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 Using Licenses to Settle Intellectual Property Lawsuits hosted by the High Technology Sector and the Philadelphia Chapter
Wednesday, February 28, 2024
Reception 6:00 pm - 7:00 pm Program 7:00pm - 8:00pm at Dechert LLP Cira Centre 2929 Arch Street Philadelphia, PA
Open bar with beer and wine, heavy hors d’oeuvres.
COST: FREE Thank you to our host:
Program: If your company or organization ever faces patent litigation, this panel discussion is for you. Most patent suits are settled before they ever get to trial, often by licensing the patents. But in the adversarial arena of litigation, the parties tend to be especially wary of each other and will want to be particularly careful of what they agree to. This panel will address the settlement process, license negotiations in the context of litigation, and issues of heightened importance to litigants seeking to resolve their dispute through a license. Speakers: | Bob Held, IP & Licensing Expert and Past President & Chair of LES USA & Canada Bob is the President of Held Intellectual Property, LLC, (www.heldip.com), an intellectual property business consulting firm, and recently worked for TeleCommunication Systems, Inc. (TCS) in Annapolis, Maryland as the Vice President, Intellectual Asset Management, responsible for the strategic management and monetization of TCS’s IP portfolio. All assets of TCS were acquired in February 2016. Immediately prior to joining TCS, Bob worked for Northrop Grumman Corporation, Electronic Systems Sector, an $8.5B business unit, from 2003-2011 as the Director of the Intellectual Property & Strategic Technology Agreements group; and from 1998-2003 he worked at the IP firm British Technology Group (BTG) International headquartered out of London. Bob has over 25 years of experience as a Licensing Executive with extensive experience in all facets of intellectual property (IP), including strategy & monetization, management, expert witness, damages, acquisitions, contracts, negotiations, valuation, marketing, strategic agreements, university & government agreements, IP issues in M&A, IP training and education, and strategic and tactical input on all IP matters. Bob has been active in the Licensing Executives Society (USA & Canada), Inc. (“LES”) since 1998 having served in multiple leadership roles. Bob was the President and Chairman of the LES Board of Directors for 2018-2019, and now serves as the Senior Vice President of Sponsorship, and the Chair of the 2024 LES Annual meeting in New Orleans, LA October 20-23rd . Bob has been chairing the LES High Tech Royalty Rate Survey since 2010. Bob has been a Certified Licensing Professional (CLP) since 2008 and has been named to the “IAM Strategy 300 - The World’s Leading IP Strategists” since 2015. Bob received his Bachelor of Science in Electrical Engineering degree from Villanova University and his MBA from Drexel University’s LeBow College of Business. | 
| Harrie Samaras, ADR Neutral
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| Michael Fisher, Dechert LLP
Michael A. Fisher, Ph.D. draws on his extensive background in electrical engineering to represent medical device, electronics, computer, and semiconductor companies in complex patent and trade secret litigation matters. He also devotes part of his practice to patent licensing, patent counseling, and software copyright matters. Prior to his legal career, Dr. Fisher worked as a research and development engineer in the areas of solid state electronics, equipment-control software, and microelectromechanical systems (MEMS). He is a named inventor on three U.S. patents, relating to a dental instrument, an infrared imager, and a flat-panel computer display (U.S. Pat. Nos. 10,201,398, 5,929,440, and 5,956,003).
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| Evan Diamond, Mintz Evan is a highly regarded IP trial attorney and advisor known for his
successful representation of clients in high-stakes intellectual
property and contractual disputes in the United States and in
international jurisdictions. He has a strong record of wins in cases to
protect products with hundreds of millions or billions of dollars in
revenue, and in defending clients in disputes involving alleged damages
of hundreds of millions of dollars. Leveraging his research experience
in chemistry and biochemistry, Evan represents companies and academic
institutions across the pharmaceutical, biotechnology, medical devices,
chemical, and cannabis fields. A significant portion of Evan’s
practice involves representing clients in patent disputes in US federal
district courts, before the Patent Trial and Appeal Board, and at the US
Court of Appeals for the Federal Circuit. He also litigates complex
contract and licensing disputes involving multi-national forum
litigation and international arbitration components. As a go-to advisor
for strategic IP counseling and early dispute services, Evan also
regularly takes a leading role in pre-litigation preparation and
negotiations of favorable licensing deals, helping clients achieve their
business goals. In addition, Evan represents life sciences
companies in matters involving the intersection of US Food & Drug
Administration (FDA) regulations and US patent rights, including through
trial and appeal in Hatch-Waxman and the Biologics Price Competition
and Innovation Act (BPCIA) disputes. He is also called on to provide
strategic advice on a broad range of related FDA matters. Evan has achieved international recognition for his work, including repeated listings in the IAM Patent 1000: The World’s Leading Patent Professionals
guide. He is also a respected thought leader who speaks and writes on
new developments involving the life sciences industry and intellectual
property law in the US and globally and provides commentary to legal and
industry publications. Prior to joining Mintz, Evan was a partner
at an international law firm, where he achieved a no-loss record in
representing life sciences clients and others in patent litigations and
other disputes. While earning his master’s degree in chemistry, he
conducted research focused on the characterization of protein-protein
interactions, including for RNA splicing machinery utilized in
connection with the treatment of spinal muscular atrophy (SMA). |
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