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Philadelphia: Using Licenses to Settle Intellectual Property Lawsuits
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hosted by the High Technology Sector and the Philadelphia Chapter

2/28/2024
When: Wednesday, February 28, 2024
6:00pm - 8:00pm ET
Where: Dechert LLP
Cira Centre
2929 Arch Street
Philadelphia, Pennsylvania  19104
United States
Contact: Stacey Ramsey
info@les.org


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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

Harrie Samaras is an experienced, domestic and international full-time neutral. She has arbitrated and mediated hundreds of complex matters over the past 20 years with a focus on commercial transactions, intellectual property, technology, and business issues across a broad range of industries and technologies (see Experience). Ms. Samaras has published and lectured extensively on arbitration and mediation topics including as the editor and an author of ADR Advocacy, Strategies, and Practices for Intellectual Property and Technology Cases, now in its second edition. She is a Fellow of the Chartered Institute of Arbitrators and the College of Commercial Arbitrators. Ms. Samaras has held many leadership positions in the legal and ADR field, including serving as the Chair of the ABA Section of Dispute Resolution.

As a former in-house counsel and advocate, Ms. Samaras understands the importance of the role that well-planned and executed ADR processes can play in helping parties resolve their disputes and meet important objectives. She brings to her work as an arbitrator and mediator her experience prosecuting and defending actions worldwide involving IP assets, performing early case assessment, negotiating a variety of commercial contracts, and serving as an advocate in ADR proceedings.


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).


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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