids, IA)

• Knowing what are the warning signs of a company in trouble and what to do before the bankruptcy is filed
• Defining licensor and licensee rights when one of the parties to the license agreement fi les bankruptcy
• Assessing available viable alternatives to license termination
• Evaluating the consequences of terminating the license, particularly the impact of:
  • wrongful termination claims
  • rights of sub-licensees
  • evaluating viable alternatives to license termination
• Reverse engineering your contract prior to agreement to ensure it is litigation ready
• Understanding upfront how confl icts of laws principles can negatively impact your deal
• Structuring dispute resolution clauses to your advantage
  • identifying a protocol for both parties when changes to the license agreement are proposed
• Determining whether or not it is in the client’s best interest to litigate or arbitrate

4:15 Optimizing IP Mining and Monetization: Effective Strategies to Commercialize and Market Your Technology

Brian M. Buroker
Head, Intellectual Property Practice Group
Hunton & Williams LLP (Washington, DC)

• Developing a commercialization strategy that is consistent with current business priorities
  • considering how the commercialization strategy may change with the evolution of the company’s goals and priorities
• Identifying what technology/IP is available for commercialization – determining what technology/IP the company is willing to put on the market
• Strategic considerations relevant to making the decision whether or not to commercialize
• Assessing the risks and opportunities of expanding into various markets

5:15 Conference Concludes.

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